Ex Parte Kienzle

Board of Patent Appeals and Interferences

Nov 15, 2010

10170857 (B.P.A.I. Nov. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD D. KIENZLE
____________

Appeal 2009-008565
Application 10/170,857
Technology Center 3700
____________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Richard D. Kienzle (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 8, 10, 12-16, 18, 19, and
26-38. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s claimed invention relates to a thread milling tool.
Spec. 1, para. [0001]. Claim 8, reproduced below, is representative of the
subject matter on appeal.
8. A thread milling tool comprising:
a shank portion;
a cutting portion including at least one helically oriented
flute defined by a helix angle less than 40 degrees and a
plurality of thread milling teeth,
wherein said plurality of thread milling teeth define a
back taper, and
wherein said back taper is in a range between about
0.0005 inches to about 0.010 inches.
REJECTION
Appellant seeks review of the Examiner’s rejection of claims 8, 10,
12-16, 18, 19, and 26-38 under 35 U.S.C. § 103(a) as being unpatentable
over Fang (US 6,345,941 B1, issued Feb. 12, 2002). Despite the Examiner’s
statement of the rejection as being based on Fang alone, the Examiner’s
further explanation of the rejection appears to also rely on disclosures made
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in portions of Appellant’s Specification (Applicants Admitted Prior Art or
AAPA).
ISSUE
The issue presented by this appeal is whether the subject matter of
independent claims 8, 15, 26, and 32 would have been obvious in view of
Fang when considered alone or in combination with the AAPA.
ANALYSIS
Independent claims 8 and 26 are directed to a thread milling tool
having a cutting portion that includes a plurality of thread milling teeth
defining a back taper in a range between about 0.0005 inches to about 0.010
inches. Quite similarly, independent claims 15 and 32 are directed to a
method of making a thread milling tool including the step of forming a
cutting portion that includes a plurality of thread milling teeth defining a
back taper in a range between about 0.0005 inches to about 0.010 inches.
Appellant’s Specification defines back taper (also referred to as a “negative
taper”) as “a successive increase in the distance between the central
rotational axis of the tool and the crest on individual thread-cutting teeth as
the thread-cutting teeth approach the terminal end.” Spec. 2, para. [0004].
Thus, independent claims 8, 15, 26, and 32 each call for the cutting
portion of the thread milling tool to include a plurality of thread milling teeth
configured so that the distance between the central rotational axis of the tool
and the crest on individual thread milling teeth successively increases, in a
range between about 0.0005 inches to about 0.010 inches, as the thread
milling teeth approach the terminal end of the tool.
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Though listed as a single ground of rejection, the Examiner effectively
presented two versions of the rejection of claims 8, 15, 26, and 32: (1) as
unpatentable in view of Fang, and (2) as unpatentable in view of Fang and
the AAPA. We cannot sustain either version of the rejection.
In the first version of the rejection, the Examiner found that Fang
discloses the claimed invention except for the plurality of thread milling
teeth defining a back taper in the range between about 0.0005 inches to
about 0.0010 inches. Ans. 3. The Examiner concluded that it would have
been obvious to modify Fang’s thread milling tool to have a back taper in
the claimed range because the general conditions of a claim were disclosed
in the prior art so that discovering the optimum or workable range involved
only routine skill in the art. Ans. 4 (citing In re Aller, 220 F.2d 454, 456
(CCPA 1955)).
The claimed device differs from Fang’s thread milling tool in that the
claimed device has a back taper, while Fang discloses a thread milling tool
having a plurality of thread milling teeth (cutting teeth 16) defining a
positive taper.2 We cannot agree with the Examiner that the distinction
between the claimed device and the prior art in this case is analogous to that
in Aller.
Aller established two conditions for a conclusion of obviousness:
1) the general conditions of the claim must be disclosed in the prior art and

2 Fang discloses the distance between the central axis 22 of the tool 10 and
the crest of the individual cutting teeth 16 decreases as the cutting teeth 16
approach the terminal end 24 of the tool 10. Fang, col. 5, ll. 16-20; fig. 3.
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2) discovery of the optimum or workable range must be a matter of routine
experimentation for a person of ordinary skill in the art. Aller, 220 F.2d at
456 (citations omitted). Aller does not apply here because the general
conditions of the claim were not disclosed in the prior art, since Fang
discloses a thread milling tool with a positive taper, unlike the negative taper
of the claimed device.
Because Aller is inapplicable to the case at hand, the Examiner’s first
version of the rejection is not based upon a sufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
modified Fang’s thread mill tool having a positive taper to have a back taper
in a range between about 0.0005 inches to about 0.010 inches as called for in
independent claims 8, 15, 26, and 32. The rejection of claims 10, 12-14, 16,
18, 19, and 27-31, and 33-38, which depend from claims 8, 15, 26, and 32,
suffers from the same error.
In the second version of the rejection, the Examiner found that the
Appellant’s Admitted Prior Art (AAPA) discloses the claimed back taper
range. Ans. 3, 5 (citing Spec. 6:16-21). The Examiner concluded that it
would have been obvious to modify the milling tool of Fang to include a
back taper in the range of between about 0.0005 inches to about 0.0010
inches, as disclosed in the AAPA, “to improve the cutting characteristics of
the tool.” Ans. 4-5. Appellant asserts that the Examiner’s finding regarding
the AAPA is a misinterpretation of Appellant’s Specification. App. Br. 11.
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The portion of Appellant’s Specification cited by the Examiner states:
It will be appreciated that the invention is not limited by the
negative taper angle of amount of back taper, and that the
invention can be practiced with any suitable negative taper angle
or back taper amount. The appropriate negative taper angle will,
of course, depend on the specifications of the threads to be
produced, and such specifications are well known to those
having ordinary skill in the thread milling arts.
Spec. 6:16-21.
We cannot agree with the Examiner’s contention that this portion of
Appellant’s Specification discloses that it was known in the art for a thread
milling tool to include a back taper in a range between about 0.0005 inches
to about 0.010 inches. Rather, we agree with Appellant (App. Br. 11) that
Appellant’s Specification describes only that the invention can be practiced
with any suitable negative taper angle amount depending on the
specifications of the threads to be produced. Appellant’s Specification does
not admit that one having ordinary skill in the art at the time of Appellant’s
invention would have known to modify a milling tool having a positive taper
angle to a milling tool with a negative taper angle. Because the Examiner’s
finding of fact is in error, the rejection of independent claims 8, 15, 26, and
32 is also in error. The rejection of claims 10, 12-14, 16, 18, 19, and 27-31,
and 33-38, which depend from claims 8, 15, 26, and 32, suffers from the
same shortcoming.
CONCLUSION
The subject matter of independent claims 8, 15, 26, and 32 would not
have been obvious in view of Fang alone or in combination with the AAPA.
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DECISION
The decision of the Examiner to reject claims 8, 10, 12-16, 18, 19, and
26-38 is REVERSED.

REVERSED

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