11358176 (B.P.A.I. Sep. 27, 2011)

Ex Parte Whited

Board of Patent Appeals and InterferencesSep 27, 2011

11358176 (B.P.A.I. Sep. 27, 2011)

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. 11/358,176 02/21/2006 Jeffrey A. Whited 14-722D1 C1 7834 26294 7590 09/27/2011 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVELAND, OH 44114 EXAMINER CHOI, STEPHEN ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 09/27/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JEFFREY A. WHITED ____________________ Appeal 2009-010255 Application 11/358,176 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and STEFAN STAICOVICI, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010255 Application 11/358,176 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 24, 25, 31, 33 and 40-45. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to rotary knife blade for low friction rotary knife. Claim 24, reproduced below, is illustrative of the claimed subject matter: 24. A rotary knife blade comprising: a rotatable annular body defining first and second axial ends, said body disposed about a central axis; and, an annular blade section rotatable with the annular body and projecting axially from the first axial end of said body; said rotatable annular body comprised of a wall defining a radially outer surface disposed between said first and second axial ends, and an annular bearing race in said surface and extending radially into said wall, said bearing race spaced axially from said blade section and comprising a first surface that converges proceeding away from said second axial end, and a second surface that converges proceeding toward said first surface, said first and second surfaces defining first and second bearing faces spaced axially apart. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Decker US 4,854,046 Aug. 8, 1989 REJECTION Claims 24, 25, 31, 33 and 40-45 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Decker. Ans. 3. Appeal 2009-010255 Application 11/358,176 3 OPINION We have carefully reviewed the rejection on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we find that the applied prior art does not establish the lack of novelty of the claims on appeal. Therefore the rejection of all claims on appeal is reversed. Our reasons follow. We credit Richard P. Bozzi, Declarant, as an expert in the art and an expert in the content of the Decker patent applied against the claims. We adopt as our factual findings the testimony of Bozzi that the radial surface 91 is not a bearing face and the short vertical surface that bridges surfaces 90 and 91 in Decker is also not a bearing face. See Decl. of Bozzi para. 6. Thus it is our finding that Decker does not disclose two converging bearing faces or surfaces as called for in the claims on appeal. The Examiner argues that the surfaces discussed in Decker, i.e., surfaces 90 and 91 are capable of being bearing surfaces. The Examiner regards the term “bearing surface” as merely an intended use of the claimed faces. Ans. 4. We disagree with this construction of the Examiner. Under the Examiner’s logic every surface on any article is a bearing surface, because every surface can bear against something or have something contact it. This construction of the term “bearing surface” trivializes the limitation of a bearing surface and strips the word “bearing” of any meaning. The only reasonable construction is that a bearing surface is different than surfaces in general, otherwise the term “bearing” is superfluous. We also find that Appellant’s argument with regard to converging surfaces has some merit. For these two reasons, we are constrained to find that Decker does not establish that the claimed subject matter lacks novelty. Appeal 2009-010255 Application 11/358,176 4 DECISION The rejection of claims 24, 25, 31, 33, and 40-45 as rejected under 35 U.S.C. § 102 is reversed. REVERSED nlk