Ex parte RISSE

Board of Patent Appeals and Interferences

Feb 19, 1998

08303065 (B.P.A.I. Feb. 19, 1998)

Application for patent filed September 8, 1994.1
On page 3 of the final rejection (Paper No. 8), the2
examiner stated that claim 28 also should be rewritten to
overcome the rejection under 35 U.S.C. § 112, but claim 28 was
not rejected on that, or any other, ground.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN T. RISSE
__________
Appeal No. 97-0040
Application 08/303,0651
__________
HEARD: February 2, 1998
__________
Before CALVERT, MEISTER and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
20, 22 to 27 and 29. Claim 21 has been cancelled, and claim 28
is indicated as allowable, if written in independent form .2
Appeal No. 97-0040
Application 08/303,065
The examiner did not list this rejection as one of the3
grounds of rejection in part (9) of the answer, but this was
evidently an inadvertent omission, in view of his statement in
the first sentence of part (11) of the answer.
2
The subject matter in issue concerns an apparatus for, and
method of, parting-off a rotating workpiece. The claims on
appeal, together with claims 21 and 28, are reproduced in the
appendix to appellant’s brief.
The references applied in the final rejection are:
Balmforth (British patent) 588,052 May 13, 1947
Armstrong (British patent) 2,139,529 Nov. 14, 1984
The claims on appeal stand finally rejected as follows:
(1) Claims 1 to 18, for failing to comply with 35 U.S.C. § 112,
second paragraph ;3
(2) Claims 1 to 8, 10 to 15, 17, 19, 20 and 29, as anticipated
by Balmforth, under 35 U.S.C. § 102(b);
(3) Claims 16 and 22 to 27, as unpatentable over Balmforth in
view of Armstrong, under 35 U.S.C. § 103.
(1) Rejection Under 35 U.S.C. § 112, Second Paragraph
The appellant does not argue this rejection in his brief,
but merely indicates his belief that the rejection would be
overcome if claims 1 and 10 were amended. The rejection will
therefore be sustained.
(2) Rejection Under 35 U.S.C. § 102(b)
Appeal No. 97-0040
Application 08/303,065
The word “forcible,” which means “effected by force” or4
“having force” (The Random House College Dictionary (1973)),
appears to be used incorrectly (twice) in this claim. Appellant
evidently intended to employ the word “forceable,” i.e., “able to
be forced,” and we will so construe “forcible” here. However,
the claim should be appropriately corrected in any subsequent
prosecution.
3
Claim 1, the first independent apparatus claim to which this
rejection applies, reads:
1. An apparatus for parting-off a rotating workpiece, said
apparatus comprising:
means for cutting the workpiece, said means for cutting
forcible against the workpiece;[4]
a rubbing pad, disposed proximately to said means for
cutting, and forcible against the workpiece; and
means for substantially neutralizing in the immediate
vicinity of said means for cutting and said rubbing pad reaction
forces upon said means for cutting and said rubbing pad.
The examiner finds this claim to be anticipated by Balmforth
in that the reference discloses a parting-off apparatus having a
cutting means 6 and rubbing pad 14a, and items 1 (tool holder), 9
(bracket head), 10 (disc) and 14 (stop bar) would constitute the
claimed means for substantially neutralizing reaction forces
(element (c) of the claim) (Paper No. 3, page 5; answer, page 4).
We do not agree.
In construing a claimed “means,” the sixth paragraph of 35
U.S.C. § 112 requires that such means “be construed to cover the
Appeal No. 97-0040
Application 08/303,065
4
corresponding structure ... described in the specification and
equivalents thereof.” In re Donaldson Co., Inc., 16 F.3d 1189,
1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994). In the present
case, considering appellant’s disclosure with respect to the
“means for substantially neutralizing” recited as element (c) of
claim 1, it is evident that the force neutralizing function
arises from the use of a cutter and rubbing pad which are fixed
to the tool body, in conjunction with the fact that the tool body
is not cantilevered to the tool post (and thereby to the
machine), but rather is pivotally mounted on the tool post and,
through the cutter and rubbing pad, rides against the workpiece.
The Balmforth patent does not disclose any such structure, nor an
equivalent thereof, since the tool body 1, and therefore the
cutter 6 and stop bar 14, are evidently attached to the body of
