Ex Parte Souza et alDownload PDFBoard of Patent Appeals and InterferencesApr 30, 200810352332 (B.P.A.I. Apr. 30, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JOHN SOUZA, ROSS SOUZA, and ROD SOUZA __________ Appeal 2008-2134 Application 10/352,332 Technology Center 3700 __________ DECIDED: April 30, 2008 __________ Before TONI R. SCHEINER, DONALD E. ADAMS, and DEMETRA J. MILLS, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 24-29, the only claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2008-2134 Application 10/352,332 STATEMENT OF THE CASE The present invention is directed to “[a] planar saw blade having an outer cutting edge with a plurality of saw teeth . . . [and] sets of secondary teeth placed in cutout portions within the body of the saw blade. The secondary tooth sets provide portions within the body of the saw blade that provide additional cutting action that reinforces the primary outer cutting edge of the blade” (Spec. 2: 11-14). The claims stand rejected as follows. 1. Claims 24-26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (new matter). 2. Claims 24-29 under 35 U.S.C. § 102(b) as anticipated by Hogeland (U.S. Patent 149,932, issued April 21, 1874). 3. Claims 24-19 under 35 U.S.C. § 102(a) as unpatentable over Hogeland, in view of Treace (U.S. Patent 3,852,881, issued December 10, 1974) or Clarke (U.S. Patent 4,641,562, issued February 10, 1987). Claims 24 and 27 are representative and read as follows: 24. A circular saw blade having a center of rotation and an outer radial edge, the outer radial edge having a plurality of saw teeth spaced a first predetermined distance apart, a plurality of interior cutout portions spaced equal distances apart and lying along a circle concentric with said outer radial edge, each cutout portion having a second plurality of secondary saw teeth, all of the secondary saw teeth in each of the cutout portions having tip portions arranged along a common arc and radially equidistant from said center of rotation. 27. A circular saw blade having primary saw teeth arranged along an outer periphery thereof, and having a plurality of interior cutout portions, each said cutout portion having a plurality of secondary saw teeth wherein said secondary saw teeth are positioned along an arc concentric with said outer periphery. 2 Appeal 2008-2134 Application 10/352,332 FINDINGS OF FACT (FF) 1. Present claim 24 is directed to “[a] circular saw blade having a center of rotation and an outer radial edge, the outer radial edge having a plurality of saw teeth . . . , a plurality of interior cutout portions spaced equal distances apart and lying along a circle concentric with said outer radial edge, each cutout portion having a second plurality of secondary saw teeth, all of the secondary saw teeth in each of the cutout portions having tip portions arranged along a common arc and radially equidistant from said center of rotation.” In other words, claim 24 requires that the interior cutout portions lie on an imaginary circle concentric with the outer edge of the saw bland, and requires that all of the secondary saw teeth lie on an imaginary circle concentric with the outer edge, as well. 2. The Specification, as originally filed, describes a circular saw blade that “is a planar piece of metal” (Spec. 2: 30-32) and “includes arcuate cutout portions . . . spaced 90° apart radially about an inner circumference of the blade . . . concentric with the outer perimeter” of the circular saw blade, and “[e]ach of the cutout portions . . . [has] a set of secondary teeth” (Spec. 3: 1-3). The Specification further describes a circular saw blade with “five sets of secondary teeth . . . which are spaced evenly 72° apart in arcuate cutouts about an inner circumference of the blade” (Spec. 3: 25-26). “[T]here are a plurality of teeth in each set and the plurality of teeth all have a uniform pitch and a uniform gullet” (Spec. 5: 24-26). “The sets of secondary saw teeth are distributed about an imaginary circumferential arc which exists at a secondary radius which is less than the outer radius of the blade itself” (Spec. 4: 12-14). 3 Appeal 2008-2134 Application 10/352,332 3. According to the Specification, the concentric arrangement of cutouts and secondary saw teeth is illustrated in Figures 1-4 (Spec. 4: 11-14). By way of example, Figure 3, as originally filed, is reproduced immediately below: Figure 3 is a side view of a circular saw blade with five sets of secondary teeth spaced evenly apart in arcuate cutouts about an inner circumference of the circular saw blade (Spec. 3: 25-26). Hogeland 4. Hogeland describes a circular saw with “two separate sets of teeth” (Hogeland, col. 2, ll. 24-25), designed to produce barrel staves with “a regular taper from the center . . . to the ends, so as to form a proper shaped barrel” (Hogeland, col. 1, ll. 12-14). 