Ex Parte Souza et al

Board of Patent Appeals and Interferences

Apr 30, 2008

10352332 (B.P.A.I. Apr. 30, 2008)

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.
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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).
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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).
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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
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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:

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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).
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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).
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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
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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).
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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
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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,
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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
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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.
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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

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