Ex Parte Swiatowy

Patent Trial and Appeal Board

Jan 9, 2017

12910548 (P.T.A.B. Jan. 9, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/910,548 10/22/2010 Jeffrey Swiatowy ITW01-042-US 8377
109612 7590 01/11/2017
Klintwnrth & Rnzenhlat TP T T C anH
EXAMINER
Illinois Tool Works Inc. CARTER, MONICA SMITH
19 North Green Street
Chicago, IL 60607 ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
01/11/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ kandrip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY SWIATOWY
Appeal 2015-003996
Application 12/910,548
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey Swiatowy (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1—9, as set forth in the Final
Action dated February 20, 2014 (“Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-003996
Application 12/910,548
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter “relates to tools for removing
fusion bonded epoxy from the surface of a pipe.” Spec. para. 1. Claims 1,
4, and 7 are independent. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A pipe coating removal tool comprising
a rotatable shaft including a longitudinal axis adapted to
be oriented substantially perpendicular to a central longitudinal
axis of a pipe,
a plurality of fingers extending radially outward of said
shaft,
at least one of said fingers is made of a spring metal,
said at least one of said fingers having an outer end, and
an abrasive pad at said outer end of said at least one of
said fingers, said abrasive pad having diamond particles
embedded in soft metal.
Appeal Br. 41 (Claims App.).
EVIDENCE
The Examiner relied upon the following evidence:
Babcock US 190,115 May 1,1877
Brogden US 5,070,656 Dec. 10, 1991
REJECTION
Claims 1—9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brogden and Babcock. Final Act. 2-3.
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ANALYSIS
Claims 1—3
The Examiner found that Brogden discloses a tool including, inter
alia, a rotatable shaft having a plurality of fingers extending radially
outward from the shaft and abrasive pads at the outer end of each finger.
Final Act, 2 (citing Brogden, Fig. 5; col. 4,1. 64-col. 5,1. 31). The
Examiner acknowledged that Brogden “does not disclose that the abrasive
pads or segments include diamond particles embedded in a soft metal.” Id.
at 2—3. However, the Examiner found that Babcock discloses “that it is old
and well known to make abrasive tools of diamond particles embedded in
soft metal.” Id. at 3, The Examiner determined that “it would have been
obvious to one of ordinary skill in the art to have substituted the abrasive
tool taught by [Babcock] for the abrasive tool taught by [Brogden], for the
predictable result of providing a thinner, durable abrasive tool less prone to
breakage.” Id. (citing Babcock, col, 2,11, 23—25).
Appellant argues that the Examiner’s stated reason lor combining the
teachings of Brogden and Babcock “is contradictory to the teaching of
Brogden,” because “Brogden does not desire a thinner, and therefore lighter,
abrasive tool.” Appeal Br. 16. In particular, Appellant asserts that
“Brogden desires the abrasive stones 20 to be heavy to assist with biasing
the stones toward the floor and to be thick to provide prolonged use while
being worn.” Id. at 17, According to Appellant, “[substituting thinner,
lighter abrasive members may not sufficiently bias the abrasive members
toward the floor and a thinner, lighter abrasive member would wear out too
quickly, thereby providing a very7 short use/life of the abrasive members.”
Id. at 17. For the reasons that follow, we agree with Appellant that the
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Application 12/910,548
Examiner’s proposed modification of Brogden’s grinding machine to replace
the abrasive stones with Babcock’s diamond-embedded soft metal abrasive
is not supported by adequate reasoning based on rational underpinnings. See
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
As Appellant notes, “Brogden teaches applying the weight of the
machine 10 through the stones 20 via the head to apply the stones 20 against
the floor.” Appeal Br. 19. Specifically, Brogden discloses that “[t]he whole
or most of the weight of the grinding machine rests, through the springs, on
to the stone.” Brogden, col. 2,11. 10-12. According to Brogden, “the force
urging each stone downwards can be from 65 to 140 lbf (30 to 65 kg) per
stone, preferably about 100 lbf (45 Kg) per stone.” Id., col. 2,11. 24—27.
Babcock discloses dental tools that include “soft metallic disks or
wheels, points, and strips or ribbons, provided upon their face or working-
surfaces with particles of diamond-dust or powder.” Babcock, col. 1,11. 20-
23. According to Babcock, the diamond particle disks or wheels “are more
durable and less liable to break, and can be made much thinner than any
other wheel or disk now in use, leaving the teeth and fillings highly
polished.” Id., col. 2,11. 23—26.
