Gillard, Jean-Christophe

Patent Trials and Appeals Board

Dec 27, 2019

14762511 - (D) (P.T.A.B. Dec. 27, 2019)

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.
14/762,511 07/22/2015 Jean-Christophe Gillard BOV-54868 9039
86378 7590 12/27/2019
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
MCGOWAN, JAMIE LOUISE
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
12/27/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-CHRISTOPHE GILLARD
Appeal 2019-003217
Application 14/762,511
Technology Center 3600
Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. 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. Appellant identifies the real party in interest as VSL International
AG. Appeal Br. 2.
Appeal 2019-003217
Application 14/762,511
2
CLAIMED SUBJECT MATTER
The claims are directed to a hydromill wheel with single disc cutting
rollers. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hydromill wheel for excavating a trench in hard rock, the
wheel comprising:
a drum arranged to be rotated about an axis extending
laterally below a body of a hydromill; and
a plurality of single disc cutters mounted on a periphery of
the drum, each said single disc cutter having a rotatable single
cutting disc, each said rotatable single cutting disc having a
single cutting edge arranged to come in contact with and crush
or cut the rock during excavation, wherein a spacing between
projections of at least two consecutive cutting discs on the drum
axis is 5 % to 70 % of the cutting disc diameter, and wherein a
weight of the hydromill is supported by the single disc cutters at
a bottom of the drum for cutting the rock disposed below the
hydromill.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Stötzer US 5,035,071 July 30, 1991
Stoetzer US 5,924,222 July 20, 1999

REJECTIONS
Claims 1, 3–9, 12, 14, 16, 19 and 20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Stötzer ’071.2

2 We understand “Stoetzer” and “Stötzer” to be alternative forms of the same
name. We refer to “Stötzer ’071” as printed on the ’071 patent, where the
Examiner refers to “Stoetzer ’071.”
Appeal 2019-003217
Application 14/762,511
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Claims 2, 11, 13, 15, 17 and 18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Stötzer ’071. Final Act. 5.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stötzer ’071 and Stoetzer ’222. Final Act. 7.
OPINION
Independent claim 1 requires, among other things, “wherein a spacing
between projections of at least two consecutive cutting discs on the drum
axis is 5 % to 70 % of the cutting disc diameter.” Appellant argues that such
information cannot be deduced from Stötzer’s Figures alone. App. Br. 10–
11. If any information can be deduced about the cutting disc spacing “on the
drum axis” in Stötzer it would not appear to be deducible from Figure 2, the
only portion of Stötzer cited by the Examiner for meeting this limitation.
Final Act. 3; Ans. 5. This is because the drum axis goes into and out of the
page in Figure 2 and there is no indication whatsoever as to cutter spacing in
that direction. Accordingly, we cannot sustain the Examiner’s anticipation
rejection on the basis set forth by the Examiner or the Examiner’s
obviousness rejection of claim 10 which exhibits the same shortcoming.
Turning to independent claim 15, the Examiner determines:
It would have been an obvious matter of design choice to utilize
cutting discs that would create fractures between 10mm and
70mm or between 10 mm and 40 mm, since such a modification
would have involved a mere change in the size of a component.
A change in size is generally recognized as being within the level
or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA
1955).
Final Act. 6–7.
Determining that a claim element is the product of an “obvious design
choice” is generally precluded where the claimed structure and the function
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Application 14/762,511
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it performs are different from the prior art. See In re Gal, 980 F.2d 717, 25
USPQ2d 1076 (Fed.Cir.1992) (cited with approval in In re Chu, 66 F. 3d
292 (Fed. Cir. 1995). Here the Specification discusses the purpose of the
range recited:
It has been discovered that the spacing of the disc traces, in other
words their projection on the cutter wheel axis A, B, is preferably
5% to 70% of the disc diameter or if expressed directly in terms
of length, then the lateral spacing (in the direction of the axis A,
B) of the disc traces is preferably between 10 mm and 70 mm,
and in some implementations between 10 and 40 mm. With this
arrangement, for instance for typical granite with ultimate
compressive strength equalling about 150 N/mm2 and tensile
strength of around 8 N/mm2 , cracks on the rock created by the
disc cutters 11 still join.
Spec. 8:11–19.
Rather than provide any evidence or technical analysis relevant to the
specific facts at issue relating to the fracture spacing the Examiner
summarily reaches a conclusion of obviousness relying on, without more, a
per se rule that “[a] change in size is generally recognized as being within
the level or ordinary skill in the art.”
“This method of analysis is founded on legal error because it
substitutes supposed per se rules for the particularized inquiry required by
section 103. It necessarily produces erroneous results.” In re Ochiai, 71 F.
3d 1565, 1571 (Fed. Cir. 1995).
The use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention — including all
its limitations — with the teachings of the prior art, flouts section
103 and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO examiners and
the Board . . . But reliance on per se rules of obviousness is
legally incorrect and must cease. Any such administrative
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Application 14/762,511
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convenience is simply inconsistent with section 103, which,
according to Graham and its progeny, entitles an applicant to
issuance of an otherwise proper patent unless the PTO
establishes that the invention as claimed in the application is
obvious over cited prior art, based on the specific comparison of
that prior art with claim limitations.
Id at 1572.
For the foregoing reasons we do not sustain the Examiner’s
obviousness rejections.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–9, 12,
14, 16, 19,
20
102(b) Stötzer ’071 1, 3–9, 12,
14, 16, 19,
20
2, 11, 13,
15, 17,18
103(a) Stötzer ’071 2, 11, 13,
15, 17, 18
10 103(a) Stötzer’071,
Stoetzer ’222
10
Overall
Outcome
1–20
REVERSED