Ex Parte Szymanski

Patent Trial and Appeal Board

Mar 4, 2014

10780323 (P.T.A.B. Mar. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/780,323 02/17/2004 David Szymanski INDI 200002US01 1107
27885 7590 03/05/2014
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
DEXTER, CLARK F
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
03/05/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID SZYMANSKI
____________

Appeal 2012-003458
Application 10/780,323
Technology Center 3700
____________

Before PATRICK R. SCANLON, BART A. GERSTENBLITH, and
BEVERLY M. BUNTING, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/780,323

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STATEMENT OF THE CASE
David Szymanski (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-3, 5-10, 12-16, 18-20, 23, and 24.
We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1, 15, 18, and 19 are the independent claims on appeal. Claim
1 is illustrative of the claimed subject matter and is reproduced below.
1. A quick change cutting link for a saw chain for cutting
wood, comprising:
a base member, having a lead end and a rear end, adapted
to be pivotally connected to an associated connecting link at
each end forming said saw chain, said base member comprising
a seat surface having a first taper and a lower surface having a
second taper; and
a cutting member that comprises a cutting edge and
releasably engages said base member, said cutting member
including an upper surface having a third taper and an under
surface having a fourth taper, said upper surface having the
third taper constructed from sintered and compacted particles of
abrasion resistant material, wherein said first taper and said
third taper extend at an angle ranging from about 0.5° to about
45° relative to a direction of intended chain travel and said
second taper and said fourth taper extend at an angle of about
0.5° to about 45° relative to a direction opposite of intended
chain travel, wherein each pair of tapers is at a close tolerance
effective to cause self-locking engagement of said first taper of
said seat surface and said third taper of said cutting member
surface and of said second taper of said lower surface and said
fourth taper of said cutting member surface.
App. Br. 16, Claims App’x.
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References
The Examiner relies upon the following prior art references:
Ackley US 2,725,083 Nov. 29, 1955
Abbott US 2,873,775 Feb. 17, 1959
Dawson US 3,023,490 Mar. 6, 1962
Oehrli US 3,144,059 Aug. 11, 1964
Ehlen US 3,308,859 Mar. 14, 1967
Raetz US 3,547,167 Dec. 15, 1970
Funakubo US 3,800,633 Apr. 2, 1974
Wright US 4,744,278 May 17, 1988
Gaddis US 4,750,396 Jun. 14, 1988
Carlton US 4,901,613 Feb. 20, 1990
The Examiner also relies upon a process specification sheet from
Hawk Precision Components – Copper Infiltration (“Hawk”), © 2002,
identified by the Examiner as located at
www.netshapetech.comIGIGO61FO6_O3085_Copper.pdf. See Office
Comm., Paper No. 013-A (mailed Oct. 28, 2011) (attaching Notice of
References Cited).
Rejections
Appellant seeks review of the following rejections:1
I. Claims 1, 15, 16, 18-20, 23, and 24 are rejected under 35
U.S.C. § 112, second paragraph, as indefinite;
II. Claims 1-3, 6-9, 12-16, 18-20, 23, and 24 are rejected under 35
U.S.C. § 103(a) as unpatentable over Raetz and Funakubo or, in
the alternative, over Raetz, Funakubo, and Wright;

1 The Examiner withdrew a rejection of claims 1, 15, 18, and 19 under 35
U.S.C. § 112, second paragraph, directed to the phrase “at each end” and
rejections based on Wright as the “primary/base reference.” Ans. 4.
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III. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Raetz and Funakubo or, in the alternative, over Raetz,
Funakubo, and Wright, and either alternative with any one of
Ackley, Abbott, Oehrli, Ehlen, or Carlton;
IV. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Raetz and Funakubo or, in the alternative, over Raetz,
Funakubo, and Wright, and either alternative with either one of
Dawson or Gaddis; and
V. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Raetz and Funakubo or, in the alternative, over Raetz,
Funakubo, and Wright, and either alternative with Hawk.2
SUMMARY OF DECISION
We AFFIRM-IN-PART.
We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 2, 3, 5-10, and 12-14
under 35 U.S.C. § 112, second paragraph, as indefinite.
OPINION
Rejection I
The Examiner concluded that claims 1, 15, 16, 18-20, 23, and 24 were
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention. Ans. 6-8.