4 Appeal 2008-2134 Application 10/352,332 5. The saw has “four openings or recesses . . . below the outer circle or edge of the saw” (Hogeland, col. 2, ll. 6-8), with “graduated teeth in the recesses” (Hogeland, col. 2, ll. 27-28), as illustrated in Figure 1. 6. Hogeland’s Figure 1 is reproduced immediately below: Figure 1 “shows the saw with the four openings or recesses, marked B, below the outer circle or edge of the saw. The teeth c d e [f] in the recesses B decrease in size or length from C to K, and gradually increase in set from K to C. From S to S the distance is greater than from P to P, or, in other words, the smaller teeth in recess B are farther from the center of the saw than are the larger teeth” (Hogeland, col. 2, ll. 6-15). 7. According to Hogeland, “[b]y the peculiar arrangement of the teeth of this saw the lower side of the slit or cut made by it will be wider than the 5 Appeal 2008-2134 Application 10/352,332 upper side” (Hogeland, col. 1, ll. 16-18). This is because “tooth C works lower in the under part of the cut than the tooth d, and so on uniformly to the smallest tooth; and the result is the proper bevel to enable the wood to come together squarely when bound with hoops in circular form” (Hogeland, col. 2, ll. 15-20). Treace 8. Treace describes an oscillating cutting device and cutting blade designed to trim excess length from fracture-fixation pins used in anchoring bone fractures (Treace, col. 1, ll. 7-27), leaving a smooth, rounded surface. “The cutting blade 11 includes a body portion 15 and a cutting portion 17” (Treace, col. 2, ll. 2-3). 9. Figure 3, reproduced immediately below, shows an embodiment of Treace’s cutting blade: 6 Appeal 2008-2134 Application 10/352,332 Figure 3 is a front elevational view of a cutting blade, in which “the body portion 15 is circular and includes three elongated apertures 25” (Treace, col. 2, ll. 34-35) each with a cutting portion 17. “The cutting portion 17 preferably consists of a plurality of hollow ground saw teeth” (Treace, col. 2, ll. 15-16). 10. In use, “the cutting blade 11 is mounted onto the oscillating cutting device 13 . . . The head of the fracture-fixation pin . . . to be cut off is passed through an elongated aperture 25 in the body portion 15 of the cutting blade 11 . . . [and] cutting portion 17 [is maneuvered] to contact all portions of the circumference of the fracture-fixation pin . . . being cut off” (Treace, col. 50- 58). 11. Treace’s cutting blade is not a circular saw, even where the body portion 15 is circular, because the blade does not have saw teeth on its outer radial edge. Instead, cutting blade 11 “includes a trough-like member 29 located on the periphery of the body portion 15 beneath the elongated aperture 25 for catching any metal filings produced when the fracture- fixation pin . . . is being cut off” (Treace, col. 2, ll. 22-26). Clarke 12. Clarke describes a circular saw comprising “a pair of coaxially mounted saw blades” (Clarke, col. 2, l. 60). The primary blade is a relatively thin circular saw blade with coarse cutting teeth, . . . while the secondary blade is a comparatively thicker, smaller diameter blade having smaller teeth” (Clarke, col. 2, l. 44 to col. 3, l. 1). 7 Appeal 2008-2134 Application 10/352,332 13. The primary blade “makes a rough cut of a workpiece at a fast rate of speed” and the “second[ary] or trailing . . . blade finishes the rough cut with a smooth, fine surface’ (Clarke, col. 2, ll. 44-47). 14. Clarke’s Figure 2 is reproduced immediately below: Figure 2 is a side elevation view of Clarke’s showing primary saw blade 12 and secondary saw blade 14 (Clarke, col. 3, ll. 64-65). 15. “By mounting the blades 12, 14 closely adjacent one another, the thickness of the secondary saw blade 14 adds stability to the thinner primary saw blade 12 . . . [which] reduces vibration and wobbling of the primary saw blade 12, allowing it to make a more precise, cleaner and quicker cut” (Clarke, col. 4, ll. 57-62). The primary saw blade 12 also “cut[s] away a portion of the wood in the planar path of the secondary saw blade 14” (Clarke, col. 5, ll. 2-4), allowing the secondary blade 14 to cut “at a faster rate than would otherwise be possible” (Clarke, col. 5, ll. 11-12). 8 Appeal 2008-2134 Application 10/352,332 DISCUSSION New Matter The Examiner rejected claims 24-26 under 35 U.S.C. § 112, first paragraph. The Examiner contends that “the original disclosure fails to disclose that plurality of the interior cutout portions lie along a circle concentric with the outer radial edge. The original disclosure also fails to teach that the secondary saw teeth having tip portions arranged along a common arc and radially equidistance from the center of rotation as set forth in claim 24” (Ans. 4). We will reverse this rejection. To satisfy the written description requirement, the Specification need not contain the identical words used in the claims. See Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“[T]he disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). The written description requirement is satisfied if the disclosure conveys with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. The Specification, as originally filed, describes a circular saw blade that includes evenly spaced arcuate cutout portions arranged “radially about an inner circumference of the blade . . . concentric with the outer perimeter” of the blade (Spec. 3: 1-2; FF 2). In the context of describing a circular blade, we find that one skilled in the art would reasonably interpret “circumference” as referring to the boundary line of a circle. Since the Specification explicitly states that the inner circumference is concentric with the outer perimeter of the circular blade, we find that the Specification 9 Appeal 2008-2134 Application 10/352,332 conveys with reasonable clarity that the “plurality of the interior cutout portions lie along a circle concentric with the outer radial edge” of the circular blade (Ans. 4). Similarly, the Specification, as originally filed, describes sets of secondary saw teeth within the arcuate cutouts “distributed about an imaginary circumferential arc which exists at a secondary radius which is less than the outer radius of the blade itself” (Spec. 4: 12-14; FF 2). A radius is a line segment connecting a point at the center of a circle or sphere, and a point on the circumference of the circle or sphere. In the context of a circular saw blade, we find that one skilled in the art would reasonably interpret “secondary radius which is less that the outer radius of the blade” as referring to two radii, of different lengths, but originating at the same point at the center of the circular saw blade. We find that the Specification conveys with reasonable clarity that the “secondary saw teeth hav[e] tip portions arranged along a common arc and radially equidistant[t] from the center of rotation” of the blade (Ans. 4). Moreover, we find that Figure 3, as originally filed, clearly conveys that Appellants were in possession of a circular saw blade with a plurality of interior cutout portions lying along a circle concentric with the outer radial edge, as well as saw teeth with tip portions arranged along a common arc, equidistant from the blade’s center of rotation. “[D]rawings alone may provide a “written description” of an invention as required by § 112. Vas- Cath, Inc. v. Mahukar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). 10 Appeal 2008-2134 Application 10/352,332 We find that Appellants’ disclosure adequately describes the disputed subject matter, in words, and in pictures. The rejection of claims 24-26 under 35 U.S.C. § 112, first paragraph, is reversed. Anticipation Claims 24-29 stand rejected under 35 U.S.C. § 102(b) as anticipated by Hogeland. Independent claim 24 requires that “all of the secondary saw teeth in each of the cutout portions hav[e] tip portions arranged along a common arc . . . radially equidistant from said center of rotation” (emphasis added). However, Hogeland specifically teaches that “teeth c d e [f] in the recesses B decrease in size or length from C to K, and gradually increase in set from K to C. From S to S the distance is greater than from P to P, or, in other words, the smaller teeth in recess B are farther from the center of the saw than are the larger teeth” (Hogeland, col. 2, ll. 6-15; FF 6). Thus, Hogeland does not describe a saw blade in which all of the secondary saw teeth have tip portions arranged along a common arc, or secondary saw teeth positioned along an arc concentric with the outer periphery of the blade, and therefore does not meet the requirements of claim 24, or claims dependent from it. Nor does Hogeland meet the limitations of claims 28 and 29, as these claims require that “all secondary saw teeth are uniformly sized” (claim 28), while Hogeland’s secondary saw has “graduated teeth in the recesses” (Hogeland, col. 2, ll. 27-28; FF 5). Independent claim 27, however, stands on a different footing. Claim 27 requires “a plurality of secondary saw teeth wherein said secondary saw teeth are positioned along an arc concentric with said outer periphery” of the 11 Appeal 2008-2134 Application 10/352,332 saw blade. Unlike claim 24, claim 27 does not specify the positions of all of the secondary saw teeth, thus, the claim does not require that all of the “secondary saw teeth are positioned along an arc concentric with said outer periphery” (claim 27). The four teeth labeled “c” in Figure 1 of Hogeland (one in each of the four recesses) are positioned along an imaginary arc concentric with the outer perimeter of the saw blade (FF 6), and therefore meet the limitations of claim 27. With respect to claim 27, Appellants argue that “[m]oving from S to P in FIG. 1, . . . each tooth in each opening B is positioned uniformly farther away from the center of the blade than the preceding tooth [so] it is impossible