the machine as a cantilever, in conventional fashion. We
therefore conclude that claim 1 is not anticipated by Balmforth,
and will not sustain the rejection of claim 1, nor of claims 2
and 8 dependent thereon, under § 102(b).
The first independent method claim rejected under § 102(b)
is claim 10:
10. A method of parting-off a rotating workpiece comprising
the steps of:
Appeal No. 97-0040
Application 08/303,065
5
(a) pushing a cutting means against the workpiece, thereby
cutting the workpiece;
(b) disposing a rubbing pad proximately to the cutting
means;
(c) permitting the rubbing pad to rub against the
workpiece; and
(d) substantially neutralizing in the immediate vicinity of
the cutting means and the rubbing pad the reaction forces upon
the cutting means and the rubbing pad.
It is evident that Balmforth discloses steps (a), (b) and
(c) of claim 10. As for step (d), it appears to be of the type
governed by the sixth paragraph of § 112, i.e., a “step for
performing a specified function without the recital of ... acts
in support thereof,” and therefore “shall be construed to cover
the corresponding ... acts described in the specification and
equivalents thereof.” See O.I. Corp. v. Tekmar Co., 115 F.3d
1576, 1582-83, 42 USPQ2d 1777, 1781-82 (Fed. Cir. 1997). Such
“acts” in the instant case would correspond to providing the
structure which, as discussed above, we construed as being
covered by the “means for substantially neutralizing” recited in
claim 1. Since Balmforth does not provide such structure, it
consequently does not disclose any such acts, or any equivalents
thereof, and thus does not constitute an anticipation of claim
10.
Appeal No. 97-0040
Application 08/303,065
6
Accordingly, we will not sustain the rejection under
§ 102(b) of claim 10, nor of claims 11 to 15 and 17 dependent
thereon.
The other independent method claim rejected as anticipated
by Balmforth is claim 19:
19. A method for cutting a workpiece rotating within a
lathe, the method comprising the steps of:
(a) providing a tool body;
(b) providing a tool body support means;
(c) providing a rubbing pad upon the tool body;
(d) mounting a cutting tip upon the tool body;
(e) pressing the cutting tip against the workpiece, thereby
inducing a first reaction force upon the cutting tip;
(f) resting the rubbing pad upon the workpiece, thereby
inducing a second reaction force upon the rubbing pad; and
(g) resisting within the tool body the first reaction force
and the second reaction force, whereby transfer of the reaction
forces to the tool body support means is substantially
neutralized.
We will not sustain this rejection, or the rejection of
dependent claim 20, because Balmforth does not disclose, either
expressly or inherently, step (g) of the claimed method. While
the bar 14 and cutter 6 of Balmforth would both “resist” the
reaction forces on them, it appears that such forces would be
transmitted through the tool body 1 to the machine, rather than
Appeal No. 97-0040
Application 08/303,065
7
being resisted “within the tool body,” as claimed. Also,
transfer of these forces to the machine (“tool body support
means”) would not be “substantially neutralized” as recited in
step (g).
Claim 29, the other independent apparatus claim, is also not
anticipated by Balmforth. This claim requires, inter alia, “said
[tool] body ... being progressively insertable into the kerf,”
and there is no disclosure or indication in Balmforth that tool
body 1 could be inserted into the kerf cut by tool 6. The
rejection of claim 29 will not be sustained.
(3) Rejection Under 35 U.S.C. § 103
Claim 16 is dependent from claim 14, claim 22 depends from
claim 19, and claims 23 to 27 depend from claim 22. We have not
sustained the rejection of claims 14 and 19 under § 102(b) as
anticipated by Balmforth for the reasons discussed above, and do
not consider that Armstrong supplies the deficiencies noted with
regard to Balmforth. The rejection of claims 16 and 22 to 27
under § 103 therefore will not be sustained.
Conclusion
The examiner’s decision to reject claims 1 to 18 under 35
U.S.C. § 112, second paragraph, is affirmed, to reject claims 1
Appeal No. 97-0040
Application 08/303,065
8
to 8, 10 to 15, 17, 19, 20 and 29 under 35 U.S.C. § 102(b) is
reversed, and to reject claims 16 and 22 to 27 under 35 U.S.C.
§ 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 97-0040
Application 08/303,065
9
Rod D. Baker
Montgomery & Andrews
P.O. Box 26927
Albuquerque, NM 87125-6927