Ex Parte Virtanen

Board of Patent Appeals and Interferences

Sep 21, 2010

10534365 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEFAN VIRTANEN
____________

Appeal 2009-013359
Application 10/534,365
Technology Center 3600
____________

Before LINDA E. HORNER, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, 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 in the PTOL-90A cover letter attached to this decision.

Appeal 2009-013359
Application 10/534,365

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STATEMENT OF THE CASE
Stefan Virtanen (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1 and 3-7. Appellant cancelled
claim 2. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a reamer assembly including a shank
and a conical drill bit.
Claim 1, reproduced below with emphasis added, is representative of
the subject matter on appeal.
1. A reamer assembly (11) for widening a
drilled pilot hole or for widening a hole that has
been widened in a first step in a down-the-hole
drilling operation, wherein the reamer assembly
includes a shank (14) for attachment of the reamer
[assembly] to the end of a down-the-hole hammer
drill and a conical drill bit or crown (15),
characterised in that the conical bit (15) of the
reamer [assembly] is divided into at least three
conical segments (18) which are terminated with a
transverse end surface (21) which directly connects
said conical segments, and in that at least three of
said segments (18) include drill buttons (16) of
which at least one drill button (16) in each of said
at least three segments (18) is disposed at the same
distance from the cent[er] axis of the drill bit as the
at least one drill button (16) in each of the others
of said at least three conical segments (18), each of
said conical segments (18) having plural drill
buttons (16) disposed at different distances from
the center axis of the drill bit.

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Application 10/534,365

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The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 3-5, and 7 are rejected under 35 U.S.C. § 102(e) as
anticipated by Brandenberg (U.S. Patent No. 6,799,648 B2, issued Oct. 5,
2004).2 Ans. 3.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Brandenberg. Ans. 4.

SUMMARY OF DECISION
We REVERSE.

OPINION
Issue
The determinative issue in this appeal is:
Did the Examiner err in finding that Brandenberg discloses that each
of the conical segments has plural drill buttons disposed at different
distances from the center axis of the drill bit because the Examiner
interpreted both the conical surface 22 and the flat surface 24 to constitute
the conical segment?
Analysis
Appellant contends that Brandenberg discloses buttons 30 on conical
surfaces 22 (i.e., entitled “tapered section” in Brandenberg) and these
buttons 30 are all at the same distance from the axis of rotation of the drill

2 The rejection has been reworded from the way it appears in the Examiner’s
Answer to delete claim 2 from the claim listing since claim 2 was cancelled
by Appellant.
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Application 10/534,365

4
bit. App. Br. 3. Appellant also contends that Brandenberg does not have
any buttons on the conical surfaces 22 which are disposed at different
distances from the axis of rotation of the drill bit in order to meet the claim
language of “each of said conical segments (18) having plural drill buttons
(16) disposed at different distances from the center axis of the drill bit.” Id.
and App. Br. Claims App’x. In other words, Appellant contends that all of
the buttons 30 on the conical segments or tapered sections 22 of
Brandenberg are at the same distance from the center axis of the drill bit
because drill buttons 30 on the transverse end surface 24 (i.e., entitled
“grinding face” in Brandenberg) do not satisfy the claim language that the
drill buttons on the conical segments are disposed at different distances from
the center axis of the drill bit as recited in claim 1. Reply Br. 2.
The Examiner’s position is that Brandenberg discloses all of the
limitations of claim 1. Ans. 3-4. More particularly, the Examiner posits that
Brandenberg discloses “[e]ach of the conical segments (18) having plural
drill buttons (one on the flat portion and one on the angled portion, for a
total of 2) disposed at different distances from the center axis of the drill
bit.” Ans. 3-4. In responding to Appellant, the Examiner argues that “[t]he
conical segment includes both the conical surface 22 and the flat portion 24
attached to it” and “it is the ‘conical segment’ which must have a plurality
(read as 2) of bits at different distances from the center axis of the bit.” Ans.
5.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros, Inc.. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). The first step in an anticipation analysis is a proper
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construction of the claims, and the second step is to compare the properly-
construed claim to the prior art. See Medichem, S.A. v. Rolabo, S.L., 353
F.3d 928, 933 (Fed. Cir. 2003). The scope of claims in patent applications is
determined by giving claims “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In performing the first step of an anticipation analysis by construing
the claim terminology of “conical segment”, we look to whether Appellant’s
Specification defines the term. Here, Appellant’s Specification clearly states
that “the conical surface of the drill bit 15 of the reamer 11 is divided into a
plurality of segments 18 each containing a plurality of drill buttons 16.”
Spec. 3:27-29. One of ordinary skill in the art would interpret this passage
from the Specification in combination with the disclosure of Appellant’s
Figures 3-5 to mean that a conical segment 18 constitutes a portion of the
conical surface between the edge 20 of the drill bit 15 and the transverse end
surface 21 of the drill bit 15, but would not interpret the transverse end
surface 21 to constitute a part of the conical segment 18.
Thus, one of ordinary skill in the art would not consider the
Examiner’s interpretation that a “conical segment” of Brandenberg includes
both the conical surface or tapered section 22 and the flat surface or grinding
face 24 to be a reasonable interpretation. See Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991)
(anticipation requires “no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention”) (emphasis added). As such, when performing the second
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step of the anticipation analysis by comparing the properly-construed claim
to the prior art, one of ordinary skill in the art would view only one of the
tapered sections 22 of Brandenberg as constituting a conical segment, but
would not consider the flat surface or grinding face 24 of Brandenberg as
constituting a part of the conical segment.
The rejection of claim 6 on obviousness grounds in view of
Brandenberg is based upon the same erroneous interpretation of the
Brandenberg disclosure.

CONCLUSION
The Examiner erred in finding that Brandenberg discloses each of the
conical segments having plural drill buttons disposed at different distances
from the center axis of the drill bit.

DECISION
The Examiner’s decision to reject claims 1, 3-5, and 7 under 35
U.S.C. § 102(e) as anticipated by Brandenberg and claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Brandenberg is reversed.

REVERSED

mls

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