Ex Parte DostDownload PDFPatent Trial and Appeal BoardSep 24, 201411810706 (P.T.A.B. Sep. 24, 2014) Copy Citation 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. 11/810,706 06/07/2007 Hagen W. Dost 1576-0131 4122 28078 7590 09/24/2014 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 EXAMINER GATES, ERIC ANDREW ART UNIT PAPER NUMBER 3722 MAIL DATE DELIVERY MODE 09/24/2014 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 HAGEN W. DOST ____________________ Appeal 2012-007101 Application 11/810,706 Technology Center 3700 ____________________ Before: LYNNE H. BROWNE, ANNETTE R. REIMERS, and JILL D. HILL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–11 and 24–34. Claims 12–23 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claims are directed to a cutting bit adapted to cut metal and wood. Claims 1 and 28 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-007101 Application 11/810,706 2 1. A cutting bit adapted to cut wood or metal, said cutting bit being prepared by a process which includes the steps of: (a) performing a forming operation on a metal blank so as to create a formed metal part that includes: a shaft having a polygonal shaped drive surface and defining a shaft axis, a body having a proximal end and a distal end, said proximal end of said body being attached to said shaft, said body further having a first shoulder and a second shoulder at said distal end thereof, said first shoulder defining a first cutting edge segment, and said second shoulder defining a second cutting edge segment, said shaft axis extending between said first cutting edge segment and said second cutting edge segment, a central cutting member extending from said body so that said central cutting member is aligned with said shaft axis, a first cutting spur extending from said distal end of said body, said first cutting edge segment being interposed between said first cutting spur and said shaft axis, and a second cutting spur extending from said distal end of said body, said second cutting edge segment being interposed between said second cutting spur and said shaft axis, wherein a distal end of the first cutting edge segment defines a cutting edge axis substantially perpendicular to the shaft axis, the cutting edge axis intersects the shaft axis at a first shaft axis location, the first cutting spur extends distally along the shaft axis from said distal end of said body, when the first cutting spur is projected onto the shaft axis, a projected distal end of the first cutting spur is at a second shaft axis location, and the second shaft axis location is spaced apart from the first shaft axis location by a distance that is greater than a thickness of a commonly sized work piece; and (b) performing a carburization operation on the formed metal part after step ( a) so as to create the cutting bit. Appeal 2012-007101 Application 11/810,706 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Caldwell Durfee Shinjo Bothum US 2,035,298 US 4,815,902 US 4,998,853 US 5,221,166 Mar. 24, 1936 Mar. 28, 1989 Mar. 12, 1991 June 22, 1993 REJECTIONS 1. Claims 1–11 and 24–34 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.1 2. Claims 1–6, 11, 24–29, and 31–33 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Bothum, Caldwell, and Shinjo. 3. Claims 7–10 and 34 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Bothum, Caldwell, Shinjo, and Durfee. OPINION Indefiniteness The Examiner determines that “[t]he phrase ‘a thickness of a commonly sized work piece’” renders independent claims 1 and 28 indefinite. Final Rej. 2. The Examiner explains that “this phrase would be interpreted differently by one of ordinary skill in the art depending on the type of workpiece being cut and the intended use of the workpiece, and 1 The Examiner does not present a prior art rejection for dependent claim 30. The Examiner states that: “Claim 30 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.” Final Rej. 10 Appeal 2012-007101 Application 11/810,706 4 therefore does not provide a basis for judgment that can be considered quantifiable.” Id. Appellant argues that “[t]he Examiner has failed, however, to provide any legal basis for this assertion. Moreover, such a rule is diametrically opposed to Federal Circuit precedent” referring to Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1568 (Fed. Cir. 1986). See Appeal Br. 7–8; see also Reply Br. 2–4. The Specification states: The thickness WT of the work piece 282 is 0.0359 inches. A typical home construction metal stud has a thickness or metal configuration of 20 gauge sheet metal. Twenty gauge sheet metal has a nominal thickness dimension of 0.0359 inches. Therefore, to accommodate for cutting a hole in metal home construction studs 282, the dimension BCT of the cutting bit 200 is substantially greater than 0.0359 inches. For example, the dimension BCT may be for example 0.040 inches or greater. Also, for example, the dimension BCT may be about twice the thickness WT of the work piece 282. Spec., para. 73. Thus, in this case, one of ordinary skill in the art would understand what is claimed when the claim is read in light of the Specification. For this reason, we do not sustain the Examiner’s decision rejecting independent claims 1 and 