Ex Parte Ericsson

Patent Trial and Appeal Board

Jun 22, 2018

14276608 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/276,608 05/13/2014
114333 7590 06/25/2018
Capitol City TechLaw, PLLC
344 Maple Avenue West, #333
Vienna, VA 22180
FIRST NAMED INVENTOR
Hans ERICSSON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
315-0087 /CON2 1020
EXAMINER
MICHALSKI, SEAN M
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
06/25/2018 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 HANS ERICSSON1
Appeal2017-008234
Application 14/276,608
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 4, 5, and 7-17. 2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Twinblade Technologies Holding Sweden AB ("Appellanf') is
the Applicant as provided in 37 C.F.R. § l.46 and is identified as the rea]
party in interest. Appeal Br. 1.
2 Claims 1-3 and 6 are cancelled. Amendment (Julv L 2016L
', J , /
Appeal2017-008234
Application 14/276,608
THE CLAIMED SUBJECT MATTER
Claim 4, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
4. A pair of saw blades, comprising:
a first saw blade, which is arranged to rotate in a first
direction around a rotational axis, and
a second saw blade, which is arranged to rotate around the
same rotational axis in a second direction opposite to the first
direction,
wherein each of the first and second saw blades includes a
blade body and cutting elements along a periphery of each blade
body, the cutting elements being arranged to run close to and in
parallel with each other during rotation of the saw blades,
wherein the blade body of the first saw blade has a front
side, which is intended to be turned towards a back side of the
blade body of the second saw blade,
wherein the cutting elements on the blade body of the first
saw blade protrude with a first overhang from said front side in
a direction towards the second saw blade,
wherein the cutting elements on the blade body of the
second saw blade protrude with a second overhang from said
back side in a direction towards the first saw blade,
wherein at least one of said front side of the first saw blade
and said back side of the second saw blade has a circumferential
ridge, which is arranged radially inside of the cutting elements
with respect to the rotational axis and provided to slide over a
corresponding part on the opposite front side of the first saw
blade or a corresponding ridge on the opposite back side of the
second saw blade,
wherein the ridge on the at least one of said front side of
the first saw blade and said back side of the second saw blade is
made in one piece with the respective blade body corresponding
as a spacer to prevent the cutting elements with the respective
overhangs hitting each other during rotation of the saw blades,
and
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Application 14/276,608
wherein the cutting elements beside the first and the
second overhangs on the sides facing each other have overhangs
on the opposite sides.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Tuttle us 2,555,428 June 5, 1951
Hundhausen us 3,618,304 Nov. 9, 1971
Baez Rios us 3,945,289 Mar. 23, 1976
Lurwig us 5,450,714 Sept. 19, 1995
Lavinder us 5,743,163 Apr. 28, 1998
Manzo US 6,450,075 Bl Sept. 17, 2002
Hofmann US 2003/0000363 Al Jan.2,2003
Ericsson US 2004/0182217 Al Sept. 23, 2004
REJECTIONS
I. Claims 4, 5, 7-12, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hofmann, Lavinder, Ericsson, and Tuttle. Final
Act. 3-7, 10-12.
II. Claims 13-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hofmann, Lavinder, Ericsson, Tuttle, Baez Rios, Hundhausen,
Manzo, and Lurwig. Id. at 7-10.
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Application 14/276,608
OPINION
Rejection I
Claims 4, 5, and 7-12
The Examiner finds that Hofmann teaches a pair of saw blades having
most of the limitations of independent claim 4 (Final Act. 3--4 ), but "does
not disclose having an overhang on the cutting elements directed to the
outside of the blade coupling, as claimed 'the cutting elements ... on the
sides facing each other have overhangs on the opposite sides"' (id. at 4).
