Ex Parte Weber et al

Patent Trial and Appeal Board

Jun 28, 2013

11818001 (P.T.A.B. Jun. 28, 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.
11/818,001 06/12/2007 Christoph Weber 208,283 8240
38137 7590 06/28/2013
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
06/28/2013 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 CHRISTOPH WEBER and CLAUDIA KOWANDA
____________________

Appeal 2011-006226
Application 11/818,001
Technology Center 3700
____________________

Before: JAMES P. CALVE, WILLIAM A. CAPP, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006226
Application 11/818,001
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
2, 5, 7 and 9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a saw blade with a lateral run-out. Claim 1
reproduced below, is illustrative of the claimed subject matter:
1 A circular saw blade (2), comprising at least two sectors (S)
following each other in a circumferential direction and each
having an axial run-out region (B1, B2), the following each
other axial run-out regions (B1, B2) being directed to opposite
sides of the blade saw (2) relative to a saw middle plane (E);
and working means (6) provided on a circumference (U) of the
saw blade,
wherein at a diameter (d) of the saw blade (2) of less than
800 mm, the saw blade comprises four sectors (S) having
alternating axial run-out regions (B1, B2) with a maximum
axial run-out (Ml, M2) between 0.1 and 0.2 mm, and
wherein at a diameter (d) of the saw blade (2) of more
than 800 mm, the saw blade comprises six sectors (S) having
alternating axial run-out regions with a maximum axial run-out
(MI, M2) between 0.2 and 0.45 mm.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Maras US 2002/0123302 A1 Sep. 5, 2002

REJECTIONS
The Examiner made the following rejections:
Appeal 2011-006226
Application 11/818,001
3
Claims 1-2, 5, 7, and 9 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Maras. Ans. 3.

ANALYSIS
Appellants argue claims 1-2, 5, 7 and 9 as a group. App. Br. 8-11. We
select claim 1 as representative, treating claims 2, 5, 7 and 9 as standing or
falling with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Maras discloses a circular saw blade having
a body with a plurality of sectors following each other in a circumferential
direction and an axial run-out region forming a continuous wave shape
directed to opposite sides of the saw blade relative to a middle plane. Ans.
3, citing Maras, figs. 1-5. The Examiner explained that absent a clear
showing of criticality of the claimed features and ranges by way of a
showing of unexpected results achieved over operation outside the recited
ranges, the number of sectors and the degree of axial run-out are obvious
matters of design choice “depending upon the degree of stiffness required
for a particular application.” Id. at 3, 4.
Appellants argue that Maras does not disclose each element of claim
1; however, Appellants do not apprise us as to which element of claim 1 is
missing from claim 1. App. Br. 8; Reply Br. 2.1
Next, Appellants challenge the shape, cut, precision and use of the
Maris saw blade, contending that Maras teaches a saw blade having a
serpentine shape, and that this “shape provides a thicker cut and allows
significantly more airflow at the point where the cutting is performed.”

1 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of
Board’s practice of requiring an applicant to identify alleged error in an
Examiner’s rejection).
Appeal 2011-006226
Application 11/818,001
4
App. Br. 8-9, citing Maras para. [0033] and fig. 5; Reply Br. 3. According
to Appellants, Maris suggests that the serpentine shape is useful “where less
precision is required” in contrast to the teachings in the Specification of a
more precise cut due to the “alternative arrangement of axial run-out regions
and/or transition regions one after another, in the circumferential direction,
which provides a certain stiffening of the saw blade in the axial direction.”
Id.. at 9, citing Maras para. [0033]; Spec. pg. 2, ll. 8-9, pg. 3, ll. 1-5, pg. 3, l.
15-pg. 4, ll. 1-4. Appellants’ arguments are unpersuasive and not
commensurate with the scope of claim 1, which does not recite any
limitation directed to a “precise cut”. We decline to read a limitation from
the specification into the claims.2
Appellants challenge the Examiner’s finding that the selection of the
number of sectors and degree of axial run-out is a matter of design choice,
arguing that “the number of sector and maximum axial run-outs recited by
claim 1 were not chosen by the appellants based upon the degree of stiffness
required,” instead the selection is based “so that no noticeable increase of a
respective cut width and no noticeable drop of the cutting speed takes
place.” App. Br. 10 (emphasis omitted); Reply Br. 4. This argument is
likewise not persuasive for several reasons. First, claim 1 does not recite
any limitation directed to a “cut width” or “cutting speed”. Also, Appellants
do not provide any evidence, other than attorney argument, demonstrating
that the number of sectors and maximum axial run-outs is critical, i.e. that
the claimed range achieves unexpected results relative to the prior art range.3
Further, Appellants argue that modifying the saw blade of Maras to
have the number of sectors and corresponding maximum axial run-outs

2 See In re Prater, 415 F.2d 1393, 1404-05, (CCPA 1969).
3 See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appeal 2011-006226
Application 11/818,001
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recited by claim 1 would render the saw blade of Maras unsatisfactory for its
intended purpose. Ans. 10-11; Reply Br. 4. Appellants’ argument that the
saw blade of Maras would not be capable of performing the claim function is
unsupported attorney argument and does not apprise us how the Examiner’s
finding regarding a saw blade having a body with a plurality of sectors
following each other in a circumferential direction and an axial run-out
region forming a continuous wave shape directed to opposite sides of the
saw blade relative to a middle plane is erroneous.4 Ans. 4-5.
In response to the Examiner’s Answer, Appellants state that the
Examiner has failed to provide any rationale for modifying the saw blade of
Maris according to “the maximum axial run-out dimensions required by
claim 1, which are specifically intended to produce a precise cut with no
noticeable increase of a respective cut width.” Reply Br. 5 (emphasis
omitted). We agree with the Examiner’s position that Appellants have not
provided any evidence demonstrating why the selection of the number of
sectors and corresponding axial run-out would not be “readily determined by
mere routine experimentation on the part of those of ordinary skill in the art,
motivated by a desire to optimize the operating parameters of the device of
Maras et al. for a particular application.” Ans. 4. The Examiner reasonably
expressed that both Appellants and Maras are faced with the same problem
of maintaining the lateral stability of saw blades, and one “of ordinary skill
in the art would have readily been motivated to arrive at a suitable number

4 See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368-69 (Fed. Cir.
2012) (the motivation to modify a prior art reference to arrive at a claimed
invention need not be the same motivation that an applicant had and may be
found in any number of sources including common knowledge, the prior art
as a whole, or the nature of the problem) (citations omitted).
Appeal 2011-006226
Application 11/818,001
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of such undulations to maintain blade stability without undue
experimentation.” Ans. 4
As such, Appellants’ arguments do not persuade us of error in the
Examiner’s findings or conclusion of obviousness. The rejection of claim 1
and claims 2, 5, 7 and 9 which depend therefrom is sustained.

DECISION
The rejection of claims 1-2, 5, 7 and 9 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)(1)(iv) (2011).

AFFIRMED

rvb