12080292 (P.T.A.B. Mar. 20, 2014)

Ex Parte Baldeck

Patent Trial and Appeal BoardMar 20, 2014

12080292 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRIAN J. BALDECK ____________________ Appeal 2011-009531 Application 12/080,292 Technology Center 3700 ____________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and BEVERLY M. BUNTING, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009531 Application 12/080,292 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 5. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a variable rate method of machining gears. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A method of grinding a toothed workpiece having at least one tooth surface wherein a threaded grinding wheel is moved relative to the tooth surface along a feed path extending in a direction along the tooth surface of the workpiece, said method comprising: bringing the tooth surface and the threaded grinding wheel into contact with one another and moving the threaded grinding wheel in the feed path direction along the tooth surface, and, shifting the workpiece along a predetermined lengthwise portion of the threaded grinding wheel during grinding, the shifting occurring at a varying shift rate whereby the spacing of grinding micro scratches will be irregular along the tooth surface. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Miyatake US 4,631,869 Dec. 30, 1986 REJECTION Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Miyatake. Ans. 3. Appeal 2011-009531 Application 12/080,292 3 OPINION A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). The Examiner found Miyatake’s method comprises shifting a workpiece 20 along a predetermined lengthwise portion of the grinding wheel 38 during grinding as required by independent claim 1. Ans. 3-4, citing Miyatake col. 4, l. 8 to col. 5, l. 41. The Examiner found that when the shift table 28 is energized, the workpiece gear 20 is in mesh with the grinding wheel 38. Id. at 4, citing Miyatake col. 8, ll. 58-63. The Examiner apparently believes that being “in mesh” during shifting necessarily results in grinding during shifting. We disagree. Miyatake discloses a clutch 48 operable to allow rotation of the workpiece 20 by the motor 22. Miyatake, col. 7, ll. 4-9. In a process for shifting the grinding wheel 38, Miyatake discloses the clutch 48 is de-energized and the workpiece 20 is no longer positively rotated by the motor 22, but rather is rotated with the grinding wheel 38. Id. at col. 8, ll. 40-56. Thus, during the shifting of the grinding wheel 38, free spinning of Appeal 2011-009531 Application 12/080,292 4 the workpiece 20 is allowed, which is indicative that grinding does not occur during the process of shifting the grinding wheel 38. Miyatake does disclose that after shifting grinding wheel 38 “now starts grinding the workpiece gear 20 with a new grinding edge.” Id. at col. 9, ll. 19-20. This statement seems to indicate grinding starts anew, that is, that grinding previously was not being performed while shifting of the grinding wheel. To the extent, it could mean that grinding, which has been going on, now continues with a new edge the Examiner has not established that this is necessarily the case. Miyatake does not expressly disclose shifting the workpiece during grinding, and since there is no evidence that shifting necessarily occurs during grinding, the Examiner has not established that Miyatake inherently discloses this step. Accordingly, the Examiner’s rejection must be reversed. DECISION The Examiner’s rejection is reversed. REVERSED hh