Ex parte BOSTIC

Board of Patent Appeals and Interferences

Feb 26, 1998

08082549 (B.P.A.I. Feb. 26, 1998)

Application for patent filed June 28, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RAYMOND R. BOSTIC

_____________
Appeal No. 96-2817
Application 08/082,5491
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
MEISTER and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-2817
Application 08/082,549
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 1, 2, 4 through 8, 10, 11, 14 and 16
through 20. Claims 3, 9, 12, 13, 15 and 21 through 28, the only
other claims remaining in the application, stand withdrawn from
further consideration under 37 CFR § 1.142(b).
Appellant's invention relates to a rotary milling
cutter. Claims 1, 10 and 18 are representative of the subject
matter on appeal. A copy of those claims may be found in the
Appendix to appellant's brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Jodock et al. (Jodock) 4,605,347 Aug. 12, 1986
Maier 4,645,389 Feb. 24, 1987
Claims 1, 2, 4 through 6, 8, 10, 11, 14 and 16
through 19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Jodock. According to the examiner, the Jodock
reference shows
Appeal No. 96-2817
Application 08/082,549
3
(1) Circular body with periphery 16, having
cutting end (frustrum of a cone) 2, and an
end surface formed by E.
(2) Terminal nose portion, 6.
(3) Shank, 1.
(4) Axially extending flutes (end surface),
formed by E and D, see fig. 3. (apparently
J-shaped)
(5) Wall (radiused) having flat section
tangent to a curved section, 7 and adjacent
7, see fig. 3.
(6) Cutting edges, formed at 7 and 6 and adjacent F,
defined by the intersection of said curved sections
with said end surface E (answer, page 3).
Claims 7 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Jodock in view of Maier. The examiner
relies upon Maier to provide the drill reamer of Jodock with
three flutes.
Reference is made to the examiner's answer (Paper
No. 10, mailed January 22, 1996) for the examiner's full
reasoning in support of the above-noted rejections. Appellant's
arguments thereagainst are found in the brief (Paper No. 9,
Appeal No. 96-2817
Application 08/082,549
4
filed November 9, 1995) and the reply brief (Paper No. 11,
filed February 28, 1996).
OPINION
In reaching our conclusion on the anticipation and
obviousness issues raised in this appeal, we have carefully
considered appellant's specification and claims, the applied
references, and the respective viewpoints advanced by appellant
and the examiner. As a consequence of our review, we have made
the determination that the examiner's rejections of the appealed
claims under 35 U.S.C. § 102(b) and § 103 cannot be sustained.
Our reasoning for such determinations follows.
In addressing the examiner's rejection under 35 U.S.C.
§ 102(b), we note that it is well settled that an anticipation
under 35 U.S.C. § 102(b) is established only when a single prior
art reference discloses, either expressly or under principles of
inherency, each and every element of a claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
Appeal No. 96-2817
Application 08/082,549
5
1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In the present case,
appellant has argued convincingly in their brief and reply brief
that the drill reamer bit of Jodock does not include a plurality
of cutting edges "defined by the intersection of said curved
sections with said end surface of said cutting end" as set forth
in claim 1, and by similar language in independent claims 10
and 18 which refer to a radiused wall section, so as to provide
curved arcuate cutting edges as required in appellant's
invention. We agree.
Looking to Jodock, it is clear to us, as it was to
appellant, that the cutting edges (6, 7) pointed to by the
examiner are straight cutting edges and are clearly not defined
by the intersection of a curved wall section or radiused wall
section of a flute with the end surface of the cutting end of
the drill. As for the unnumbered curved edges seen in Figure 3
at the base of facets (F), we share appellant's view (brief,
pages 17-18) that given the necessary direction of rotation of
the drill bit in Jodock and the positioning of these unnumbered
edges, it is clear that they do not constitute cutting edges as
required in the claims on appeal.
Appeal No. 96-2817
Application 08/082,549
6
In light of the foregoing, we must conclude that Jodock
does not disclose, either expressly or under principles of inher-
ency, each and every element of the claimed invention. For this
reason we will not sustain the examiner's rejection of appealed
claims 1, 2, 4 through 6, 8, 10, 11, 14 and 16 through 19 under
35 U.S.C. § 102(b).
With respect to the examiner's rejection of claims 7
and 20 under 35 U.S.C. § 103 based on Jodock and Maier, we find
nothing in Maier which supplies the deficiency noted above with
regard to Jodock. Accordingly, it follows that the examiner's
rejection of dependent claims 7 and 20 under 35 U.S.C. § 103 is
also not sustained.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
Appeal No. 96-2817
Application 08/082,549
7
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-2817
Application 08/082,549
8
Willian Brinks Olds Hofer Gilson & Lione
1130 Edison Plaza
Toledo, OH 43604-1537