However, the Examiner finds that "[ c Jutting blades having cutting elements
with overhangs to both sides of the median base is an old well known
feature, with predictable results-the kerf (cutting slot) will extend to the
same width as the cutting edge overhang." Id. In particular, the Examiner
finds that
the use of kerf widening outer directed cutter overhangs is seen
in Tuttle. Since Hofmann discloses overhang facing inward (and
not outward), Tuttle shows it facing outward (and not inward)
and Ericsson . . . shows a different configured cutting element
overlap; clearly one of ordinary skill at the time knew about all
the different ways cutting elements could be mounted to the
blade base--selecting old known features of having inner and
outer projections (shown in Lavinder, demonstrating the
symmetrical overhangs to be generally known) and applying
them to the known counter-rotating blades would be predictable.
Id. at 5. The Examiner clarifies that Lavinder teaches that "it is known to
have saw teeth which project to both sides of the blade body." Ans. 3; see
also id. at 4 (including an annotated reproduction of Fig. 3 of Lavinder,
identifying that the cutting teeth extend to both sides of the blade base). The
Examiner determines that "[i]t would be obvious to extend the blade teeth of
Hofmann to the outsides of the blade, based on Lavinder alone, in order to
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Application 14/276,608
widen the kerf and space the kerf from the blade body." Id. at 4. The
Examiner also explains "that keeping the blade body spaced from the kerf
reduces binding of the workpiece against the blade body" because, "[b ]y
spacing the kerf width (teeth width) from the blade body, there is an air gap
which means the blade base will not rub against the work during a cut, as it
would ifthe gap were O." Id.; see also id. (explaining that "[t]he blade body
rubbing against the work, due to a kerf identical in lateral extent to the blade
body, results in the creation of friction, and therefore bum in of the
workpiece where the cut is being made").
Appellant argues that the Examiner has not set forth a proper case of
obviousness because "[t]here is no apparent benefit in incorporating
outwardly directed overhangs in Fig. 12 of Hofmann." Appeal Br. 5. In
particular, Appellant asserts that the Examiner's stated rationale about
reducing friction between blade body and workpiece "is incorrect for being
speculative." Reply Br. 2 (citing Ans. 4). Appellant argues that widening
the kerf would not necessarily prevent the blade body from creating friction
with the workpiece (as reasoned by the Examiner) because "saw blades
move away from each other during use" and "one would expect the blade
bodies to engage the workpiece when the blades move away from each
other" even ifthe kerf is made wider. Id. Contrary to Appellant's assertion,
the cited evidence (WO 89/00474 to Gebelius) does not "expressly and
unequivocally indicate[] that in a counter-rotating blade configuration, the
saw blades 'resiliently move away from each other' resulting in an increase
of the gap therebetween" (id.), but instead states only that this "may" occur.
Moreover, even assuming arguendo that the saw blades would move away
from each other, there is no evidence that they would move to such a degree
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as to negate the Examiner's stated advantage of reducing friction with a
wider kerf.
According to Appellant, "Hofmann is not at all concerned about
friction between the blade bodies and the workpiece." Id. at 2-3 (citing
Hofmann, Fig. 3). We are not persuaded by Appellant's argument because it
appears to insist on an explicit teaching, suggestion, or motivation in
Hofmann for the Examiner's proposed modification, whereas such a
stringent requirement has been foreclosed by the Supreme Court. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid
insistence on teaching, suggestion, or motivation is incompatible with its
precedent concerning obviousness). Rather, the Court requires that we look
to whether the Examiner has provided "some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with approval in KSR,
550 U.S. at 418).
As discussed above, the Examiner articulates adequate reasoning
based on rational underpinnings as to why it would have been obvious to
modify Hofmann's counter rotating blade cutting elements to include
overhangs on the outside of the blade bodies. See Final Act. 4---6 (reasoning
that the proposed modification is a combination of known elements
according to their respective functions to yield predictable results); Ans. 4
(explaining that the proposed modification of Hofmann would predictably
result in an air gap between the blade body and workpiece that reduces
rubbing and binding). In this regard, Appellant does not offer any factual
evidence or persuasive technical reasoning to support the assertion that the
Examiner's reasoning is "speculative" (Reply Br. 2), nor does Appellant
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explain why the Examiner's reasoning lacks rational underpinnings.
