Ex Parte Waggle et al

Patent Trial and Appeal Board

Jun 25, 2013

12035461 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES M. WAGGLE, KEVIN M. GAMBLE,
RUY FROTA DE SOUZA FILHO, and KAREN A. CRAIG
____________

Appeal 2011-007336
Application 12/035,461
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007336
Application 12/035,461

2

STATEMENT OF THE CASE
James M. Waggle, Kevin M. Gamble, Ruy Frota de Souza Filho, and
Karen A. Craig (“Appellants”) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 26-35.1 We have jurisdiction under 35
U.S.C. § 6(b).
The Claimed Subject Matter
Claims 26 and 31 are independent. Claim 26 is illustrative of the
claimed subject matter and is reproduced below.
26. A helical milling cutter comprising:
an outer surface;
a rotational axis about which the outer surface rotates;
a first row having two or more inserts;
a second row having two or more inserts, the second row
being adjacent to the first row;
a third row having two or more inserts, the third row
being adjacent to the second row, wherein the first, second and
third rows are arranged on the surface generally perpendicular
and circumferentially about the rotational axis;
two or more columns formed on the outer surface and
extending across the first, second and third rows, wherein the
two or more columns extend helically along at least part of and
parallel to the rotational axis and are spaced apart on the outer
surface, wherein the two or more inserts of the first, second and
third rows in each of the two or more columns form one or
more cutting edges along the rotational axis that define a layout
line having a non-uniform varied slope beyond the first row and

1 Appellants previously cancelled claims 1-25. See Amendment (dated Mar.
22, 2010) at 4, 8.
Appeal 2011-007336
Application 12/035,461

3
each layout line is identical in shape to all other non-continuous
layout lines.
App. Br. 18 (Claims App’x, Claim 26).
Reference
The Examiner relies upon the following prior art reference:
Long US 7,399,146 B2 July 15, 2008
Rejections
The Examiner makes the following rejections:2
I. Claims 26 and 31 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite;
II. Claims 30 and 34 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite;
III. Claims 26-35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Long; and
IV. Claims 26, 30, 31, and 34 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Long.
SUMMARY OF DECISION
We REVERSE.

2 Appellants also attempt to appeal the Examiner’s objection to the drawings
under 37 C.F.R. § 1.83(a). App. Br. 7-8. “The Examiner’s objections to the
drawings . . . are reviewable by petition under 37 C.F.R. § 1.181 and thus are
not within the jurisdiction of the Board.” Ex Parte Frye, 94 USPQ2d 1072,
1075-76 (BPAI 2010) (citing 37 C.F.R. § 1.127 (2009); In re Berger, 279
F.3d 975, 984 (Fed. Cir. 2002); In re Mindick, 371 F.2d 892, 894 (CCPA
1967)).
Appeal 2011-007336
Application 12/035,461

4
OPINION
Rejection I
The Examiner determined that the phrase “layout line” in claims 26
and 31 is indefinite because “the layout line does not impart structure (in
other words, the layout line does not exists [sic]) to the helical milling
cutter.” Ans. 3; see also Advisory Action (mailed Aug. 3, 2010) at 2
(emphasizing that “layout line” is indefinite because it does not impart
structure).
Appellants contend that the phrase “layout line” is “well defined in
the specification and drawings and can be summarized as a continuous line
drawn between the same distinct points on the cutting inserts or a distinct
point on each pocket in the drawings.” App. Br. 10. Accordingly,
Appellants assert that one of ordinary skill in the art would understand what
the phrase means and therefore it is not indefinite. Id. at 9-11.
Claim 26 is directed to a helical milling cutter comprising, inter alia,
three rows of inserts. See App. Br. 18 (Claims App’x, Claim 26). The claim
recites
two or more inserts of the first, second and third rows in each
of the two or more columns form one or more cutting edges
along the rotational axis that define a layout line having a non-
uniform varied slope beyond the first row and each layout line
is identical in shape to all other non-continuous layout lines.
Id. (emphases added). Thus, the claim reflects that two or more inserts form
one or more cutting edges that define a layout line. Claim 31 is similarly
directed to a helical milling cutter comprising, inter alia, three or more rows
of cutting inserts. Id. at 19-20 (Claims App’x, Claim 31). The claim recites
Appeal 2011-007336
Application 12/035,461

5
a layout line in each of the two or more columns, the layout line
extending the length of one of the two or more columns and
through a distinct point on a distinct one of each of the two or
more cutting inserts in each row of the one of the two or more
columns . . . .
Id. (emphasis added).
The Specification is consistent with the use of the phrase in the
claims. See, e.g., Spec., para. [0004] (“The spacing of the inserts is such that
a distinct point on the each one of the one or more cutting edges define part
of a layout line having a non-uniform slope.”); id. at para. [0017] (“Each
column A, B, C, D has a layout line 44 identical in shape to all other layout
lines and each layout line 44 defines a generally continuous line drawn
between the same distinct points 46 on the cutting edge of the cutting inserts
22, 24, 26, 28, 30, 32.”); fig. 2. The Specification also explains that “[a]s
shown in Figure 5, a layout line 244 can also be defined by the same distinct
points 246 on the pockets 18 within the same column formed on the tool
body 12.” Id. at para. [0017].
The Examiner determined that claims 26 and 31 are indefinite because
the “layout line” does not impart structure. Ans. 3. In light of the
Specification, however, a person of ordinary skill in the art would
understand that “layout line” is a geometric construct. Such terms (e.g.,
transverse axis) need not impart structure to be understood.
Accordingly, we do not sustain Rejection I.
Appeal 2011-007336
Application 12/035,461

