Ex Parte Nava et alDownload PDFBoard of Patent Appeals and InterferencesFeb 25, 200911206823 (B.P.A.I. Feb. 25, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PETER NAVA, MICHAEL MATTSON, ANDERS BRUNGS, and STIG-AKE BROLUND ____________ Appeal 2008-4328 Application 11/206,823 Technology Center 3600 ____________ Decided: 1 February 25, 2009 ____________ Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and STEFAN STAICOVICI, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-4328 Application 11/206,823 STATEMENT OF THE CASE Peter Nava et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 2, and 5-10. Claims 11, 15, 16, and 18 are allowed by the Examiner, see Final Rejection page 5. Claims 3, 4, 12-14, and 17 are canceled, see Amendment filed on Jan. 22, 2007. The Appellants’ representative presented oral argument on February 12, 2009. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION The claimed invention is directed to a cutter for mining rock material. Spec. 1, ¶ 0002. Claim 6, reproduced below, is representative of the subject matter on appeal. 6. A cutter for mining rock material, the cutter defining an axis of rotation and comprising a holder, a button disk mounted to a front portion of the holder, and an elastically moldable wire oriented in a space defined by mutually superimposed circumferential grooves of the holder and the button disc, for securing the button disk to the holder. THE PRIOR ART The Examiner relies upon the following as evidence of unpatentability: 3 Appeal 2008-4328 Application 11/206,823 Mackey US 1,899,343 Feb. 28, 1933 Rieger US 2,760,258 Aug. 28, 1956 Lenaburg US 5,234,064 Aug. 10, 1993 Nava WO 03/001031 A1 Jan. 3, 2003 REJECTION The following Examiner’s rejection is before us for review: Claims 1, 2, and 5-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nava, Lenaburg, Mackey, and Rieger.2 ISSUE The Appellants contend the Examiner erred in rejecting the claims because one of ordinary skill in the art would not look to Lenaburg for the teaching of removability, because the structures of the Nava and Lenaburg tools are different, see App. Br. 5, and it is improper for the Examiner to select one feature from Lenaburg and disregard the remainder of its teachings, see Reply Br. 2. The Examiner found that Nava only differs from the claimed invention by lacking a removable button disk, see Ans. 6, Lenaburg teaches a removable button disk, see Ans. 3, and Lenaburg is within the Appellant’s field of endeavor, see Ans. 7. The Appellants also argue Mackey and Rieger are not properly combinable with either Nava or Lenaburg because the Examiner has failed to provide any evidence as to why one having ordinary skill in the art would do so, see App. Br. 5. 2 While the Examiner’s statement of the rejection does not include claim 10, the Examiner rejects claim 10 in the body of the rejection. See Ans. 3 and 6 and Final Rejection 1, 2, and 5. 4 Appeal 2008-4328 Application 11/206,823 In light of the Appellants’ contentions and the Examiner’s positions, the issues before us are as follows: Have the Appellants shown the Examiner erred in concluding the claimed invention is obvious because there are differences in the structure of the Nava and Lenaburg tools and as such, one skilled in the art would not look to Lenaburg for the teaching of removability, and further it is improper for the Examiner to select one feature and disregard the remainder of Lenaburg? Have the Appellants shown the Examiner erred in concluding the claimed subject matter is obvious by not providing a reason as to why one having ordinary skill in the art would have combined the teachings of Mackey and Rieger with Nava and Lenaburg? FINDINGS OF FACT We find that the following enumerated findings of fact are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. Nava discloses a tool head 46 for mining rock material. The tool head is composed of a holder (roller cutter 12) and a button disk. Nava’s holder 12 and button disk (circumferential protrusion 30 having buttons 14 cemented thereon) are mounted to the front of the holder. Nava, Fig. 1A, pg. 2, ll. 6-8, pg. 4, ll. 1-2. 2. Nava lacks in disclosing the button disk being removable. Instead, the button disk is unitary with the holder. See Nava, Fig. 1A and 1B. 5 Appeal 2008-4328 Application 11/206,823 3. Lenaburg teaches that it is known in the art to employ disk cutters with removable cutter rings on rock boring machines. Lenaburg, col. 1, ll. 60-63. 4. Mackey teaches in an analogous well boring tool having a cutter A secured to a mount B by a connecting member 14 that is worked into the superimposed grooves 13 and 12 of cutter A and mount B, respectively. Mackey, pg. 1, ll. 85-90 and pg. 2, ll. 5-8 and ll. 113- 119. 5. Rieger teaches in an analogous attachment of two cylindrical parts using a resilient spring wire ring of spring steel to fit within the superimposed grooves of the two respective parts. Rieger, Figs. 1-3, col. 1, ll. 21 and 25, col. 2, ll. 22, 33, and 43-48. 6. The difference between the claimed invention and the prior art is that the claimed invention combines elements separately disclosed in the prior art. 7. Neither the Examiner nor the Appellants have addressed the level of ordinary skill in the pertinent art of mining rock material. We will therefore consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 8. There is no evidence on record of secondary considerations of non- obviousness for our consideration. 