Ex parte Susnjara

Board of Patent Appeals and Interferences

Aug 29, 2001

09136761 (B.P.A.I. Aug. 29, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENNETH J. SUSNJARA
__________
Appeal No. 2000-2154
Application 09/136,761
___________
ON BRIEF
___________
Before CALVERT, STAAB, and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
10, all the claims in the application.
The claims on appeal are drawn to a tool mountable on a
high speed spindle of a CNC machine tool, and are reproduced
Appeal No. 2000-2154
Application 09/136,761
In reviewing the application, we note that Fig. 1 should1
be labeled “Prior Art.” MPEP § 608.02(g).
A copy of this reference is forwarded to appellant2
herewith.
2
in the appendix of appellant’s brief.1
The references applied in the final rejection are:
Held 3,711,999 Jan.
23, 1973
Mdller 4,833,764 May 30,
1989
An additional reference applied herein in a rejection
pursuant to 37 CFR 1.196(b), is:
1 Kirk-Othmer, Encyclopedia of Chemical Technology (4th
Ed., 1991) pp. 25 to 27 (Kirk-Othmer).2
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 1 to 3 and 6, anticipated by Mdller, under 35
U.S.C. § 102(b);
(2) Claims 4 and 5, unpatentable over Mdller in view of Held,
under 35 U.S.C. § 103(a);
(3) Claims 7 to 10, unpatentable over Mdller in view of Held
and official notice, under 35 U.S.C. § 103(a).
Appeal No. 2000-2154
Application 09/136,761
3
Rejection (1)
Mdller discloses a CNC machine tool including a motor
(working unit) 54 driving a grinding wheel 56 (Fig. 4B). The3 3
grinding wheel is described at col. 5, line 45 to 48, as
follows:
The grinding wheel 56 may be, e.g., a grinding wheel with3
a quasi-variable-shape profile, comprising a metallic
support body bearing a CBN (cubic boron nitride) coating.
The examiner takes the position that Mdller’s grinding tool
56 anticipates claims 1 to 3 and 6.3
With respect to claim 1, appellant argues in essence that
the Mdller tool does not have “an annular side surface
engageable with the side edge of a flat workpiece positioned
directly on said support surface”, as claimed, because in none
of the workpiece holding arrangements disclosed by Mdller in
Figs. 6, 7 and 8 are the side edges of the workpiece
“conveniently exposed to have a meaningful engagement with a
head section of a tool” (brief, page 10). This argument is
not persuasive. In the first place, the workpiece holder
shown in Fig. 7 of Mdller clamps the workpiece 84 in such a
manner that two of its side edges are exposed and would be
Appeal No. 2000-2154
Application 09/136,761
4
engageable by the annular side surface of tool 56 . Moreover,3
and more fundamentally, the annular side surface of the tool
56 would clearly be capable of engaging the side edge of a3
flat workpiece; the fact that it might not be used for that
purpose in the CNC machine of Mdller is of no relevance to the
question of anticipation of claim 1, because that claim is
drawn to the tool per se, rather than the tool in combination
with the CNC machine tool. As stated in In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), “It is
well settled that the recitation of a new intended use for an
old product does not make a claim to that old product
patentable.” See also In re Casey, 370 F.2d 576, 580, 152
USPQ 235, 238 (CCPA 1967).
Appellant also argues that the annular surface of the
tool 56 of Mdller does not have “a profile corresponding to3
the profile of said side edge [of the flat workpiece]”, as
recited in claim 1. Here again, however, the workpiece is not
claimed as part of the combination. As disclosed by Mdller,
supra, the grinding wheel 56 has a “quasi-variable-shape3
profile,” which would be capable of corresponding to a side
Appeal No. 2000-2154
Application 09/136,761
5
edge profile. Also, once a side edge has been ground by
Mdller’s grinding wheel, the profile of the wheel’s annular
surface and the profile of the side edge would be the same.
