Ex Parte Vesterlund et al

Board of Patent Appeals and Interferences

Jan 30, 2004

09351166 (B.P.A.I. Jan. 30, 2004)

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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte INGMAR VESTERLUND, GEORG KUGLER,
MARRUS DECHSLE and PETET KAHL
____________
Appeal No. 2003-1303
Application No. 09/351,166
____________
HEARD: October 8, 2003
____________
Before ABRAMS, STAAB, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is decision on an appeal from the examiner’s final rejection of claims 1-12,
all the claims currently pending in the application.
Appellants’ invention pertains to a method and apparatus for drilling holes in a
shell of a paper machine cylinder. An understanding of the invention can be derived
Appeal No. 2003-1303
Application No. 09/351,166
2
1While the term “the at least one support member of the drilling apparatus” in
claim 2 lack a proper antecedent, we understand this term as referring back to “the at
least one support member” of claim 1. Although this informality does not obscure the
metes and bounds of claims 1 and 2, it nonetheless is deserving of correction upon
return of this application to the Technology Center.
from a reading of independent claims 1, 6 and 10, which appear in Appendix A to
appellants’ main brief.1
The references relied upon by the examiner in the final rejection are:
Hakala et al. (Hakala) 5,090,846 Feb. 25, 1992
Parviainen et al. (Parviainen) 5,927,909 Jul. 27, 1999
Claims 1-12 stand rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims 1-3, 5, 6, 8 and 9 stand further rejected under 35 U.S.C. § 102(b) as
being anticipated by Hakala.
Claims 4, 7 and 10-12 stand further rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hakala in view of Parviainen.
Reference is made to appellants’ main and reply briefs (Paper Nos. 21 and 24)
and to the examiner’s answer (Paper No. 23) for the respective positions of appellants
and the examiner regarding the merits of these rejections.
The 35 U.S.C. § 112, second paragraph, rejection
The examiner lists four reasons for rejecting the claims under 35 U.S.C. § 112,
second paragraph. First, it is not clear to the examiner what the word “structures” refers
Appeal No. 2003-1303
Application No. 09/351,166
3
to in the terminology “eliminating influences of mechanical play due to structures of the
adjacent cylinder prior to drilling” appearing in claim 1, and the similar terminology
appearing in the other independent claims on appeal. Second, it is not clear to the
examiner how “the at least one support member” (emphasis added) can be coupled to
the cylinder to be drilled as called for in claim 2, and also coupled to the adjacent
cylinder as set forth in claim 1 from which claim 2 depends. Third, it is not clear to the
examiner how the support member can be pressed against the surface of the cylinder
to be drilled, as required by claim 3 and several other claims. Fourth, it is not clear to
the examiner what is meant by the term “radially movable” in claims 6 and 8.
The test for compliance with the second paragraph of § 112 is “whether the claim
language, when read by a person of ordinary skill in the art in light of the specification,
describes the subject matter with sufficient precision that the bounds of the claimed
subject matter are distinct.” In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476
(CCPA 1975). In other words, does a claim reasonably apprise those of skill in the art
of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994).
Concerning the examiner’s first reason for rejecting the claims under 35 U.S.C. §
112, second paragraph, we note the following statement appearing in appellants’
specification in the paragraph spanning pages 9 and 10:
Framework 2 can be provided with support members 29, e.g.,
pneumatic cylinders, which, prior to the machining operation, can be
Appeal No. 2003-1303
Application No. 09/351,166
4
2Consistent with this interpretation, appellants’ specification (e.g., page 7, lines 2-
3 and 21-23) uses the term “support member” in describing elements 4 and 29.
driven against the surface of cylinders s2 to be machined so as to
eliminate any possible play in the manner discussed above. In particular,
it is noted that the effect of any instability in the bearings of cylinder s1
and the support structures thereof, which act as a mounting base for
drilling apparatus 1 can thus be minimized, whereby the drilling operation
becomes very stable and, thus, more accurate. [Emphasis added.]
Based on this disclosure, a person of ordinary skill in the art would recognize that the
“structures” mentioned in the independent claims may comprise, among other things,
the bearings of the adjacent cylinder and the supporting structures (e.g., the bearing
mounts) thereof. Accordingly, the examiner’s first reason for rejecting the claims as
being indefinite is not well founded.
As to the examiner’s second and third reasons for rejecting the claims under 35
U.S.C. § 112, second paragraph, it appears that the examiner is reading the