2 The Examiner added this rejection as a new ground of rejection in the
Examiner’s Answer. Ans. 17.
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Relative to a Direction of Intended Chain Travel
The Examiner concluded that the claim phrase “relative to a direction
of intended chain travel,” as recited in claims 1 and 19, is indefinite because
“the structure of the link is being positively defined in terms of the chain and
an intended use thereof which is not set forth as part of the claimed
invention.” Ans. 6 (referring to claim 1); 7-8 (referring to claim 19).
Appellant asserts that “the saw chain is clearly set forth as part of the
claimed invention and it is entirely proper to define the link in terms of the
chain.” App. Br. 9. Appellant further contends that “it is common
knowledge that a saw chain travels in one direction around a guide bar, and
is configured such that the chain must travel in this direction in order to
properly cut wood.” Id.
The difficultly presented with the claim phrase chosen by Appellant is
understanding how one of ordinary skill in the art would interpret the term
“intended” in the context of the phrase “relative to a direction of intended
chain travel.” “[I]ntended” connotes the possibility of subjective intent. For
example, were the term construed to refer to the manufacturer’s intent, one
might consider the direction of intended chain travel as the direction by
which the chain travels in order to cut wood. If, however, the term were
construed to refer to the user’s intent, there is no effective limitation on the
direction of chain travel because a user’s intent can be whatever the user
chooses and is not limited to the direction for cutting wood.
Further indicative of the difficulty encountered in construing this
phrase is the lack of use of the phrase in Appellant’s Specification. While
the Specification refers to “a direction of chain travel” (see, e.g., Spec.,
para. [0008]; fig. 4 (reference number 28)), the Specification does not refer
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to “a direction of intended chain travel” (see generally id.). Thus, we
conclude that the phrase “a direction of intended chain travel” is not
particularly pointed out and distinctly claimed because it depends upon
undefined subjective intent.
Accordingly, we sustain Rejection I as applied to this claim phrase.
Relative to a Direction Opposite of Intended Chain Travel
The Examiner concluded that the claim phrase “relative to a direction
opposite of intended chain travel,” as recited in claims 1, 15, and 19, is
indefinite for the same reasons noted with respect to the discussion of the
previous phrase. Ans. 6 (referring to claims 1 and 15); 8 (referring to claim
19).
This claim phrase also includes the term “intended,” and thus suffers
from the same deficiency we explained in the context of considering the
previous claim phrase. Thus, for the reasons we explained above, the phrase
“relative to a direction opposite of intended chain travel” is not particularly
pointed out and distinctly claimed because it depends upon undefined
subjective intent.
Accordingly, we sustain Rejection I as applied to this claim phrase.
Relative to a Direction of Intended Travel of the Base Member when
Fastened on the Chain &
Relative to a Direction Opposite of Intended Travel of the Base Member
The Examiner concluded that the claim phrases “relative to a direction
of intended travel of the base member fastened on the chain” and “relative to
a direction opposite of intended travel of the base member,” as recited in
claim 18, are indefinite for the same reasons noted with respect to the
previous claim phrases. Ans. 7.
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These claim phrases also include the term “intended,” and thus suffer
from the same deficiency we explained in the context of considering the
phrases above. Thus, for the reasons we explained above, the phrases
“relative to a direction of intended travel of the base member when fastened
on the chain” and “relative to a direction opposite of intended travel of the
base member” are not particularly pointed out and distinctly claimed
because they depend upon undefined subjective intent.
Accordingly, we sustain Rejection I as applied to these claim phrases.
A Chain
The Examiner concluded that the phrase “a chain,” as recited in claim
16, is indefinite “as to whether it refers to that previously set forth (e.g., in
claim 15) or to another such chain.” Ans. 7.
Appellant explains that, in an amendment filed after the Examiner’s
final rejection, he attempted to amend the phrase to recite “the chain,” but
that the Examiner refused to enter the amendment. App. Br. 10. Appellant
requests that this rejection “be held in abeyance pending outcome of the
appeal.” Id.
In light of our determination with respect to the claim phrases
discussed herein, we see no reason to hold this rejection in abeyance, even
assuming we may be able to do so. For the reasons explained by the
Examiner, we agree that this phrase is indefinite, and therefore sustain
Rejection I as applied to this phrase.
An Associated Cutting Member
The Examiner concluded that the phrase “an associated cutting
member,” as recited in claim 18, is indefinite “as to whether it refers to that
previously set forth or to another such cutting member.” Ans. 7.
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As with the phrase “a chain,” Appellant explains that he sought to
amend the claim to recite “the associated cutting member” “to clarify to
which cutting member claim 18 refers.” App. Br. 10. Again, the Examiner
did not enter the amendment.
For the reasons explained by the Examiner, we agree that the phrase
“an associated cutting member” is indefinite, and therefore sustain Rejection
I as applied to this phrase.3
Relative to a Direction of Travel of Said Cutting Member
The Examiner concluded that the phrase “relative to a direction of
travel of said cutting member,” as recited in claim 16, is indefinite “since the
structure of the link is being positively defined in terms of the chain and an
intended use thereof which is not set forth as part of the claimed invention.”
Ans. 7.
We disagree. Claim 16 depends from claim 15, and claim 15 is
directed to a quick change cutting link comprising “a base member” and a
“cutting member.” App. Br. 18, Claims App’x. The phrase identified by the

