Ex Parte Tack

Patent Trial and Appeal Board

Nov 7, 2017

13980705 (P.T.A.B. Nov. 7, 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.
13/980,705 07/19/2013 Johannes Tack 5172 4828
278 7590 11/07/2017
MTfTTAFJ T STRTKFR
EXAMINER
Collard & Roe, P.C. DION, MARCEL T
1077 Northern Boulevard
Roslyn, NY 11576 ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
11/07/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES TACK
Appeal 2016-006935
Application 13/980,705
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3—8, 10, 11, 13, and 15.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Subsequent to entry of the Examiner’s final rejection, Appellant cancelled
claims 12 and 14. See Br. 6; Ans. 2—3.
Appeal 2016-006935
Application 13/980,705
THE INVENTION
Appellant’s invention is a grinding body. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A grinding body (1), consisting of a carrier material (5)
and an abrasive (2) adhesively applied to the carrier material to
form an abrasive top side (10), wherein the abrasive top side
(10) of the grinding body (1) includes an abrasive-free edge,
which laterally delimits an active region of the abrasive (2), and
wherein the abrasive-free edge is formed by an applied material
(3) which smooths the structure of the abrasive (2) on the
abrasive top side (10) and wherein fabric, paper, or a plastic
film is used as the carrier material (5).
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Crowe US 3,394,502
Rubenstrunk DE 4440034 A1
Kapgan US 2003/0207653 A1
Yoshino US 2004/0185361 A1
Annen US 2008/0233845 A1
July 30, 1968
May 11, 1995
Nov. 6, 2003
Sept. 23, 2004
Sept. 25, 2008
The following rejections are before us for review:
1. Claims 1, 3, 10, 11, 13, and 15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Annen and Rubenstrunk.2
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Annen, Rubenstrunk, Kapgan, and Yoshino.
3. Claims 5—8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Annen, Rubenstrunk, and Crowe.
2 Claims 12 and 14, previously under this ground of rejection in the final
rejection, have been cancelled. Claims App. Such cancellation has similarly
obviated a rejection under 35 U.S.C. § 112, second paragraph. Ans. 2—3.
2
Appeal 2016-006935
Application 13/980,705
OPINION
Unpatentability of Claims 1, 3, 10, 11, 13, and 15
over Annen and Rubenstrunk
Appellant argues claims 1,3, 10, 11, 13, and 15 as a group. Br. 10-
11. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Annen teaches a grinding body substantially
as claimed except for an abrasive-free edge. Final Action 3. The Examiner
relies on Rubenstrunk as disclosing an abrasive-free edge that laterally
delimits the active region of the abrasive. Id. (citing Rubenstrunk, pp. 4—5).3
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to form an
abrasive-free edge on Annen’s top side. According to the Examiner, a
person of ordinary skill in the art would have done this to allow large
workpieces to be machined without damaging them. Id. (citing
Rubenstrunk, p. 6)
Appellant argues that Annen does not teach applying abrasive to the
carrier as claimed. Br. 10. Appellant argues that Annen’s abrasive 172 is
applied to abrasive member 170, not to carrier 160. Id. Secondly, Appellant
argues that Rubenstrunk does not teach an abrasive-free edge as claimed. Id.
at 11. According to Appellant, Rubenstrunk provides abrasive grains to the
very edge of the grinding wheel. Id.
Regarding Appellant’s first argument, the Examiner states that
Annen’s abrasive 172 is part of abrasive member 170. Ans. 3. The
Examiner explains that, when abrasive member 170 is adhesively attached to
3 Citations in the record to Rubenstrunk are to the English translation version
of the reference.
3
Appeal 2016-006935
Application 13/980,705
support layer 160 (or carrier), the claim requirement of an abrasive
adhesively applied to carrier material is met. Id.
Annen discloses a grinding device with an abrasive member 170
disposed on flexible support member 160 that, in turn, is attached to
compressible member 150. Annen H 47—50. The “major surface” of
compressible member 150 is referred to as element 152. Id. | 60. Annen
further teaches that:
An abrasive member 170 with an abrasive surface 172 is
attached to the major surface of the support layer 160 such that
the abrasive surface 172 faces away from the compressible
member 150.
Annen | 51. Read in context, abrasive surface 172 is merely the upper
surface of abrasive member 170, much in the same way that “major
surface 152” is merely the upper surface of compressible member 150. Id.
| 60. Thus, the Examiner’s finding that Annen has an abrasive adhesively
applied to carrier material is supported by a preponderance of the evidence.
We find Appellant’s second argument equally unpersuasive.
Appellant’s argument regarding abrasives disposed at the edge relates to a
“variant” embodiment, in which “the zone of elastic material is provided
with a texture of abrasive grains, i.e., the material is homogenously
impregnated or mixed with abrasive grain,” for the purpose of eliminating
any grinding marks or cracks. Br. 11; see Rubenstrunk p. 4,11. 20-23;
Ans. 4. However, Rubenstrunk also discloses a first embodiment where the
outer-edge region is a “zone of elastic material,” which is not disclosed to
include impregnated abrasive grains. Rubenstrunk, p. 4,11. 15—19.
Rubenstrunk does this to prevent or eliminate grooves and scratches caused
by the breakout of abrasive agglomerates or grains from the outlet area of
4
Appeal 2016-006935
Application 13/980,705
the workpiece. Id. at 4,11. 10-19; Ans. 4. In view of this disclosure, we
determine that the Examiner’s findings, again, are supported by a
preponderance of the evidence.
Finally, Appellant argues that the rejection lacks a rational
underpinning to support a legal conclusion of obviousness. Br. 11 (citing
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). This argument is
unpersuasive as it depends on Appellant’s argument that Rubenstrunk fails
to disclose an abrasive free edge, which we have previously found
unsupported by the factual record. In view of the foregoing, we sustain the
Examiner’s unpatentability rejection of claims 1, 3, 10, 11, 13, and 15.
Unpatentability of Claim 4
over Annen, Rubenstrunk, Kapgan, and Yoshino
Claim 4 depends from claim 1. Claims App. Appellant does not
argue for the separate patentability of claim 4 apart from arguments
presented with respect to claim 1, which we have previously considered.
Br. 12. Consequently, we sustain the Examiner’s rejection of claim 4. See
37 C.F.R. § 41.37(c)(iv) (failure to separately argue claims).
Unpatentability of Claims 5—8
over Annen, Rubenstrunk, and Crowe
Claims 5—8 depend, directly or indirectly, from claim 1. Appellant
does not argue for the separate patentability of these claims apart from
arguments presented with respect to claim 1, which we have previously
considered. Br. 12. Consequently, we sustain the Examiner’s rejection of
claims 5—8. 37 C.F.R. § 41.37(c)(iv)
5
Appeal 2016-006935
Application 13/980,705
DECISION
The decision of the Examiner to reject claims 1, 3—8, 10, 11, 13, and
15 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
6