terminology “the at least one support member of the drilling apparatus” of claims 2-4 on
a single one of the disclosed support members 4 and 29; however, we do not consider
the claim terminology to be so limited. From our perspective, a person of ordinary skill
in the art would appreciate that “the at least one support member” terminology of claims
2-4 broadly encompasses both elements 4 and 29.2 Thus, the examiner’s second and
third reasons for rejecting the claims as being indefinite also are not well founded.
As to the examiner’s fourth reason for rejecting the claims under 35 U.S.C. §
112, second paragraph, both claims 6 and 8 call for the feed frame to be radially
Appeal No. 2003-1303
Application No. 09/351,166
5
movable along the stationary framework relative to the shell of the paper machine
cylinder. Based on this express language, a person of ordinary skill would have no
trouble in understanding that the direction of movement of the feed frame called for in
these claims is with reference to the radial direction of the shell of the cylinder to be
drilled.
Judging from some of the examiner’s remarks in explaining this rejection, it
appears that the examiner’s concern is at least partially with the breadth of the claim
language appellants have employed. However, this alone is not a proper basis for
rejecting claims under § 112, second paragraph. This is so because the breadth of a
claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 693, 169
USPQ 597, 600 (CCPA 1971).
In light of the above, we shall not sustain the examiner’s rejection of claims 1-12
under 35 U.S.C. § 112, second paragraph.
The 35 U.S.C. § 102(b) rejection
The dispositive issue with respect to this rejection is whether Hakala discloses,
either expressly or under the principles of inherency, a drilling method that includes the
step of independent method claim 1 of
substantially eliminating influences of mechanical play due to
structures of the adjacent cylinder prior to drilling, comprising coupling at
least one support member to the adjacent cylinder to exert tangential
forces on the adjacent cylinder, whereby the mechanical play is
substantially eliminated [emphasis added,]
Appeal No. 2003-1303
Application No. 09/351,166
6
and a drilling apparatus that includes a device, as called for in claims 6 and 8,
for eliminating influences of mechanical play due to structures of said
adjacent cylinder comprising support members adapted to exert tangential
forced on said adjacent cylinder [emphasis added.]
It is the examiner’s position that Hakala’s drilling apparatus exerts at least some
tangential force on the adjacent cylinder s2 “due to such as the gravity forces of the
support member (21), and the cutting forces on the tools (17)” (answer, page 5).
Appellants respond (main brief, pages 10-13) that Hakala discloses an
apparatus for drilling holes that operates between two opposed cylinders whose center
axes are aligned with, or arranged parallel to, drill bits 17 of the drilling apparatus, such
that the drill bits 17 and drill guide 19 of Hakala move radially to drill radial holes into the
mantle of cylinder s1. Thus, appellants submit that there is no basis for concluding that
Hakala’s apparatus would exert a tangential force on the adjacent cylinder s2 during the
drilling operation, and that there is no express disclosure in Hakala of support members
arranged to exert a tangential force on adjacent cylinder s2 for this purpose. As to the
examiner’s assertion that tangential gravitational forces are applied to cylinder s2 of
Hakala by the weight of the drilling apparatus, appellants argue (main brief, pages 14-
15) that while Hakala’s drilling apparatus may exert a tangential force on cylinder s2
due to its weight, independent claims 1, 6 and 8 do not simply call for a tangential force
to be exerted on the adjacent cylinder, but also that said tangential force is such that
Appeal No. 2003-1303
Application No. 09/351,166
7
the influence of mechanical play is substantially eliminated as a result thereof, which
result is not taught by Hakala.
Based on our reading of the disclosure of Hakala (e.g., col. 1, lines 30-36; col. 2,
lines 49-60), appellants’ explanation as to how the drilling apparatus of Hakala operates
is reasonable. Moreover, the examiner has not disputed appellants’ position that the
drilling forces in Hakala would essentially be directed in the radial direction of the
cylinders. On the record before us, the examiner has proffered no technical or scientific
reasoning whatsoever as to why the drilling operation of Hakala would result in a
tangential force being exerted on cylinder s2. Further, while we appreciate that
Hakala’s drilling apparatus may exert a tangential force on cylinder s2 due to its weight,
we are in agreement with appellants that this alone would not be sufficient to meet the
terms of independent claims 1, 6 and 8, which, as pointed out by appellants, in effect
require the tangential force to be such that it substantially eliminates the influence of