28 under 35 U.S.C. § 112, second paragraph, and claims 2–11 and 24–34 which stand rejected on the same ground because of their dependence from either claim 1 or claim 28. Obviousness Claims 1–6, 11, 24–29, 32, and 33 The Examiner finds that the combined teachings of Bothum, Caldwell, and Shinjo disclose or suggest all of the limitations of independent claim 1. In particular, the Examiner finds that: Appeal 2012-007101 Application 11/810,706 5 Caldwell teaches the use of a cutting bit (see figure 1) comprising first and second cutting edges 19/20 that are perpendicular to a shaft 11 (see page 2, column 1, lines 1-2) and intersecting the shaft axis at a first shaft axis location (see figure 1), and first and second cutting spurs 46/47 that are formed relatively long (see page 2, column 2, lines 18-21) for the purpose of providing the desired depth of cut into the workpiece prior to the cutting edges contacting the workpiece, the cutting spurs ending at a second shaft axis location that is spaced apart from the first shaft axis location by a distance that is capable of being greater than the thickness of a desired commonly sized work piece. Ans. 6–7. Appellant notes that “[t]he Examiner has failed, however, to identify any disclosure in Caldwell of the dimensions of the side cutters 46/47.” Appeal Br. 13. Appellant argues that: because Caldwell does not disclose the size of the side cutters 46/47, or provide any insight into the relative dimensions of the spacing of the alleged axis locations and a dimension of any commonly sized work piece, the proposed modification does not necessarily arrive at the invention of claim 1. Id. 14. While Appellant argues that Caldwell does not teach the specific dimensions claimed, Appellant offers no explanation as to why the claimed device would perform any differently than the device of Caldwell. See Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984) (where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device). Thus, Appellant does not apprise us of error. Appeal 2012-007101 Application 11/810,706 6 Appellant further argues that “MPEP § 2112 requires the Examiner to provide rationale or evidence tending to show inherency.” Appeal Br. 14. If the Examiner were relying upon inherency, then Appellant would be correct that § 2112 requires the Examiner to provide rationale or evidence in support of a finding of inherency. However, as the Examiner has not relied upon a finding of inherency in rejecting the claims at issue, there is no requirement that the Examiner provide such rationale or evidence. For these reasons, we sustain the Examiner’s decision rejecting independent claim 1, and claims 2–6, 11, and 24–27, which depend therefrom and were not argued separately (see Appeal Br. 16–17) under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Bothum, Caldwell, and Shinjo. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Regarding independent claim 28, Appellant states “[t]he Examiner rejected claim 28 based upon the same prior art and arguments discussed above with respect to claim 1. Accordingly, for the same reasons set forth above with respect to claim 1, claim 28 is patentable over the prior art.” Appeal Br. 17. Appellant’s argument is not persuasive for the reasons discussed supra with respect to claim 1. Accordingly, we sustain the Examiner’s decision rejecting independent claim 28, and claims 29, 32, and 33, which depend therefrom and were not argued separately (see Appeal Br. 17–18) under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Bothum, Caldwell, and Shinjo. Regarding claim 31, Appellant states “claim 31 depends directly from claim 30 . . . The Examiner admitted that the cited art did not include the limitations added by claim 30 (Office Action at page 10). Therefore, the proposed amendment fails to arrive at the invention of claim 31.” Appeal Br. 18; see also footnote 1 above. Appeal 2012-007101 Application 11/810,706 7 Appellant is correct. Moreover, the Examiner does not respond to Appellant’s argument. Accordingly, we do not sustain the Examiner’s decision rejecting claim 31 under 35 U.S.C. § 103(a). Claims 7–10 and 34 Claims 7–10 depend from claim 1 and claim 34 depends from claim 28. Appellant argues that “[e]ven if Bothum, Caldwell and Shinjo are modified based upon the teaching of Durfee as alleged by the Examiner, such modification fails to correct the deficiencies of Bothum, Caldwell and Shinjo with respect to the limitations of claims 1 and 28 as discussed above.” Appeal Br. 18. As discussed supra, we find no deficiencies in the rejection of claims 1 and 28. Accordingly, Appellant’s argument is not persuasive and we sustain the Examiner’s decision rejecting claims 7–10 and 34 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Bothum, Caldwell, Shinjo, and Durfee. DECISION The Examiner’s rejection of claims 1–11 and 24–34 under 35 U.S.C. § 112, second paragraph, is REVERSED. The Examiner’s rejection of claims 1–11, 24–29, 32, and 33 under 35 U.S.C. § 103(a) is AFFIRMED. The Examiner’s rejection of claim 31 under 35 U.S.C. § 103(a) is REVERSED. Appeal 2012-007101 Application 11/810,706 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART pgc Copy with citationCopy as parenthetical citation