Ex Parte Swei

Board of Patent Appeals and Interferences

Jan 11, 2006

09810641 (B.P.A.I. Jan. 11, 2006)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GWO SHIN SWEI

____________

Appeal No. 2005-2098
Application No. 09/810,641
____________

ON BRIEF
____________

Before FRANKFORT, McQUADE, and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1
through 8, all of the claims pending in the application.

Appellant’s invention relates to abrasive discs for use with orbital sanders which are
designed for use with integral vacuum exhaust systems. As noted on page 2 of the
specification:
The invention provides a circular abrasive disc having a major
abrading surface provided with an annular zone, intermediate between the
center and the circumference of the circular disc wherein the radial
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Application No. 09/810,641

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distance from the center of the disc to the annular zone is from one third to
one half of the radius of the disc and the radial distance from the
circumference of the disc to the zone is from one quarter to one third the
radius of the disc, and, exclusively within the annular zone, a plurality of
perforations, each having a diameter less than one quarter the width of the
annular zone and being essentially uniformly spaced in the zone such that
the distance between any pair of adjacent perforations is less than twice
the greatest dimension of either perforation.
Because the annular zone is located where, (in a typical orbital
sander with a vacuum device drawing air through exhaust ports), the
exhaust ports are also located, the perforations are effective to cooperate
with the vacuum device to remove swarf from the surface of the
workpiece. Moreover there is no need to orient the disc in any specific
manner because, given the distribution and size of the perforations, with
conventional sanders having vacuum exhaust devices, at least two are
always in register with each exhaust port and several others are in close
proximity.

A further understanding of the invention can be derived from a reading of
independent claims 1 and 8, a copy of which appears in the Appendix to appellant’s
brief.

The prior art references relied upon by the examiner in rejecting the appealed claims
are:
Marton 4,184,291 Jan. 22, 1980
Gutknecht et al. (Gutknecht) 5,309,682 May 10, 1994
Jöst 5,810,650 Sep. 22, 1998
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Application No. 09/810,641

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Claims 1 through 5, 7 and 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jöst in view of Marton.

Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jöst in
view of Marton and Gutknecht.

Rather than reiterate the examiner's commentary with regard to the above-noted
rejections and the conflicting viewpoints advanced by appellant and the examiner
regarding the rejections, we make reference to the final rejection (mailed February 24,
2004) and the examiner’s answer (mailed October 22, 2004) for the reasoning in
support of the rejections, and to appellant’s brief (filed July 26, 2004) and reply brief
(filed December 13, 2004) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.

Appeal No. 2005-2098
Application No. 09/810,641

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Concerning the rejection of claims 1 through 5, 7 and 8 under 35 U.S.C. § 103(a), we
direct attention to the final rejection (pages 2-3) and answer for a full understanding of
the examiner’s position. Beginning with a consideration of independent claim 1, after a
review of the applied patents to Jöst and Marton, we agree with appellant that the
examiner has not made out a prima facie case of obviousness and has improperly
based at least part of his suggested modifications of the prior art on hindsight gleaned
from first having read appellant’s own specification and claims. In particular, while we
would support the examiner’s conclusion that the collective teachings of Jöst and
Marton would have made it obvious to one of ordinary skill
in the art at the time of appellant’s invention to provide the perforations (8) of Jöst in a
distribution and size so as to insure that at least two perforations are in register with
each exhaust port (7) of the support member (5/6) so as to thereby insure unhindered
suction of abrasive dust away from the grinding surface, we find no basis whatsoever
for the examiner's attempt
to then eliminate all of the perforations in the grinding disc (1) of Jöst except those that
would provide an annular zone of perforations, and thus an abrasive disc, like that
specifically defined in appellant’s claim 1.
The examiner’s contention that the pattern of distribution of perforations across the
disc in Jöst, particularly those located outside the exhaust ports of the sander, is not
critical or otherwise important to the invention therein is belied by the disclosure of that
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Application No. 09/810,641

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patent at column 2, lines 20-30. As for the examiner’s assertion that appellant has not
addressed any advantage to not having perforations outside the annular zone defined in
claim 1 on appeal, we agree with appellant’s comments set forth on page 2 of the reply
brief.

In light of the foregoing, we will not sustain the examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as being unpatentable over Jöst in view of Marton. Nor will we
sustain the § 103 rejection of claims 2 though 5 and 7 which are dependent from claim
1.

Regarding the rejection of dependent claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Jöst in view of Marton and Gutknecht, we have reviewed the patent
to Gutknecht, but find nothing therein which makes up for or otherwise overcomes the
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Application No. 09/810,641

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deficiencies noted above in the basic combination of Jöst and Marton. Thus, the
examiner’s rejection of claim 6 under
35 U.S.C. § 103(a) will not be sustained.

However, we reach a contrary conclusion with respect to the rejection of
independent claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Jöst in view
of Marton. Claim 8 does not recite the “annular zone” and the particular construction of
the abrasive disc with the specificity set forth in claim 1 on appeal. As we noted supra,
we agree with the examiner’s conclusion that the collective teachings of Jöst and
Marton would have made it obvious to one of ordinary skill in the art at the time of
appellant’s invention to provide the perforations (8) of Jöst in a distribution and size so
as to insure that at least two perforations are in register with each exhaust port (7) of the
support member (5/6) so as to thereby insure unhindered suction of abrasive dust away
from the grinding surface. This combination would result in a sander system like that in
appellant’s claim 8 on appeal and, contrary to appellant’s assertions in the brief (pages
8-9), would clearly provide a circular abrasive disc having a major abrading surface
provided with “an annular zone” having a sufficient plurality of perforations so that
wherein at least two perforations are in register with each exhaust port on the backing
pad or support member (5/6) of Jöst. This claim, unlike claim 1, does not in any way
exclude perforations from the remainder of the abrading disc, i.e., from both a central
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region and a circumferential peripheral region of the disc. Thus, the abrasive disc of
Jöst as modified by Marton would have “an annular zone” including a plurality of
perforations meeting the requirements of claim 8 on appeal. The examiner’s rejection of
claim 8 under 35 U.S.C.
§ 103(a), therefore, is sustained.

The decision of the examiner is accordingly affirmed-in-part.

Appeal No. 2005-2098
Application No. 09/810,641

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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

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )

Appeal No. 2005-2098
Application No. 09/810,641

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