Ex Parte Nasu et al

Patent Trial and Appeal Board

Oct 29, 2012

11458372 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KAZUCHIKA NASU and ATSUHIKO MAETA
____________________

Appeal 2010-010143
Application 11/458,372
Technology Center 3700
____________________

Before: STEVEN D.A. McCARTHY, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010143
Application 11/458,372
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 of the Examiner’s rejection
of claims 1, 2, and 8. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ claims are directed generally to “a replaceable cutting tool
for drills, end mills, and milling cutters and a throw-away insert used as a
blade therefor.” Spec. 1. Claim 1, reproduced below emphasis added, is
illustrative of the claimed subject matter:
1. A throw-away insert including a first surface and a
second surface facing each other, a side surface being formed
between said first surface and said second surface, said throw-
away insert comprising:
a first ridge line formed at a position where said first
surface and said side surface intersects; and a second ridge line
formed at a position where said second surface and said side
surface intersect; wherein:
said first surface acts as a first rake face and said first
ridge line forms a first cutting section; said side surface acts as
a second rake face and said second ridge line forms a second
cutting section; and selection can be performed between said
first cutting section and said second cutting section, and
wherein chip breakers are disposed at a region of said
first surface along said first ridge line and a region of said side
surface along said second ridge line.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Seidel
Satran
US 4,056,872
US 6,152,658
Nov. 8, 1977
Nov. 28, 2000
Appeal 2010-010143
Application 11/458,372
3
REJECTIONS
The Examiner made the following rejections:
Claims 1 and 2 stand rejected under 35 U.S.C § 102(b) as being
anticipated by Seidel. Ans. 3.
Claim 8 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Seidel and Satran. Ans. 4.

ANALYSIS
Both the anticipation and obviousness rejections rely upon an
interpretation of Seidel finding that face 19 is or acts as a rake face. Ans. 3-
4. As Appellants point out, “Seidel merely describes upper and lower
surfaces (15, 17) acting as rake faces, as shown in FIGS. 7 and 8.” App. Br.
5. See also App. Br. 5-9. Although the relative positions of the various first,
second, and side faces as claimed are somewhat difficult to follow in the
abstract, when looking at the drawings, it becomes clear as to the claimed
distinction that is not found in Seidel. As shown in Figure 6, as well as
Figures 4 and 8, of Appellants’ Specification/drawings, the tool insert may
be flipped 90 degrees to facilitate two different cutting positions.
Accordingly, this creates a configuration where the side surface 4 is oriented
in a manner to act as a rake face as claimed in one of those two positions.
In contrast, the cutting insert in Seidel may be flipped 180 degrees,
but side surface 19 is never going to be in a position to act as a rake face in
either of those two positions. The tool insert in Seidel can be oriented so
that surface 25 is a rake face or its counterpart on the underside near surface
17 is a rake face, but we do not see how the Seidel insert would ever be
oriented so that side face 19 is a rake face. As stated above, this is clear
because Seidel is not capable of the same kind of 90 degree shift in
Appeal 2010-010143
Application 11/458,372
4
orientation as is shown in Appellants’ drawings, and as is required by the
claimed geometrical configuration. Accordingly, we agree with Appellants
that Seidel does not disclose a cutting insert geometry that would allow side
19 to be used as a rake face as claimed. See App. Br. 7. We further agree
with Appellants as to the term rake face having “a conventional meaning to
those of ordinary skill in the art which connotes a structure feature,” which
does not encompass what is shown in Seidel. App. Br. 7. We therefore
cannot sustain the rejections of claims 1, 2 as anticipated by Seidel, nor the
rejection of claim 8 as obvious over Seidel and Satran, that rely on this
erroneous finding by the Examiner that face 19 of Seidel acts as a rake face.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1, 2, and 8.

REVERSED

MP