mechanical play due to the supporting structures of the adjacent cylinder. Simply put,
Hakala does not disclose, either expressly or under the principles of inherency, any
tangential force being exerted on adjacent cylinder s2 to substantially eliminate the
influence of mechanical play due of the support structures of the adjacent cylinder, as
claimed in independent claims 1, 6 and 8.
For these reasons, we shall not sustain the examiner’s rejection of claims 1-3, 5,
6, 8 and 9 as being anticipated by Hakala.
Appeal No. 2003-1303
Application No. 09/351,166
8
The 35 U.S.C. § 103(a) rejection
The examiner concedes that Hakala does not disclosure or suggest a support
device coupled to the drilling apparatus that is adapted to press against the cylinder to
be drilled, whereby tangential forces are exerted on the adjacent cylinder by the drilling
apparatus, as called for in independent claims 10 and 12, and the similar limitations
appearing in claims 4 and 7. The examiner turns to Parviainen for a teaching of this
feature.
Parviainen is directed to a device for drilling holes in a shell of a paper machine,
and more particularly, to an improvement over machines for drilling holes of the type
disclosed in Hakala (col. 1, line 28 through col. 2, line 27). In Parviainen the drilling
device is supported between a pair of adjacent cylinders 10 and above a third cylinder
11 to be drilled, and is guided along the length of the cylinder to be drilled by means of
wheels 23A-23B on the ends of telescoping support arms that directly contact the
adjacent cylinders and/or cylinder to be drilled (col. 3, lines 4-20). Thus, in Parviainen
the drilling device does not require separate guides such as the guides 12a, 12b used
in Hakala for guiding the drilling device along the length of the cylinder to be drilled.
According to Parviainen, this mounting arrangement reduces the amount of time
required to mount the drilling device on the supporting cylinders (col. 2, line 60-67).
According to the examiner, it would have been obvious to one of ordinary skill in
Appeal No. 2003-1303
Application No. 09/351,166
9
3For example, a radial force directed through the center of a cylinder is parallel to
a tangent line of the cylinder, but certainly is not a tangential force exerted on that
cylinder.
the art in view of Parviainen’s teachings to modify Hakala’s drilling apparatus to
comprise
a support device coupled to the drilling apparatus, which is adapted to
press against the cylinder to be drilled, whereby tangential forces are
exerted on the adjacent cylinder by the drilling arrangement . . . in order to
increase the usability for the Hakala’s et al.’s device for drilling on the
cylinders disposed at offset positions. [Answer, page 7.]
For the reasons that follow, we do not agree. First, it is debatable whether
Parviainen’s drill supporting structures (elements 21A, 23A, 27, etc.) exert a tangential
force on the adjacent cylinders 10, as required by the claims. In this regard, the
examiner’s statement (answer, page 10) that Parviainen’s support structure is oriented
to have a drilling direction parallel to the tangential direction of the adjacent cylinder
does not suffice because a force parallel to a tangential direction is not the same as a
tangential force exerted on that cylinder.3 Second, the examiner’s nebulous motivation
for the proposed modification (“to increase the usability for the Hakala’s et al.’s device
for drilling on the cylinders disposed at offset positions”) does not appear to be founded
on any clear teaching in either of the applied references and strikes us as being based
on hindsight. Third, it is not clear precisely how the examiner proposes to modify
Hakala in view of Parviainen’s teachings. Fourth, based on Parviainen’s express
teaching (col. 1, line 28, through col. 2, line 27) that the drill support arrangement
Appeal No. 2003-1303
Application No. 09/351,166
10
thereof is intended to be an improvement over the type of drill support arrangement
disclosed in Hakala, we think one of ordinary skill in the art would view the drill support
arrangements of Hakala and Parviainen as being alternative solutions for supporting a
shell drilling device rather than support arrangements whose constituent parts could be
mixed and matched to create a new hybrid drill support arrangement.
In light of the foregoing, we shall not sustain the examiner’s rejection of claims 4,
7 and 10-12 as being unpatentable over Hakala in view of Parviainen.
Conclusion
Each of the standing rejections is reversed.
The decision of the examiner finally rejecting the appealed claims is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2003-1303
Application No. 09/351,166
11
LJS/lp
Appeal No. 2003-1303
Application No. 09/351,166
12
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
TEAM 5 LEGAL TECH
APPEAL NO. 2003-1303 - JUDGE STAAB
APPLICATION NO. 09/351,166
APJ Staab
APJ Bahr
APJ Abrams
DECISION: Reversed
PREPARED: Oct 26, 2004
OB/HD
PALM
ACTS 2

DISK (FOIA)
REPORT
GAU: 3722