Ex Parte Iannelli

Board of Patent Appeals and Interferences

Mar 20, 2012

12275197 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH IANNELLI, SR.
____________________

Appeal 2011-005096
Application 12/275,197
Technology Center 3700
____________________

Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005096
Application 12/275,197
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
9 and 11. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a power-saw cross-cut, miter-cut, and rip-
cut assembly. Claim 1, reproduced below, is illustrative:
1. An apparatus comprising:
a support platform that includes a substantially circular
opening,
a guide assembly that is configured to support and guide
a circular-saw at a select angle of travel of the circular-saw
relative to a reference position of the guide assembly on the
support platform, and
a plurality of support elements that are configured to
support the support platform at a stationary position above a
work surface,
wherein the support elements and support platform are
arranged to allow a workpiece to be introduced to facilitate
either a cross-cut or a rip-cut of the workpiece while the guide
assembly is positioned at the reference position, and a miter-cut
of the workpiece while the guide assembly is offset from the
reference position.
REJECTIONS
Claims 1-5 are rejected under 35 U.S.C. § 103(a) as obvious over
Shelhorse (US 4,890,657 iss. Jan. 2, 1990). Ans. 3.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as obvious over
Shelhorse in view of Lin (US 6,206,063 B1 iss. Mar. 27, 2001). Ans. 5.
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as obvious over
Shelhorse in view of Blanchette (US 4,920,485 iss. May 1, 1990). Ans. 5.
Claim 11 is rejected under 35 U.S.C. § 103(a) as obvious over
Shelhorse and Collins (US 5,080,152 iss. Jan. 14, 1992). Ans. 6.
Appeal 2011-005096
Application 12/275,197
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OPINION
The Examiner clarifies that Gorman (US 4,281,694 iss. Aug. 4, 1981)
was inadvertently included in the basis for rejection of claims 1-5 in the
Final Rejection of April 4, 2010. Ans. 7. The Examiner states Gorman was
cited as further support for the Examiner’s rationale as to why it would have
been obvious to provide supports that support a platform at a stationary
position as recited in claim 1. Id. Neither Gorman nor the Examiner’s
rationale regarding platform support are necessary to support the Examiner’s
conclusion that the subject matter of claim 1 would have been obvious to
one having ordinary skill in the art based on Shelhorse. See, e.g., In re
Mullin, 481 F.2d 1333, 1335-36 (CCPA 1973) (an article is no less
anticipatory because it only anticipates for a limited period of time); see also
In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)
(“anticipation is the ultimate of obviousness”). Appellant had a fair
opportunity to react to the thrust of the Examiner’s rejection whether based
on the combination of Shelhorse and Gorman or Shelhorse alone, and
Appellant did not raise any issue relevant to Gorman or the Examiner’s
rationale for modifying Shelhorse.
Appellant argues claims 1-5 as a group but presents separate
arguments regarding claim 5. App. Br. 4-8. We select claim 1 as
representative and claims 2-4 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 6-9 and 11 are argued solely based upon
dependency from claim 1. App. Br. 9.
Regarding claim 1, Appellant contends that “[t]he combination of
Shelhorse and Gorman fails to teach or suggest support elements and a
support platform that are arranged to allow a workpiece to be introduced to
facilitate either a cross-cut or a rip-cut of the workpiece while the guide
Appeal 2011-005096
Application 12/275,197
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assembly is positioned at a reference position.” App. Br. 4. Further,
Appellant contends
Shelhorse specifically teaches two different positions of the
circular rim 12 for performing cross-cuts and rip-cuts, and does
not teach or suggest being able to perform either a cross-cut or a
rip-cut while the guide assembly is positioned at a reference
position, and Shelhorse’s figures clearly indicate that
Shelhorse’s device cannot allow for such an arrangement.
App. Br. 5.
The Examiner fully responded to the issues raised in the Brief
concerning claim 1. We adopt the entirety of the Examiner’s response
(Ans. 7-8, section B) as our own. Appellant contends that the first portion of
the Examiner’s response includes a new interpretation of the claim. Reply
Br. 2. However, it is Appellant, and not the Examiner, that advances a claim
interpretation inconsistent with the plain language of claim 1. It was
reasonable for the Examiner to interpret “either a cross-cut or a rip-cut” in
claim 1 as one or the other but not necessarily both. Ans. 7. In any case, the
Examiner correctly explained that, even adopting Appellant’s narrow
construction, Shelhorse’s rails 22, 24 and raising or lowing means
(unlabeled), “support elements,” and circular rim 12 and rails 14, “a guide
assembly,” are arranged to facilitate both types of cuts1 without moving the
guide assembly. Ans. 7-8 (describing steps i-iii). This ability is largely

