Ex Parte Jansson

Patent Trial and Appeal Board

Nov 18, 2014

12302304 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MIKAEL JANSSON
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Appeal 2012-009051
Application 12/302,304
Technology Center 3700
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Before: CHARLES N. GREENHUT, JILL D. HILL, and
BRANDON J. WARNER, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mikael Jansson (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–10 and 12–21. We have jurisdiction
under 35 U.S.C. § 6(b).
Oral argument for this appeal was held before a panel of the Board on
November 4, 2014.

We AFFIRM.

Appeal 2012-009051
Application 12/302,304

2
CLAIMED SUBJECT MATTER
Independent claims 1, 18, and 21 are pending. Claim 1, reproduced
below, illustrates the claimed subject matter.
1. A cutting tool for chip removing machining, comprising
at least one cutter,
a holder holding the cutter,
means for securing the cutter to the holder with a cutting
edge of the cutter in a selectable cutting functional position in a
direction of an intended axis of rotation of the holder, and
an arrangement for determining a position of the cutter
with respect to the holder in a direction of the axis of rotation
for enabling securing of the cutter through the means with the
cutting edge in the selectable position, the arrangement
comprising
a body movably received in the holder and having
surfaces to bear against the cutter for defining the
position of the cutter in the direction of the axis of
rotation,
a screw adapted to be screwed in a threaded bore
in the holder, the screw having portions adapted to act
upon the body in the direction of the axis of rotation upon
screwing the screw into the threaded bore, and,
spring members adapted to act between the holder
and the body for biasing the body against the portions of
the screw.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hargreaves US 3,339,257 Sept. 5, 1967
Gage US 3,792,517 Feb. 19, 1974

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REJECTIONS
Claims 1–10 and 12–21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hargreaves and Gage. Ans. 5.1
Claim 16 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 3.

OPINION
Written Description
The Examiner agrees with Appellant’s arguments that the recitation of
claim 16 is fully supported in Appellant’s disclosure (Ans. 10), and we
therefore do not sustain this rejection.
New Arguments in Reply Brief
Appellant presents multiple arguments for the first time in the Reply
Brief. Reply Br. 1–5. According to 37 C.F.R. § 41.41, arguments presented
for the first time in the Reply Brief, which could have been presented earlier,
need not be considered by the Board and will be refused consideration
absent a showing of good cause. Appellant alleges that the new arguments
were necessitated by the Examiner reversing the order of the references in
the rejection, so that the rejection no longer “employ[s] the same elements
from each reference and combin[es] them in the same way.” Reply Br. 5.
We initially note that characterization by the Examiner of prior art as
“primary” and “secondary” is merely a matter of presentation with no legal
significance. See In re Bush, 296 F.2d 491, 496 (CCPA 1961). Further, the