We fail to see why one having ordinary skill in the art would have
been led, for the Examiner’s stated purpose of “providing a thinner, durable
abrasive tool less prone to breakage” (Final Act. 3), to modify Brogden’s
machine, which uses heavily-weighted thick abrasive stones, by replacing
the stones with soft metal embedded with diamond particles. To the extent
that Babcock’s diamond-particle tools may be thinner, more durable and less
likely to break than prior art dental tools, the Examiner has not pointed to
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Application 12/910,548
any evidence that abrasive pad thickness or durability was an issue to
Brogden or that Babcock’s soft metal abrasive dental tool material would be
suitable for Brogden’s heavy grinding machine. As such, the Examiner’s
articulated reason for the proposed modification Brogden’s machine lacks
rational underpinnings.
For these reasons, the Examiner fails to establish that the subject
matter of claim 1 would have been obvious to one having ordinary skill in
the art at the time of the invention. Accordingly, we do not sustain the
rejection of claim 1, and its dependent claims 2 and 3, under 35 U.S.C.
§ 103(a) as unpatentable over Brogden and Babcock.
Claims 4 and 5
Independent claim 4 is similar to claim 1 in that it is directed to a
“pipe coating removal tool” including a rotatable shaft and abrasive pads at
the ends of radially extending fingers. Appeal Br. 41-42 (Claims App.).
However, claim 4 and its dependent claim 5 do not require abrasive pads
having diamond particles embedded in soft metal. Id. As such, the
Examiner’s rejection of claims 4 and 5 did not rely upon the disclosure of
Babcock or the proposed modification of Brogden discussed supra in the
rejection of claim 1.
The Examiner found that Brogden discloses a tool having every
limitation recited in claims 4 and 5, including “a plurality of spaced apart
fingers 29 extending radially outward of the shaft, the fingers made of spring
metal. . ., the fingers each having an outer end with an abrasive pad 20.”
Final Act. 2 (citing Brogden, Fig. 5; col. 4,1. 64—col. 5,1. 31). The
Examiner also found that Brogden discloses “a hub non-rotatably connected
to the shaft 30; a disc at a distal end of the shaft 30, the disc having a
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Application 12/910,548
forward surface and a plurality of abrasive segments around an outer
circumference of the forward surface, the circumference divided into a
plurality of spaced apart fingers,” Id. The Examiner explained that the
recitation of “pipe coating removal tool” is directed to the intended use of
the claimed tool, and a prior art structure meets the claim if it is capable of
performing the recited use. Id. at 3; see also Ans. 6 (Examiner finding that
“the device of Brogden ... is fully capable of removing coating from a pipe,
as broadly claimed by [Ajppellant”). Regarding the limitation of “a
rotatable shaft including a longitudinal axis adapted to be oriented
substantially perpendicular to a central longitudinal axis of a pipe,” the
Examiner explained “that there is no structure claimed that adapts the shaft
. . . to be positioned as claimed.” Final Act. 3.
Appellant argues that “Brogden does not teach or suggest a pipe
coating removal tool.” Appeal Br. 23. Appellant asserts that “Brogden
discloses a floor grinding machine adapted to grind flat floors made of, for
example, terrazzo and concrete,” and “[t]he floor grinding machine is not
capable of removing coating from a pipe, nor does Brogden contemplate
grinding pipes.” Id. (citing Brogden, col. 1,11. 4-7); see also Reply Br, 6—8
(asserting that Brogden is not capable of performing the intended use).
The issue presented by this rejection is similar to the issue before the
court in In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997). Schreiber’s patent
application claimed a popcorn dispensing device that was “conically shaped
with a large opening [to fit] on a container and a smaller opening at the
opposite end,” through which popped popcorn could pass. Id. at 1474.
Claim 1, directed to the device, was rejected as anticipated by the Harz
patent, which disclosed a spout for nozzle-ready canisters that is useful for
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Application 12/910,548
dispensing oil from an oil can. Id. at 1475, The Board, on appeal from the
Examiner’s adverse decision, affirmed the rejection and concluded that
several of the recitations in the claim merely set forth the function and
intended use of the top but did not require any structural feature other than
those taught by Harz and found that Harz’s oil dispensing device was
capable of dispensing popcorn in the manner claimed. Id. at 1476. The
court affirmed the Board’s decision, stating that, although Harz did not
address the use of the disclosed structure to dispense popcorn, “the absence
of a disclosure relating to function does not defeat the Board’s finding of
anticipation.” Id. at 1477 (stating “[i]t 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”) (citations omitted). The court held that “Schreiber’s
contention that his structure will be used to dispense popcorn does not have
patentable weight if the structure is already known, regardless of whether it
has ever been used in any way in connection with popcorn.” Id.