3 Claim 18 as reflected in the Claims Appendix appears incorrect. In an
Amendment filed June 23, 2010, Appellant amended claim 18, inter alia, to
include two recitations of the phrase “an associated cutting member.” See
Amend. (filed June 23, 2010) at 5 (emphasis added). Appellant filed another
amendment on December 10, 2010, but in the Listing of Claims section, the
first recitation of the phrase states “the associated cutting member” while the
second recitation remains “an associated cutting member” although there is
no indication that Appellant amended the first recitation as part of this
Amendment. See Amend. (filed Dec. 10, 2010) at 4 (emphases added).
Further, while we do not see any later amendment in the record amending
the first recitation from “an” to “the,” the version of claim 18 in the Claims
Appendix includes “the” for the first recitation of this phrase and “an” for
the second. Accordingly, it appears that a correct version of this claim
would recite this phrase as “an associated cutting member” in both instances.
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Examiner defines the structure of the link in terms of the direction of travel
of the cutting member, not the chain.
Accordingly, we do not sustain Rejection I as applied to this phrase.
Comprising No More than 0.5° to the Mating Taper of Said Associated
Cutting Member
The Examiner concluded that the phrase “comprising no more than
0.5° to the mating taper of said associated cutting member,” as recited in
claim 18, is indefinite “since the base member is being positively defined in
terms of the cutting member which is not part of the claimed invention (i.e.,
a base member).” Ans. 7.
Claim 18 is directed to a “base member of a cutting link for a saw
chain for cutting wood.” Claim 18 does not positively recite a cutting
member as part of the base member. Further, the Specification makes clear
that the cutting member and base member are distinct structures.
Accordingly, we agree with the Examiner’s conclusion that attempting to
define the base member in terms of an unclaimed, undefined cutting member
renders the phrase indefinite as one of ordinary skill in the art would not be
able to determine the meets and bounds of the phrase. Thus, we sustain
Rejection I as applied to this phrase.
Rejections II – V
Because we sustain the Examiner’s indefiniteness rejection of each
independent claim, the prior art rejections must fall, pro forma, because they
necessarily are based on speculative assumptions as to the scope of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
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New Ground of Rejection
The Examiner’s indefiniteness rejection, as sustained herein, affects
each of the four independent claims on appeal (claims 1, 15, 18, and 19).
Ans. 6-8. Thus, dependent claims 2, 3, 5-10, and 12-14 suffer from the same
deficiencies as claim 1 from which they depend.
Accordingly, we enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 2, 3, 5-10, and 12-14
under 35 U.S.C. § 112, second paragraph, as indefinite for the reasons we
found persuasive as noted above with respect to claim 1.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 15, 16,
18-20, 23, and 24 under 35 U.S.C. § 112, second paragraph.
We REVERSE, pro forma, the Examiner’s decision rejecting claims
1-3, 5-10, 12-16, 18-20, 23, and 24 under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION against claims 2, 3,
5-10, and 12-14 as indefinite under 35 U.S.C. § 112, second paragraph.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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