1 “Rip-cut” and “cross-cut” are interpreted according to the express
definition provided in the Specification: “If a cut is made perpendicular to
the run of the grain, or the longer dimension, it is termed a ‘cross-cut’; if the
cut is parallel to the grain, or the longer dimension, it is termed a ‘rip-cut.’”
Spec. 1, para. [0002]; In re Am. Acad. of Sc. Tech Ctr., 367 F.3d 1359, 1364
(“[T]he PTO must apply the broadest reasonable meaning to the claim
language, taking into account any definitions presented in the specification.”
(citations omitted)).
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Application 12/275,197
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dependent upon the size of the workpiece. While workpiece 30 depicted in
Shelhorse is long enough that it could not be entirely rip-cut along its
longitudinal axis when rails 14 are in the solid line position of Figure 2, a
longitudinally shorter workpiece could be rip-cut or cross-cut in that guide
position. Additionally, even in a position intended for rip-cutting, i.e.,
rotated from the figure 2 position, Shelhorse’s device could be used to make
cross cuts. The fact that Shelhorse prefers to change positions between rip
and cross cuts (col. 3, ll. 6-27; Reply Br. 3-4) does not mean Shelhorse’s
device does not also “facilitate” both types of cuts with the rim 12 and rails
14 in a single position. The presence of raising or lowing means providing a
cantilevered support does not change this. Contra Reply Br. 3. A claim
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. See, e.g., In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). Since Shelhorse’s device can facilitate either or
both types of cuts without having four open sides, as in Appellant’s
preferred embodiment, the mere recitation of the ability to facilitate either
cut does not require the claimed apparatus to have open sides. Contra Reply
Br. 3. Thus, as the Examiner points out, reciting that the support elements
and platform facilitate either a cross-cut or a rip-cut does not clearly convey
a structural meaning that would distinguish the claimed device from that of
Shelhorse. Cf., e.g., Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997).
Accordingly, the rejection of claim 1 is sustained.
Regarding claim 5, we recognize that while Shelhorse discusses
“fences 32” only one fence, in plural positions, is depicted in the figures.
See, e.g., Shelhorse fig. 4. Shelhorse instructs that the fences 32 can be
positioned anywhere but Shelhorse does not provide any express guidance
regarding how to position those fences. It is clear, and Appellant does not
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Application 12/275,197
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dispute, that the depicted fence 32 in Shelhorse meets the limitations
pertaining to the “first fence” of claim 4. To meet the limitations of claim 5,
a second fence parallel to the saw blade, i.e., perpendicular to the first fence,
is required. We agree with the Examiner that it would have been obvious to
place a second fence in that orientation. Ans. 4-5, 8-9; contra App. Br. 7-5,
Reply Br. 4-6. Placing a second fence in that manner would be advantageous
for creating an end stop during a cross-cut or for providing a guide to
maintain a uniform width of the cut workpiece during a rip-cut. Accordingly
we also sustain the rejection of claim 5.
DECISION
The Examiner’s rejection of claims 1-9 and 11 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).

AFFIRMED

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