As in Schreiber, the fact that Appellant here asserts discovery of a
new use, i.e., removing epoxy coating material from pipe surfaces, for a
known device, i.e., a rotating tool with abrasive pads for grinding a floor
surface, does not make a claim to that old device patentable. Thus,
Appellant’s argument (Appeal Br, 23) that Brogden does not contemplate
that its grinding machine could be used to remove a coating from pipe is not
persuasive of error in the Examiner’s rejection.
Appellant argues that Brogden’s floor grinding machine 10 includes
additional features that would prevent the machine from being used to
remove pipe coating, “such as . . , the assembly 12, the housing 14, the size
and weight of the stones 20 in the heads 13, the reliance on a fork lift truck
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Application 12/910,548
11 to move the machine 10, the entire weight of the housing 14 and
assembly 12 placed upon the heads 13.” Appeal Br. 23 (citing Brogden
col. 3,1. 62—col. 4,1. 17). Appellant argues that Brogden’s “machine 10
cannot be raised to a sufficient level to space it a distance above the floor to
allow it to move over a pipe or positioned relative to a pipe to remove
coating from a pipe.” Id. at 24; see also Reply Br. 10 (Appellant asserting
that “the floor cleaning device cannot be lifted or manipulated around a pipe
to remove coating on the pipe”). Appellant’s argument is not persuasive of
error because, as the Examiner explains, “Appellant has not in any way
limited the size, shape, weight, density, or any other parameter of the
claimed tool, leaving the claims open to the broadest reasonable
interpretation.” Ans. 6. In other words, the claim does not include any
recitatio ns limiting the size and scale of the tool or excluding additional
structural features from the tool. See In re Self, 671 F.2d 1344, 1348 (('(’PA
1982) (limitations not appearing the claims cannot be relied upon for
patentability).
We agree with the Examiner that “the device of Brogden, in providing
a tool with a plurality of fingers extending radially outward of the shaft, at
least one of the fingers made of spring metal, with an abrasi ve pad at an
outer end of the finger, is fully capable of removing coating from a pipe.”
Ans. 6. The Examiner does not propose that Brogden’s grinding machine be
used for a different specified objective than what it was designed to
accomplish; namely, the machine is designed to grind a surface using
abrasive pads. To the extent that Brogden discloses a grinding machine
having additional features not recited in claim 4, Appellant does not
persuasively explain why these additional features would make the grinding
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Application 12/910,548
incapable of grinding a pipe surface to remove a coating.
Moreover, Appellant does not offer any evidence or sufficiently persuasive
technical reasoning to explain why Brogden’s machine could not be lifted1
around a pipe or that a pipe could not fit under the machine.
Appellant argues that, even if a pipe could fit under Brogden’s
machine, “a side of the spinning stones of the floor cleaning device would
jam into a side of the pipe, ultimately resulting in damage to the stones or
damage to the pipe.” Reply Br. 10. This assertion is not persuasive of error
as it amounts to mere attorney argument unsupported by objective
evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence”) (citation
omitted). Appellant offers no evidence to establish that the rotating stones
of Brogden’s device would necessarily jam and damage a pipe. Appellant
has not sufficiently rebutted the Examiner’s finding that Brogden’s device,
without modification, is capable of removing a pipe coating as claimed.
Appellant further argues that Brogden does not disclose “a rotatable
shaft with a longitudinal axis adapted to be oriented perpendicular to a
central longitudinal axis of a pipe.” Appeal Br. 24. In particular, Appellant
asserts that Brogden is not “capable of orienting a longitudinal axis of a
rotatable shaft substantially perpendicular to a central longitudinal axis of a
pipe.” Id. at 26. We do not find this argument convincing.
Appellant’s Specification describes that “tool 10 is rotatably
symmetric about an elongate shaft 12 having a rearward end 14 adapted for
insertion into the retainer of a rotatable machine, not shown, a longitudinal
1 We note that Brogden discloses that “[t]he fork lift truck can serve to raise
the machine.” Brogden, col. 3,1. 13.
