Ex Parte Wakayama et al

Patent Trial and Appeal Board

Oct 15, 2013

11572154 (P.T.A.B. Oct. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/572,154 06/22/2007 Haruo Wakayama 1343.46965X00 4782
20457 7590 10/15/2013
ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873
EXAMINER
FLORES SANCHEZ, OMAR
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
10/15/2013 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 HARUO WAKAYAMA, TETSUJI SHIOZAWA,
TAKASHI SEKIJIMA, NORIYUKI OGASAWARA, and
HIROSHI SOYAMA
____________________

Appeal 2011-012774
Application 11/572,154
Technology Center 3700
____________________

Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012774
Application 11/572,154
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 2,
9-12, 14, 17, and 19.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

CLAIMED INVENTION
Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A cutter wheel for scribing a brittle material substrate, where
a V-shaped ridge line part is formed as an edge along the
circumferential part of a disk-like wheel made of a hard metal
or sintered diamond, characterized in that said V-shaped ridge
line part is formed of two slanted surfaces which converge as
the two slanted surfaces extend outwardly in the direction of the
radius, and an outer peripheral part of the ridge line part formed
of said two slanted surfaces which converge has microscopic
unevenness where the average coarseness Ra along the center
line of said unevenness exceeds 0.40 µm, in that said disk-like
wheel has an outer diameter of 1.0 to 3.0 mm and in that at least
one notch is engraved in said ridge line part and notches as that
described above are created in the entirety of the periphery of
said ridge line part with a pitch of more than 200 µm.

REFERENCES
Wakayama US 5,836,229 Nov. 17, 1998

1 The Examiner includes claim 20 but does not include claim 15 in the only
rejection before us. Ans. 4. However, Appellants indicate under “Status of
Claims” that claim 20 has been withdrawn from consideration and state that
“[c]laim 15 is not the subject of any rejection and has not been indicated to
have been withdrawn.” Br. 2; see also Ans. 3 (stating that the “statement of
the status of claims contained in the brief is correct”). The Examiner also
does not address the subject matter of claims 15 and 20. See Ans. 4-5.
Thus, we consider claim 20 as erroneously included in the rejection and
claim 15 is not subject to the rejection.
Appeal 2011-012774
Application 11/572,154
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Moro US 6,314,778 B1 Nov. 13, 2001

REJECTION
Claims 2, 9-12, 14, 17, and 19 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Wakayama and Moro.

ANALYSIS
Both independent claims 2 and 9 recite an outer peripheral part or
edge of the cutter wheel that has an unevenness where the “average
coarseness Ra along the center line of said unevenness exceeds 0.40 µm.”
Br., Clms. App’x. The Examiner finds that Wakayama “doesn't show the
microscopic unevenness where the average coarseness along the center line
of the unevenness exceeds 0.40µm.” Ans. 5. The Examiner then finds that
Moro teaches “unevenness where the average coarseness . . . along the
center line of the unevenness exceeds 0.40µm for the purpose of reducing
the material slides during cutting.” Id., citing Moro col.13, ll. 39-43. The
Examiner then determines
It would have been obvious to . . . have modified the device of
Wakayama et al. by providing the microscopic unevenness
where the average coarseness along the center line of the
unevenness exceeds 0.40um as taught by Moro et al. in order to
obtain a device that reduces the material slides during cutting.
Id. Appellants counter that
Wakayama . . . teaches away from having such a microscopic
unevenness. At column 1, lines 14-60 of Wakayama et al.,
various prior art cutting disks including ridges roughened to
provide surface irregularities are described. From column 1,
line 61 to column 2, line 4, it is indicated that such cutting disks
do not satisfy certain requirements for scribing performance.
Appeal 2011-012774
Application 11/572,154
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Br. 6. In response, the Examiner provides no evidence or reasoning why
Wakayama does not teach away from the use of microscopic unevenness.
A reference teaches away from the subject matter of a claim only if “a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Column 1, lines 14-60, of Wakayama describes “a flat ridge Q which
is roughened to provide surface irregularities,” that the “surface irregularities
on the flat ridge Q of the known glass cutting disc serve to minimize any
possible slip of the cutting disc relative to the plate glass to thereby ensure a
scribed line on the glass plate,” and that “since to provide the surface
roughened flat ridge Q . . . the outer peripheral portion of the cutting disc is
ground, the scribing performance exhibited by the prior art glass cutting disc
appears to be sacrificed substantially.”
The cited portion of Wakayama also discloses that such surface
irregularities
in no way satisfy the following requirements for the scribing
performance. a) The plate glass can be broken accurately along
the scribed line, b) A breaking force to be applied to the cutting
disc to form the scribed line is small, and c) Unnecessary
chipping is minimized at cut edges when the plate glass is
broken along the scribed line.
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Application 11/572,154
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Wakayama, col. 1, l. 64 -col. 2, l. 4 (emphasis added). We agree with
Appellants that Wakayama discloses surface irregularities adversely affect
scribing performance of glass cutting discs. The fact that such irregularities
in no way satisfies each of three requirements for a glass scribing disc
discourages or discredits the use of surface irregularities on an outer
peripheral part or edge of a glass scribing disc. Therefore, Wakayama
teaches away from the use of unevenness or surface irregularities in a glass
scribing disc. As such, we do not sustain the rejection of independent claims
2 and 9, or claims 10-12, 14, 17, and 19 which depend therefrom as
unpatentable over Wakayama and Moro.

DECISION
For the above reasons, the Examiner’s decision to reject claims 2, 9-
12, 14, 17, and 19 is reversed.

REVERSED

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