Ex Parte Dost

Patent Trial and Appeal Board

Sep 24, 2014

11810706 (P.T.A.B. Sep. 24, 2014)

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