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axis 15, and a threaded outer end 16 for tlireadedly retaining a working end
18.” Spec. para. 14; see also id., Figs. 1, 4 (depicting longitudinal axis 15 of
shaft 12 as substantially perpendicular to the plane of fingers 40 at working
end 18). Notably, in this case, the Specification does not provide any
particular description regarding the shaft axis orientation relative to a pipe
axis that would give the phrase “adapted to” a narrower meaning than
“capable of.” See In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)
(contrasting the narrower meaning of “adapted to” as meaning “made to,”
“designed to,” or “configured to,” with the broader meaning of “adapted to”
as meaning “capable of’ or “suitable for”).
Brogden discloses, with reference to Figures 5a and 5b, a grinding
head arrangement wherein “stone holder[s] 21 are simply supported on the
ends [of] the spring arms 29 extending outwardly from a mounting body 30
on the lower end of shaft 26.” Brogden, col. 4,11. 66-68. Figure 5a of
Brogden depicts that the longitudinal axis of shaft 26 is substantially
perpendicular to the plane of arms 29. If the tool is oriented such that the
plane of grinding arms 29 is level, the longitudinal axis of shaft 26 would be
perpendicular to the longitudinal axis of a horizontal pipe that is also level.
Appellant does not offer any evidence or persuasive explanation as to
why the longitudinal axis of Brogden’s shaft 26 would not be capable of
being orienting substantially perpendicular to the central longitudinal axis of
a pipe. Thus, Appellant does not persuade us of error in the Examiner’s
finding that Brogden discloses “a rotatable shaft including a longitudinal
axis adapted to be orientated substantially perpendicular to a central
longitudinal axis of the pipe,” as recited in claim 4.
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Application 12/910,548
For the above reasons, Appellant fails to persuade us that Brogden
lacks any of the limitations recited in independent claim 4. Although the
Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable
over Brogden and Babcock, the Examiner did not rely on Babcock for any
limitation recited in these claims. See Final Act. 2—3 (the Examiner relying
on Babcock for disclosing “diamond particles embedded in soft metal”). As
such, because Brogden discloses every limitation of claim 4, the reference
anticipates the subject matter of claim 4. Accordingly, we sustain the
rejection of claim 4, and of dependent claim 5 for which Appellant does not
assert any separate patentability arguments, under 35 U.S.C. § 103(a). “It is
well settled that anticipation is the epitome of obviousness.” In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (internal quotation marks
and citations omitted).
Additionally, we briefly address Appellant’s proffered evidence of
secondary considerations of non-obviousness. See Appeal Br. 26-30
(arguing that the Declaration of Jeffrey Swiatowy demonstrates objective
evidence of commercial success and long-felt need). We address this
submitted evidence only to note that, because Brogden anticipates the
subject matter claims 4 and 5, we fail to see the relevance of secondary
considerations evidence of non-obviousness to our review of the
rejection. See In re Wiggins, 488 F.2d 538, 543 (CCPA 1973) (stating that
evidence of commercial success, unexpected results, etc. is not pertinent to a
rejection made under § 102(b)).
Claims 7 and 8
Independent claim 7 is substantially similar in scope to independent
claim 4. Appeal Br. 42 (Claims App.). Appellant relies on the same
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Application 12/910,548
arguments presented against the rejection of claim 4 as the basis for
patentability of claim 7. Id, at 32—38. For the same reasons discussed supra
in our analysis of claim 4, these arguments do not demonstrate error in the
Examiner’s findings with respect to the disclosure of Brogden. Accordingly,
we sustain the rejection of claim 7, and of claim 8 for which Appellant does
not assert any separate patentability arguments, under 35 U.S.C. § 103(a).
Claims 6 and 9
Claim 6 depends from independent claim 4 and recites “said abrasive
pads include diamond particles embedded in a metal media.” Appeal Br. 42
(Claims App.). Claim 9 depends from independent claim 7 and similarly
recites “wherein each one of said abrasive segments contains a plurality of
diamond particles.” Id. at 43. Thus, claims 6 and 9 are substantially similar
in scope with independent claim 1, and the Examiner’s rejection of these
claims is based on the same combination of Brogden and Babcock that we
find deficient in the rejection of claim 1, as discussed supra. Final Act. 2-3.
Specifically, for the same reasons discussed supra, the Examiner’s
articulated reasoning (Final Act. 3) for modifying Brogden based on the
teachings Babcock lacks rational underpinnings. Accordingly, we do not
sustain the rejection of claims 6 and 9 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1—3, 6, and 9 is
REVERSED.
The decision of the Examiner to reject claims 4, 5,7 and 8 is
AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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