Appellant further contends on page 3 of the reply brief
that if he asserted claim 1 in court, the court would “insist
that a correct interpretation should include all features in
independent claim 1.” Nevertheless, whatever may be the
merits of this argument, the Court in In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997), reaffirmed
that during prosecution before the PTO, claims are to be given
their broadest
reasonable interpretation, rather than to be interpreted as
they would be by a court in a post-issuance proceeding. We
have given claim 1 its broadest reasonable interpretation
here.
Accordingly, we conclude that Mdller meets all the
structure recited in claim 1, and will sustain the rejection
Appeal No. 2000-2154
Application 09/136,761
Since appellant states on page 8 of the brief that3
claims 1 to 3 and 6 stand or fall together, we might well also
sustain the rejection of claims 2, 3 and 6. However, we have
treated them separately in view of the separate arguments
presented in the brief.
6
as to that claim.3
With regard to claim 3, appellant argues that Mdller does
not disclose “an annular side surface that would operatively
engage a side surface of a workpiece yet having a bottom
surface staying just clear of a support surface” (brief, page
12). This requires consideration of claim 2, from which claim
3 depends; claim 2 recites that the head section of the tool
“includes a bottom surface lying in a plane disposed
perpendicular to an axis of said shank section.” Mdller does
not anticipate this limitation, because there is no
description or showing in Mdller of what the shape of the
bottom of tool 56 is. The rejection of claims 2 and 33
therefore will not be sustained.
Appellant further contends that Mdller does not disclose
that the tool 56 is made of carbide steel, as required by3
claim 6. We agree. Since Mdller only states that the body of
Appeal No. 2000-2154
Application 09/136,761
7
tool 56 is “metallic,” the recitation of “carbide steel” is3
not anticipated, and the rejection of claim 6 will not be
sustained. See Kloster Speedsteel AB v. Crucible Inc., 793
F.2d 1565, 1571, 230 USPQ 81, 84 (Fed. Cir. 1986)(“absence
from the reference of any claimed element negates
anticipation”).
Rejection (2)
On page 3 of the final rejection, the examiner states the
basis of this rejection as:
Miller [sic] teaches all the limitations of the
claims except for a tool whose annular side surface is
provided with a plurality of circumferentially spaced
flutes. Held teaches a [sic] abrasive tool, 10, with
flutes, 12f. It would have been obvious to one having
ordinary skill in the art at the time that the invention
was made to construct the abrasive tool of Miller [sic],
with flutes as taught by Held, in order to aid in the
removal of abraded particles during the machining
process.
We consider this rejection to be well taken. Held
teaches the provision of flutes in the annular surface of an
abrading wheel in order to effect air cooling. In view of
this teaching, one of ordinary skill would have been motivated
to provide such flutes in the annular surface of Mdller’s
grinding wheel 56 in order to obtain the advantage thereof3
Appeal No. 2000-2154
Application 09/136,761
Specification, page 5, line 7.4
8
disclosed by Held. While the purpose of the flutes of Held
may not be precisely the same as that of appellant’s flutes
(cooling vs. “to facilitate material removal” ), “the4
motivation in the prior art to combine the references does not
have to be identical to that of the applicant to establish
obviousness.” In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996).
Appellant contends that it would not have been obvious to
combine Mdller and Held. Referring to col. 3, lines 33 to 36
of Mdller, he asserts, as we understand it, that since Mdller
supplies liquid coolant to the point of machining, one of
ordinary skill would not provide flutes in Mdller’s grinding
wheel 56 because they would trap the abraded particles3
(brief, page 14). We do not agree with this argument because,
first, the cited portion of Mdller only refers to coolant, not
liquid coolant; the coolant could equally well be air or other
gas, in which case there would be no adhesion of the particles
in the flutes as appellant asserts. Moreover, there is no
evidence in the record to support appellant’s assertions,
Appeal No. 2000-2154
Application 09/136,761
Since claims 7 to 10 do not recite any flutes, it is not5
apparent why the examiner included Held in this rejection.