Moreover, the Examiner's proposed modification of Hofmann's cutting
elements to include overhangs on the outside in addition to the inside does
not amount to more than the predictable use of prior art elements according
to their established functions, or the mere application of a known technique
to a piece of prior art ready for the improvement. See K'5R, 550 U.S. at 417
(noting that such modifications are obvious where they do no more than
yield a predictable result).
Appellant argues that conventional wisdom teaches away from the
Examiner's proposed modification. See Appeal Br. 6-7; Reply Br. 3-5. In
particular, Appellant asserts that "conventional wisdom is to employ a saw
blade kerf that is as thin as the application will allow," and "a wider kerf
would necessarily increase power consumption and wasted material, both of
which are undesirable." Appeal Br. 6; see also Reply Br. 4 (asserting that
Gebelius (WO 89/00474) provides evidence that increasing kerf width has
disadvantages that would lead one of ordinary skill away from increasing the
width of Hofmann's kert). This argument is unconvincing because
Appellant does not persuasively explain why any alleged increase in power
requirements and waste resulting from an increase in kerf width would
necessarily have dissuaded one of ordinary skill in the art from modifying
Hofmann as proposed by the Examiner. Even if the proposed modification
of Hofmann would increase power requirements and waste, our reviewing
court has recognized that a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate any or
all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (if there are tradeoffs involved regarding
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features, such things do not necessarily prevent the proposed combination);
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
Appellant argues that the Examiner has not shown "that the prior art
included each element claimed, with the only difference between the
claimed invention and the prior art being the lack of actual combination of
the elements in a single prior art reference." Appeal Br. 7 (citing MPEP
§ 2143(I)(A)). Appellant asserts that the cited "references disclose
numerous and varied overhangs, ... [b Jut none are provided in a counter-
rotating blade configuration as claimed, i.e., on both sides of both blades."
Id. at 8; see also Reply Br. 5 (asserting that "none of the prior art includes a
counter-rotating blade configuration in which the blades have teeth with
overhangs on both sides"). We are not persuaded by Appellant's argument
because it essentially attacks each of the cited references individually, rather
than the rejection as articulated by the Examiner, which is based on the
combination of Hofmann, Lavinder, Ericsson, and Tuttle. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by
attacking references individually when the rejection is based on a
combination of the references). l'Vioreover, the rationale based on combining
prior art elements according to known methods to yield predictable results
recognizes that each claimed element is "not necessarily in a single prior art
reference" (MPEP § 2143(A)(I)), so the fact that no single reference
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provides overhangs on both sides of both blades specifically in a counter-
rotating blade configuration is not dispositive of error.
Appellant argues that the claimed invention produces unexpected
results in the form of functional advantages. Appeal Br. 8-9. In particular,
Appellant asserts that "the overhangs dramatically increase air flow behind
the tooth to blow away chips that may enter into the space between the
blades, and without causing friction." Id. According to Appellant, "[t]hese
advantageous results have not been recognized in the prior art." Id. at 9.
These unsupported assertions are not persuasive because they are merely
attorney argument, which cannot take the place of evidence in the record.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (stating that
unsupported attorney argument as to unexpected results is entitled to little
weight); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is
well settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice."). Here, Appellant presents no factual evidence supporting the
assertion that the purported functional advantages were unexpected results.
Appellant also argues that the Examiner's rejection is "based upon an
impermissible hindsight where Appellant's insights are being used to
deprecate Appellant's own invention." Appeal Br. 9. However, Appellant
does not identify any knowledge relied upon by the Examiner that was
gleaned only from Appellant's disclosure and that was not otherwise within
the level of ordinary skill at the time of the invention. See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Moreover, regarding Appellant's
assertion that the purported advantages (e.g., increasing air flow behind the
tooth) "have not been recognized in the prior art" and "thus it appears that
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the rejection[']s grounds are based upon an impermissible hindsight (Appeal
Br. 9), we note that the reason to modify a reference may often prompt a
person of ordinary skill in the art to do what the inventor has done, but for a
different purpose or to solve a different problem; it is not necessary that the
prior art suggest the modification to achieve the same advantage or result
discovered by an applicant. See In re Kahn, 441 F .3d at 987. Here, the
Examiner has articulated reasoning having rational underpinnings as
described supra. As such, we disagree with Appellant's assertion that the
Examiner relied on impermissible hindsight in reaching the determination of
obviousness of the claimed subject matter.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the subject matter of independent claim 4
would have been obvious. Accordingly, we sustain the rejection of claim 4,
and claims 5 and 7-12, for which Appellant relies on the same arguments
and reasoning (Appeal Br. 11), under 35 U.S.C. § 103(a) as unpatentable
over Hofmann, Lavinder, Ericsson, and Tuttle.
