Ex Parte Kopton

Patent Trial and Appeal Board

Aug 18, 2016

12304346 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/304,346 12/11/2008
62008 7590 08/22/2016
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Peter Kopton
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.
8369.104.USOOOO 4934
EXAMINER
JANESKI, PAUL MARTENS
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
08/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patent@maierandmaier.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER KOPTON
Appeal2014-004174
Application 12/304,346
Technology Center 3700
Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 31--41. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-004174
Application 12/304,346
CLAIMED SUBJECT MATTER
The claims are directed to a drilling tool, in particular for metallic
materials. Claim 31, reproduced below, is illustrative of the claimed subject
matter:
31. A drilling tool comprising:
a shaft rotatable about an axis thereof; and
at least one cutting bit mounted in an end of said shaft having a
leading surface disposed in a plane disposed radially relative to
said axis,
wherein said shaft includes a chip guidance passageway provided
with an inlet at an end of said shaft adjacent said cutting bit, an
outlet spaced from said inlet, a first side wall disposed in a plane
spaced angularly relative to said plane of said leading surface and
a second side wall angularly spaced relative to said first side wall,
provided with a concave surface
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Powers et al.
("Powers")
Scheer et al.
("Scheer")
Kammermeier et al.
(''Kammermeier'')
Baumgartner
us 4,220,429
us 6,030, 155
us 6,045,301
DE 19844363 Al
2
Sept. 2, 1980
Feb.29,2000
Apr. 4, 2000
Mar. 30, 2000
Appeal2014-004174
Application 12/304,346
REJECTIONS
Claims 31, 32, 38, 39, 40, and 41 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Scheer in view of Powers.
Claims 33, 34, and 35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scheer in view of Powers and further in view of
Kammermeier.
Claim 36 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scheer in view of Powers in view of Kammermeier and
further in view of DE 19844363 Al.
OPINION
Claim 31
37 C.F.R. § 41.37(c)(l)(iv) recites the requirements for arguments
presented by an Appellant on appeal, and requires in part:
(vii) Argument. The arguments of appellant with respect to each
ground of rejection, and the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the P"-ecord relied on.
The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant ... any arguments or
authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.
The Appellant first states that: "Scheer fails to either disclose or teach the
structure of sole independent claim l." 1 App. Br. 4--5. The Examiner's
rejection addressed each and every limitation in claim 31, by citing to
specific teachings of Scheer. Ans. 2-3. The Examiner further stated:
in Examiner's rejection of claim 31 ... Powers was used to modify
the first and second side walls of Scheer to be planer [sic] and set at
1 Appellant refers to independent claim 1 in error intending to refer to claim
31. Claims 31--41 are the only claims pending on appeal, with claim 31
being the sole independent claim.
3
Appeal2014-004174
Application 12/304,346
90 degrees to each other (i.e. straight flutes), however, after further
review of claim 31, Appellant does not require the first and second
side walls to be planer [sic] or at right angles to each other, only that
the side walls be disposed in a plane. Thus, Scheer may have been
used to reject claim 31 under 102b.
Ans. 6-7. Appellant's brief reorders and reformulates the disputed
limitations of Claim 31 (App. Br. 5) followed by an attempt to distinguish
Scheer from the limitations:
In essence, the curved surface in the one wall of the chip guidance
passageway of the claimed invention is in the plane of the leading
surface of the cutting bit whereas the curved surface in the one wall of
the chip guidance passageway of Scheer is in a wall angularly spaced
from the plane of the leading surface of the cutting bit.
Id. However, Appellant's arguments are not commensurate with the scope
of claim 31, and thus, for that reason, do not demonstrate error in the
Examiner's rejection of claim 31. See In re Self, 671 F.2d 1344, 1348
( CCP A 1982) (limitations not appearing in the claims cannot be relied upon
for patentability). Specifically, the limitations "the curved surface," and "the
one wall of the chip guidance passageway" are not recited in the appealed
claims. App. Br. 5. Instead of pointing out the error in the Examiner's
rejection, Appellant discusses elements of Scheer not relied on by the
Examiner and then argues that those elements are supposedly different than
the claimed invention. App. Br. 5. Appellant further asserts in the Reply
Brief:
Although Scheer provides for a cutting insert 20 in a shaft inlet 60 11
having a first side wall 72 11 disposed in a plane spaced angularly
relative to leading face 7011 of cutting insert 20, it does not provide a
second side wall angularly displaced from such first side wall 72 11 ,
provided with a concave surface but a concave surface 79 in surface
4
Appeal2014-004174
Application 12/304,346
72" and a concave surface 80 not in plane 70" of cutting insert 20
disposed at inlet 60" but axially spaced therefrom.
Rep. Br. 2. However, Appellant again elects not to address the elements
cited by the Examiner (i.e., "a first side wall (72 ', 72") spaced angularly
relative to said plane of said leading surface and a second side wall ( 66 ',
66") angularly spaced relative to said first side wall, provided with a
concave surface (col. 7, lines 43--49 of Scheer) (See id. Figures 2a-2d; see
also Final Act. 2). Therefore, we are not apprised of the errors in the
Examiner's rejection of claim 31. See 37 C.F.R. § 41.37(c)(iv) ("The
arguments shall explain why the examiner erred as to each ground of
rejection contested.").
The Examiner's rejections were set forth in a sufficiently articulate
and informative manner as to meet the notice requirement of 35 U.S.C. §
132, addressing each limitation of the rejected claims. See, e.g., In re Jung,
637 F.3d 1356, 1363 (Fed. Cir. 2011). We recognize that the Examiner did
not expressly frame his rejection as being based on 35 U.S.C. § 102, even
though the Examiner found each and every element of claim 3 1 within
Scheer. (Ans. 2, 3). Appellants do not take issue with this and, in any case,
our reviewing court has held that "anticipation [] is the ultimate of
obviousness." See In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir.
1991 ).
The Examiner has addressed all the issues involved in this appeal and
Appellants have failed to identify any errors in the Examiner's rejection with
any specificity. Accordingly, we sustain the Examiner's rejection of claim
31.
5
Appeal2014-004174
Application 12/304,346
Claims 32-41
Regarding the rejection of dependent claims 32--41, Appellant did not
separately contest these rejections or the addition of the Kammermeier and
DE 19844363 Al references (App. Br. 4--5). With regard to the dependent
claims, Appellant does not discuss error in the Examiner's position.
37 C.F.R. § 41.37(c)(l)(iv) also provides:
[ t ]he arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant. .. Under each heading
identifying the ground of rejection being contested, any claim(s)
argued separately or as a subgroup shall be argued under a
separate subheading that identifies the claim(s) by number. A
statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim
By not identifying claims 32--41 by number, and not including claims 32--41
under separate subheadings, and by merely pointing out what the claims
recite without explaining why the Examiner erred, Appellants have waived
their right to separate consideration of claims 3 2--41. See Hyatt v. Dudas,
551F.3d1307, 1314 (Fed. Cir. 2008) ("[T]he applicant can ... waive the
right to demand additional subgrouping of claims within a given appealed
ground."); see also, In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[37
C.F .R. § 41.3 7 ( c )( 1 )(iv) requires] more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.") Accordingly,
because Appellant does not present arguments for claims 32--41 separate
from those for claim 31, we do not consider claims 32--41 as separately
before us for review.
Therefore these rejections are also sustained.
6
Appeal2014-004174
Application 12/304,346
DECISION
The Examiner's rejection of claims 31--41 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)(l )(iv).
AFFIRMED
7