9
which simply amount
to attorney argument and do not convince us that one of
ordinary skill would be dissuaded from modifying Mdller as
suggested by Held.
Rejection (2) will accordingly be sustained.
Rejection (3)
Claims 7 to 10 read:
7. A tool according to Claim 1 wherein said abrasive
particles have a grit size of 150.
8. A tool according to Claim 1 wherein said abrasive
particles consist of diamond grit.
9. A tool according to Claim 8 wherein said abrasive
particles have a grit size of 150.
10. A tool according to Claim 1 wherein said member is
formed of carbide steel and said particles are formed of a
synthetic diamond material having a grit size of 150.
In making this rejection, the examiner stated on page 3
of the final rejection that:
Claim 7-10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miller [sic] as modified by Held5
Appeal No. 2000-2154
Application 09/136,761
10
as applied to claim[s] 1-6 above, and further in view of
official notice that grit type and size are old and well
known in the art..
Miller [sic] as modified by Held, teaches all the
limitations of the claims, except for the grit size and
type as claimed. The size of the grit and the type
specified in the claims present nothing more than old and
well known choices to one of ordinary skill in the art.
Appellant, on pages 15 and 16 of the brief, contends that
the PTO has not met its initial burden of proof as to the
rejection of claims 7 to 10, and notes that there is no
evidence in the applied prior art references that the claimed
abrasive materials and grit size are known. Notwithstanding
this, however, the examiner still states on page 4 and 5 of
the answer that:
the size of the grit and the type specified present
nothing more than old and well known choices to one of
ordinary skill in the art. Since this statement of fact
was not challenged, it has become fact in this
application and is therefore evidence.
This rejection will not be sustained. Here, where the
appellant did challenge the examiner’s statement by demanding
evidence that the officially-noticed facts were well known, it
Appeal No. 2000-2154
Application 09/136,761
See MPEP § 2144.03 and Barry, Did You Ever Notice? 6
Official Notice in Rejections, 81 JPTOS 129, 138 (Feb. 1999).
11
was incumbent on the examiner to cite a reference or
references showing such facts, but the examiner has not done6
so.
Rejection Pursuant to 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), claims 7 to 9 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Mdller in view
of Kirk-Othmer.
As noted previously, Mdller discloses that the abrasive
on grinding wheel 56 may be cubic boron nitride. Kirk-Othmer3
discloses at pages 25 and 26 both diamond grit and cubic boron
nitride as known abrasives. With regard to claims 8 and 9, it
would have been obvious to use diamond grit instead of cubic
boron nitride as the abrasive for use on Mdller’s grinding
wheel, this being merely the selection of one known abrasive
in place of another depending on their known characteristics,
cost, and other factors. As for claims 7 and 9, which recite
a grit size of 150, Kirk-Othmer shows at page 27 that abrasive
Appeal No. 2000-2154
Application 09/136,761
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grits are available in a wide range of sizes, including 150.
To select a particular grit size for use on Mdller’s grinding
wheel would have been an obvious matter of choice, depending
on how fine a finish was desired on the particular workpiece
being machined.
Conclusion
The examiner’s decision to reject claims 1 to 10 is
affirmed as to claims 1, 4 and 5, and reversed as to claims 2,
3 and 6 to 10. Claims 7 to 9 are rejected pursuant to 37 CFR
1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new ground
of rejection shall not be considered final for purposes of
judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
Appeal No. 2000-2154
Application 09/136,761
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(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
Appeal No. 2000-2154
Application 09/136,761
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overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 196(b)
Appeal No. 2000-2154
Application 09/136,761
15
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
IAC:pgg
Peter N. Lalos, Esquire
Lalos & Keegan
1146 Nineteenth Street, N.W. Fifth Floor
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