6
Rejection II
The Examiner determined that the phrase “two or more cutting inserts
of three or more rows equally spaced in the angular circumferential
direction” in claims 30 and 34 is indefinite because “[i]t is unclear as to how
the cutting inserts are spaced equally in an angular circumferential direction
when the representative figures, specifically referring to Figure 3B, disclose
the cutting inserts are spaced unequally in the angular circumferential
direction.” Ans. 3-4.
Appellants contend that the full limitation as recited in claims 30 and
34 makes clear that the equal spacing is “in the angular circumferential
direction from adjacent cutting inserts in the same row.” App. Br. 12.
Figure 3B, which the Examiner relied upon, shows “the axial spacing of the
inserts within the same column and not the spacing of adjacent inserts in
the same row.” Id. at 12-13. Appellants assert that Figure 2 shows “CM A-
B, CM B-C and CM C-D which is the spacing of the various columns. . . .
[and] the spacing of each of the columns and each specific insert is spaced
equally in the angular circumferential direction from the insert in the
adjacent row.” Id. at 13.
We agree with Appellants that the phrase “two or more cutting inserts
of three or more rows equally spaced in the angular circumferential
direction” is not indefinite for precisely the same reasons fully explained by
Appellants. Accordingly, we do not sustain Rejection II.
Appeal 2011-007336
Application 12/035,461

7
Rejections III and IV
The Examiner concluded that Long would have rendered the subject
matter of claims 26-35 obvious.3 Ans. 4-9. The Examiner found that Long
discloses most of the elements of the claims except Long “does not
explicitly teach each layout line is identical in shape to all the other non-
continuous layout lines.” Id. at 6, 9. The Examiner also found, however,
that Long “teaches the rows are capable of being spaced at intervals other
than the disclosed intervals as long as the intervals disrupt vibrations (Col. 3,
lines 10-12).” Id. at 6, 9. The Examiner determined that it would have been
obvious to one of ordinary skill in the art at the time of invention “to
manipulate the intervals as taught by [Long] within a desired range for the
slope or angular circumferential distance of each layout line to be being [sic]
identical in shape to all other non-continuous layout lines, while maintaining
the break up of harmonic vibrations.” Id. at 6-7, 9.
Appellants raise several arguments in response4 including, inter alia,
that the Examiner’s conclusion of obviousness is based on impermissible
hindsight because the Examiner has not explained why one of ordinary skill
in the art would have been motivated to provide a layout line that is identical

3 In the context of Rejections III and IV, the Examiner interpreted the phrase
“layout line” as “the actual line drawn between each insert, defining and
depicting the slope or angular circumferential distance between rows.”
Ans. 4, 7-8.
4 Appellants appear to only respond to Rejection III, which, for all intents
and purposes, because each claim on appeal was rejected as part of Rejection
III, and because the Examiner applied the same rationale in finding that the
claim element, acknowledged to be missing in Long, would have been
obvious, consideration of that rejection resolves the same issues raised with
respect to Rejection IV. That being said, we discuss Appellants arguments
in the context of Rejection III and IV since they are equally applicable.
Appeal 2011-007336
Application 12/035,461

8
in shape to all other layout lines when Long explicitly teaches that the
orientation of the inserts is varied to avoid repetitive orientation which may
promote vibrational harmonics during operation. App. Br. 15-16; Reply Br.
7-8.
We agree with Appellants. The Examiner has not provided a reason
as to why one of ordinary skill in the art viewing Long’s disclosure that the
rows are capable of being spaced at intervals other than the disclosed
intervals would select the particular intervals claimed. The Examiner finds
that one of ordinary skill in the art would manipulate the intervals “within a
desired range for the slope or angular circumferential distance of each layout
line,” but has not explained why the particular intervals claimed are within a
“desired range,” or what is desirable about the intervals claimed. Ans. 6-7.
The Examiner’s response to Appellants’ argument on this point further
reflects the deficiencies of the Examiner’s rationale. The Examiner found
that Long is “capable of having a non-uniform slop [sic] beyond the first
row,” through “the substitution of various spacing intervals values”
(Ans. 10), but the fact that an apparatus disclosed in the prior art is capable
of being modified to result in the claimed invention alone does not
necessarily render the claimed invention obvious. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006), and the statement therein that “there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). In light of Long’s emphasis on avoiding repetitive
orientations, and considering the entirety of the reference and the
Examiner’s lack of a reason as to why the particular claimed intervals would
have been obvious to one of ordinary skill in the art, we disagree with the
Appeal 2011-007336
Application 12/035,461

9
Examiner’s conclusion that the claimed invention as a whole would have
been obvious to one of ordinary skill in the art.
Accordingly, we do not sustain Rejections III and IV.
DECISION
We reverse the Examiner’s decision rejecting claims 26-35.

REVERSED

mls