Paolino Bacci S.R.L.

Patent Trials and Appeals Board

Jul 29, 2021

2021000626 (P.T.A.B. Jul. 29, 2021)

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.
15/648,809 07/13/2017 Giuseppe BACCI 75982 2832
23872 7590 07/29/2021
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
VITALE, MICHAEL J
ART UNIT PAPER NUMBER
3722
MAIL DATE DELIVERY MODE
07/29/2021 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 GIUSEPPE BACCI, PAOLO BACCI, and
NINO BACCI

Appeal 2021-000626
Application 15/648,809
Technology Center 3700
Before EDWARD A. BROWN, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final rejection of claims 1–6, 8, 10, and 15–20.1 A telephonic
hearing was held on July 14, 2021. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Paolino Bacci S.R.L. as the real party
in interest. Appeal Br. 1.

Appeal 2021-000626
Application 15/648,809

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “a numerically controlled machining
center, with three or more machining axes . . . particularly but not
exclusively for machining wooden workpieces.” Spec. 1:6–9. Of the claims
on appeal, claims 1 and 17 are independent. Appeal Br. 32, 36 (Claims
App.). Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A machining center, comprising:
a number N of workpiece tables equal to or greater than
three;
a number N of first guides, which extend parallel to a first
direction, each of said number N of workpiece tables being
movable along a respective one of said number N of first
guides;
a number N-1 of second guides, which extend parallel to a
second direction transverse to said first direction;
a number N-1 of machining groups, each of said number of
N-1 machining groups comprising at least one machining head,
each of said number of N-1 machining groups being movable
parallel to said second direction along a respective one of said
number N-1 of second guides;
a number N x (N-1) of machining areas in which the number
of N-1 of machining groups can machine the workpieces
present on said number N of workpiece tables, along each of
said number N of first guides, or for a respective table of the
number N of workpiece tables, wherein N-1 machining areas
are present, one for each of the number N-1 machining groups,
so that each of the number N-1 machining groups can operate,
according to a programmed work cycle, on all of said number N
of workpiece tables;
a number N of workpiece loading/unloading areas, one for
each workpiece table.

Appeal Br. 32 (Claims App.) (emphasis added).
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EXAMINER’S REJECTIONS
Claims 17–20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite.2 See Ans. 5–6.
Claims 1–6, 8, 10, and 15–20 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Raiteri (US 6,098,274, iss. Aug. 8, 2000)
See Ans. 6–24.
ANALYSIS
A. Indefiniteness
In rejecting claims 17–20 for indefiniteness, the Examiner purports
that the following terms lack antecedent basis: “the workpieces” in claim
17; “the number of said workpiece tables” in claim 18; and “the number N
of said workpiece tables” in claims 19 and 20. Ans. 5–6. We disagree.
1. Claim 17
Although the Examiner is correct that the recitation of “the
workpieces” in claim 17 lacks antecedent basis, the fact that the term lacks
antecedent basis does not necessarily preclude one skilled in the art from
understanding the features being claimed. In our view, one skilled in the art
reading the claim as a whole would fully understand that each of the earlier
recited “workpiece tables” necessarily includes a workpiece for machining
by the recited “machining groups.” Appeal Br. 36–37 (Claims App.). As
such, we do not sustain the Examiner’s indefiniteness rejection of claim 17.

2 In the Answer (mailed Sept. 3, 2020), the Examiner withdrew several
indefiniteness rejections previously made in the Final Office Action (mailed
Oct. 24, 2019). See Ans. 3–5.
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2. Claims 18–20
With respect to the Examiner’s concern over the terms “the number of
workpiece tables” and “the number N of workpiece tables,” as recited in
claims 18–20, we view those recitations as clearly referencing the earlier
recitation of “three or more workpiece tables” in claim 17, from which
claims 18–20 depend. As such, we reject the notion that dependent claims
18–20 recite terms lacking antecedent basis. Thus, we do not sustain the
Examiner’s indefiniteness rejection of claims 18–20.
B. Anticipation
Central to our analysis of the Examiner’s anticipation rejection is the
recitation in claim 1 of “each of said number N of workpiece tables being
movable along a respective one of said number N of first guides” and the
recitation in claim 17 of “each of said workpiece tables being movable along
one of said first guides.” For those limitations, the Examiner finds that
Raiteri’s fixture plates 38 correspond to the recited “workpiece tables” and
that Raiteri’s guides 19 correspond to the recited “first guides.” See Ans. 6–
7, 17–18 (annotating Raiteri, Fig. 1). Moreover, according to the Examiner,
neither claim 1 nor claim 17 requires that the workpiece tables “be able to be
moved relative to each other to different stations for the workpieces to be
processed.” Ans. 40.
We disagree. At the outset, we note it is undisputed that each of
Raiteri’s fixture plates 38 support a workpiece for machining. But, contrary
to the Examiner’s finding, Raiteri lacks any disclosure of each of those
fixture plates being movable along its own guide, as required by claims 1
and 17. In other words, when properly construed, claims 1 and 17 each
require that each of the recited workpiece tables be mounted and movable on
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its own guide so that each table is movable irrespective of the other tables.
Indeed, Appellant’s drawings support such a construction by depicting each
table T1, T2, and T3 supported and movable along its own guide G1, G2,
and G3. See Figs. 1–7. Likewise, throughout the Specification, the
workpiece tables are described as being movable on their own individual
guides, without regard to, and independent of, the other tables—
“On these first guides G1, G2 and G3 guides . . . are assembled
respective T1, T2 and T3 workpiece tables, one for each guide.”
Spec. 8:31–9:2.

“[I]n combination with the axes y1, y2, y3 corresponding to the
movement of T1, T2 and T3 tables along their respective first
G1, G2 and G3 guides, the machining center is of the type of at
least 3 machining axes.” Id. at 10:11–13.

“T1 table is in machining area J11, or it is interacting with K1
group, or with H1 head to allow P workpiece, 10 loaded
thereon, to undergo a first machining; T2 table is in J22 area
where it is interacting with K2 group, that is, H2 head, to
operate on the respective workpiece a second machining, while
T3 table is in the F30 loading/unloading area to unload a just
finished machining workpiece and load a P workpiece to be
machined.” Id. at 12:8–14.

Taken together, those descriptions of Appellant’s invention, as well
the figures in Appellant’s drawings, support a claim construction that each
of the recited workpiece tables is mounted and movable along its own guide
irrespective of the other workpiece tables. At the oral hearing, Appellant’s
counsel confirmed that the claims are limited in this manner. See Tr. 6:22–
7:13. As such, Appellant apprises us of error in the Examiner’s finding that
Raiteri’s workpiece tables, which move in unison with one another, satisfy
the disputed limitations of claims 1 and 17. Thus, we do not sustain the
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Examiner’s anticipation rejection of claims 1 and 17, nor do we sustain the
rejection of the claims 2–6, 8, 10, 15, 16, and 18–20 depending therefrom.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20 112(b) Indefinite 17–20
1–6, 8, 10,
15–20
102(a)(1) Raiteri 1–6, 8,
10, 15–20
Overall
Outcome
1–6, 8,
10, 15–20

REVERSED