6 Appeal 2008-4328 Application 11/206,823 PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at ___, 127 S.Ct. at 1734 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) The Court in Graham further noted that evidence of secondary considerations “might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” 383 U.S. at 17-18. The Supreme Court also emphasized that “the principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” Id. (citing Graham, 383 U.S. at 12 (emphasis added)), and reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, at ___, at 1739. The operative question in this “functional approach” is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, at ___, at 1740. 7 Appeal 2008-4328 Application 11/206,823 As the Supreme Court emphasized in KSR, in a companion case to Graham, United States v. Adams, 383 U.S. 39, 50-51 (1966), the Adams Court “recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, at ___, at 1740. Otherwise, the claim subject matter is likely to be obvious. ANALYSIS The Appellants argue claims 1, 2, and 5-10 as a group. We select claim 6 as representative of the group. Claims 1, 2, 5, and 7-10 stand or fall with claim 6. See 37 CFR 41.37(c)(1)(vii) (2008). Claim 6 claims a cutter comprising a holder having a groove, a button disk having a groove, and an elastically moldable wire oriented within a space defined by the grooves when superimposed in order to secure the button disk to the holder, see Appellant’s claim 6. Nava discloses a holder and a button disk. Fact 1. Nava lacks disclosing the button disk being removable; instead, the disk and holder are unitary. Fact 2. Lenaburg teaches that it is known in the art to employ cutters with removable cutter rings on rock boring machines. Fact 3. Hence, Lenaburg teaches removing the button disk (the cutting rings) from its holder (the cutter). Mackey teaches removably connecting a cutter to a mount by means of a connecting member worked into superimposing grooves in the cutter and mount. Fact 4. Rieger teaches constructing the connecting member that connects two cylindrical parts, such as a mount and cutter, from spring steel, an elastically moldable wire. Fact 5. As such, all of the claimed elements are shown in the prior art and the only difference is 8 Appeal 2008-4328 Application 11/206,823 the claimed invention claims elements separately found within the prior art. Fact 6. The level of ordinary skill in the art reflected in the prior art cited. Fact 7. As such, the claimed invention is described in the cited prior art and to apply the teachings of Lenaburg, Mackey, and Rieger to the disclosure of Nava would be a mere substitution of a removable button disk for a fixed or unitary button disk, and it appears from the record that having such removability in the claimed cutter yields no more that the predictable use of the prior art elements according to their established functions, i.e., the holder holds the button disk as a result of the wire filled the space created by the superimposing grooves on the holder and button disk. Accordingly, the claim as a whole is merely an alteration of structure already known in the prior art by a mere substitution of a removable element for a fixed or unitary element, i.e., the button disk. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result;” otherwise the claimed subject matter is obvious. See KSR, at ___, at 1740. We conclude that the subject matter of the claims is prima facie obvious over the prior art of record. The Appellants have not provided evidence of secondary considerations for us to review. Fact 8. As such, there is insufficient evidence of nonobviousness to outweigh the evidence of obviousness discussed above and, accordingly, the subject matter of the claims would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a) at the time Appellants’ invention was made. We are not persuaded by the Appellants’ contentions against the rejection because they focus on bodily incorporating the teachings of Lenaburg into Nava. See App. Br. 3-5. Obviousness does not require that 9 Appeal 2008-4328 Application 11/206,823 all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Additionally, skill is presumed on the part of those practicing in the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). We are not persuaded by Appellants’ argument that the Examiner has used hindsight reconstruction in making the rejection. See App. Br. 5 and Reply Br. 2. In our view, there is ample motivation to substitute the removable cutter rings (the button disk) taught in Lenaburg for the fixed button disk disclosed in Nava by employing a known technique, as evidenced by Mackey and Rieger, without resorting to hindsight. In addition, there is nothing in Nava or Lenaburg that would discourage a person of ordinary skill in the art from substituting something removable for something fixed. CONCLUSION The Appellants have not shown that the Examiner erred in concluding the claimed invention as obvious because there are differences in the structure of Nava and Lenaburg tools and as such, one skilled in the art would not look to Lenaburg for the teaching of removability, and further it is improper for the Examiner to select one feature and disregard the remainder of Lenaburg. The Appellants also have not shown the Examiner erred in concluding the claimed subject matter is obvious by not providing a reason as to why 10 Appeal 2008-4328 Application 11/206,823 one having ordinary skill in the art would have combined the teachings of Mackey and Rieger with Nava and Lenaburg. DECISION The Examiner’s decision to reject claims 1, 2, and 5-10 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED 11 Appeal 2008-4328 Application 11/206,823 LV: DRINKER BIDDLE & REATH (DC) 1500 K STREET, N.W. SUITE 1100 WASHINGTON, DC 20005-1209 12 Copy with citationCopy as parenthetical citation