Claim 17
In rejecting dependent claim 17, the Examiner finds that "[i]t is
known to have th[ e] feature of a lack of trimming blades in a counter-
rotating blade arrangement, as seen in Tuttle figure 7, which shows the non-
integral spacer between counter-rotating blades, and the lack of trimming
blade between the spacer and the cutting tips." Final Act. 10. The Examiner
also points to Ericsson, "which shows no trimmer and no other element
between spacers 7, 12, or 15, and the cutting elements (5, 6, or 10, 11 or 13
and 14; respectively)." Id. According to the Examiner,
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the omission of a trimming blade between the spacer and the
blade teeth has an apparent reason (to be omitted}--that adding
an additional feature is costlier than not including that element.
While the trimmer arguably makes the trimming cleaner-a
person of ordinary skill can pursue a more rough cutting
arrangement to save cost as a routine expedient. Since Ericsson
. . . and Tuttle both show counter-rotating blades without the
trimming element its omission is prima facie obvious, since a
person of ordinary skill would recognize the benefits to cost of
construction of not including the additional feature.
Id. at 12.
Appellant argues that Hofmann teaches away from the Examiner's
proposed modification because "Hofmann's express objective is to provide
main cutters and a trimmer that overlap each other in the kerf." Appeal Br.
10 (citing Hofmann i-fi-1 5, 35). Appellant asserts that "the trimmer is
desirable, achieves advantages, and is the exact feature that avoids
shortcomings associated with the prior art configurations lacking a trimmer."
Reply Br. 7. According to Appellant, "those skilled in the art would not
have been motivated to remove the trimmer because doing so would
altogether defeat Hofmann's express objective of providing cutters that
overlap each other in the kerf." Id. We are not persuaded by Appellant's
argument because "[a] reference does not teach away ... if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004)). Although Hofmann discloses advantages of using a
trimmer between counter-rotating saw blades, Appellant has not identified,
nor do we discern, any passage in Hofmann that actually criticizes,
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discredits, or discourages omitting the trimmer element, as proposed by the
Examiner.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the subject matter of claim 17 would have
been obvious. Accordingly, we sustain the rejection of claim 17 under
35 U.S.C. § 103(a) as unpatentable over Hofmann, Lavinder, Ericsson, and
Tuttle.
Re} ection II
In contesting the rejection of dependent claims 13-16, Appellant
relies on the same arguments and reasoning we found unpersuasive in
connection with base claim 4. See Appeal Br. 11 (relying on the alleged
deficiencies of Hofmann, Lavinder, Ericsson, and Tuttle, and asserting that
Baez Rios, Hundhausen, Manzo, and Lurwig fails to remedy such
deficiencies). Accordingly, for the same reasons discussed above in
connection with the rejection of claim 4, we also sustain the rejection of
claims 13-16 under 35 U.S.C. § 103(a) as unpatentable over Hofmann,
Lavinder, Ericsson, Tuttle, Baez Rios, Hundhausen, Manzo, and Lurwig.
DECISION
The Examiner's decision to reject claims 4, 5, 7-12, and 17 under
35 U.S.C. § 103(a) as unpatentable over Hofmann, Lavinder, Ericsson, and
Tuttle is affirmed.
The Examiner's decision to reject claims 13-16 under 35 U.S.C.
§ 103(a) as unpatentable over Hofmann, Lavinder, Ericsson, Tuttle, Baez
Rios, Hundhausen, Manzo, and Lurwig is affirmed.
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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)(l )(iv).
AFFIRMED
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