1 Claim 11 is objected to by the Examiner, but is otherwise indicated as
allowable, and thus is not before us for review as part of the instant appeal.
Ans. 3; see also Final Act. 9.
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Examiner’s rejection, despite changing the order of Gage and Hargreaves,
makes the same basic findings with respect to the cutter adjustment elements
at issue. In both iterations of the rejection, the Examiner proposes to
combine Gage’s spring 18 with Hargreaves adjuster (i.e., screw 25 and
sleeve 19) to “ensure that the device stays in its adjusted position” (Ans.
9–10), or otherwise stated to “to establish various contact points between the
sleeve and the insert to position the cutting insert in an optimal position to
perform the desired cutting operation.” Final Act. 9 (emphasis added).
We do not find the arguments set forth in the Reply Brief persuasive,
and we further direct Appellant to the informative decision in Ex Parte
Borden, 93 USP2d 1473, 1475 (BPAI 2010) (pointing out the procedural
difficulties with such belated arguments). We shall not address the belated
arguments in the Reply Brief.
Difference Between Claimed Invention and Applied Art
Appellant argues that Gage only discloses a screw 10 and a spring 14
preventing rotation of the screw from its desired position, and Hargreaves
only discloses a sleeve 19 placed in a desired position by adjusting a pin 21
threaded to the sleeve 19, wherein a screw 23 bolts the sleeve/pin
combination in place. Appeal Br. 9. Appellant argues that, therefore,
neither Gage nor Hargreaves contemplates a combination of a holder
(sleeve), screw, and spring, wherein a spring is arranged to act on a holder
(sleeve). Id.
One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant’s allegation that neither
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reference teaches the combination is unpersuasive, because the question is
whether the references together — as combined by the Examiner — teach
the claimed combination.
No Reason to Combine Gage and Hargreaves
Appellant argues that because both Gage and Hargreaves already
provide means for adjusting the insert (cutter) position, one skilled in the art
would not have combined them to allow placement of Hargreaves’ insert at
the desired adjustment position. Appeal Br. 10. The fact that a reference
already performs a function does not mean that one skilled in the art would
not try to improve its performance of that function. We are not persuaded by
this argument.
Combination of Gage and Hargreaves Based on Hindsight
Appellant argues that neither Gage nor Hargreaves contemplates
positioning the cutter with a sleeve urged into position via a spring, that
there would be no benefit to adding a sleeve to Gage, and that one would
only do so in hindsight based on Appellant’s disclosure. Appeal Br. 10.
Appellant explains that if Hargreaves’ sleeve 19 were provided on Gage’s
bolt 10, the combination would still only contemplate use of Gage’s spring
18 to prevent rotation of its bolt 10, not use of the spring 18 to urge the
sleeve 19 against the cutter. Id. at 11. Appellant then argues that “[i]t is not
at all apparent how or why the Examiner believes that Gage would have
been modified in view of Hargreaves . . . to result in the claimed invention.”
Id.
As to the “why,” the Examiner states: “It would have been obvious to
one having ordinary skill in the art at the time of invention to add a spring,
as taught by Gage, in order to ensure that the device stays in its adjusted
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position (see lines 37-46 of Gage’s column 2).” Ans. 9–10. As to the
“how,” the Examiner states: “This spring could be in addition to, or a
substitute for the washer of Hargreaves.” Id. Hargreaves’ washer 22 bears
against its sleeve 19 via pin 21 to prevent rotation of the screw 25,
apparently by urging the sleeve 19 against the screw head, which would
ensure that the sleeve and screw stay in a desired position for cutter
placement. If a spring was substituted for Hargreaves’ washer 22, the spring
would perform the same function. We therefore are not persuaded by this
argument.
Claim 21
Regarding method claim 21, Appellant argues that nothing in the
references suggests
screwing the screw in the screwing home direction in a threaded
bore, and, after screwing the screw in the screwing home
direction, screwing the screw in the unscrewing direction in the
threaded bore until the body influences the cutter in the
direction of the intended axis of rotation to reach the selectable
position.
Appeal Br. 12.
The Examiner responds that Hargreaves and Gage fairly teach
“manipulating the screw (25) in a clockwise and counter clockwise direction
to finely adjust the cutting insert (col. 2, lines 20-22),” and that manipulating
the screw in each device will “maneuver the surface of the body abutting the
insert for precise positioning” of the insert. Ans. 12–13. Indeed, lines
20–22 of column 2 of Hargreaves discuss movement of the insert (cutter) by
turning the adjustment screw, and lines 18–22 of column 2 of Gage state that
“angular rotation of the bolt is transformed into a rectilinear translating
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movement of the abutment for the cutter,” which positions the cutting edges
of the cutters. We agree with the Examiner.
For the reasons set forth above, we sustain the rejection of claims
1–10 and 12–21 as unpatentable over Hargreaves in Gage.
DECISION
We AFFIRM the rejection of claims 1–10 and 12–21 under 35 U.S.C.
§ 103(a) as unpatentable over Hargreaves in Gage.
We REVERSE the rejection of claim 16 as failing to comply with the
written description requirement.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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