for teeth c, d to be arranged along a common arc that is concentric with the outer periphery” (App. Br. 16). We do not disagree with Appellants’ interpretation of Hogeland, but as explained above, the claim merely requires a plurality of secondary saw teeth positioned along an arc concentric with the outer periphery of the saw blade. The four teeth labeled “c” meet this limitation. The rejection of the claims under 35 U.S.C. § 102(b) as anticipated by Hogeland is reversed with respect to claims 24-26, 28, and 29, and affirmed with respect to claim 27. Obviousness Claims 24-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hogeland in view of Treace or Clarke. We have already concluded that Hogeland anticipates the invention of claim 27. Anticipation is the epitome of obviousness. Connell v. Sears, 12 Appeal 2008-2134 Application 10/352,332 Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Therefore, we affirm the rejection of claim 27 as unpatentable over Hogeland and Treace or Clarke. However, we will reverse this rejection with respect to remaining claims 24-26, 28, and 29. As discussed above, Hogeland does not describe a saw blade in which all of the secondary saw teeth have tip portions arranged along a common arc, or secondary saw teeth positioned along an arc concentric with the outer periphery of the blade. Nor does Hogeland describe a circular saw blade where all of the secondary saw teeth are uniformly sized. The Examiner relies on Treace and Clarke as evidence that “the use of a plurality of saw teeth positioned along a common arc . . . [radially] equidistant from the center of rotation or along an arc that is concentric with the outer periphery . . . [is] well known in the art” (Ans. 7). According to the Examiner, “[i]t would have been obvious . . . to position[ ] the plurality of secondary saw teeth c-g in Hog[e]land along a common arc concentric to the outer periphery . . . in order to provide a smooth finishing surface” (id.). We disagree with the Examiner’s rationale and conclusion. Hogeland’s saw is specifically designed to create a beveled barrel stave, tapering from the center to the ends (FF 4). According to Hogeland, the “peculiar arrangement” of the graduated secondary saw teeth is essential to creating “the proper bevel” (FF 7). We see nothing in either Treace or Clarke which would have led one skilled in the art to change the position of the secondary teeth in Hogeland’s 13 Appeal 2008-2134 Application 10/352,332 saw. Treace describes a cutting blade for an oscillating cutting device, is not even directed to a circular saw, and has no secondary saw teeth (FF 11). Clarke is directed to “a pair of coaxially mounted [circular] saw blades” (Clarke, col. 2, l. 60; FF 12). While Clarke’s separate, secondary saw blade does have teeth arranged on a common arc concentric to the periphery of the primary blade, modifying the position of Hogeland’s secondary teeth accordingly “would not produce the desired beveled edge” (App. Br. 19), and would defeat the purpose of Hogeland’s saw (FF 7). Moreover, we agree with Appellants that Hogeland’s teachings would not have led one skilled in the art to dispense with either one of Clarke’s two coaxially mounted saw blades, as Clarke describes several advantages of mounting two different blades “closely adjacent one another” (Clarke, col. 2, ll. 57-58). For example, Clarke teaches that the thicker, finer-toothed secondary blade stabilizes the primary blade, reducing wobbling and vibration, and allowing the primary blade to make a fast, precise cut (Clarke, col. 4, ll. 58-62; FF 15). At the same time, the primary blade eases the way for the secondary blade, cutting away a portion of the wood in the planar path of the finishing blade, and allowing it to make a smooth cut faster than would otherwise be possible (Clarke, col. 4, l. 68 to col. 5, l. 9; FF 15). Accordingly, the rejection of the claims under 35 U.S.C. § 103(a) as unpatentable over Hogeland in view of Treace or Clark is reversed with respect to claims 24-26, 28, and 29. However, the rejection is affirmed with respect to claim 27, for the reasons discussed above. 14 Appeal 2008-2134 Application 10/352,332 SUMMARY The rejection of claims 24-26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed. The rejection of the claims under 35 U.S.C. § 102(b) as anticipated by Hogeland is reversed with respect to claims 24-26, 28, and 29, and affirmed with respect to claim 27. The rejection of the claims under 35 U.S.C. § 103(a) as unpatentable over Hogeland in view of Treace or Clark is reversed with respect to claims 24-26, 28, and 29, and affirmed with respect to claim 27. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006). AFFIRMED-IN-PART dm WILLIAM O. GENY, ESQ. CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 1600 ODS TOWER 601 SW SECOND AVENUE PORTLAND, OR 97204-3157 15 Copy with citationCopy as parenthetical citation