Ex parte WARTHEN et al.

Board of Patent Appeals and Interferences

Sep 22, 1998

08371934 (B.P.A.I. Sep. 22, 1998)

Application for patent filed January 12, 1995. According to1
appellants, this application is a divisional of application 08/110,055, filed
August 30, 1993.
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM P. WARTHEN and JOHN B. MANLY, JR.
_____________
Appeal No. 97-4048
Application 08/371,9341
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 18, 19 and 20, and from the examiner’s
refusal to allow claims 21 and 22 as amended subsequent to the
Appeal No. 97-4048
Application 08/371,934
2
final rejection in a paper filed April 19, 1996 (Paper No. 8).
Claims 1 through 17 and 23 have been canceled. Claims 24
through 26, the only other claims remaining in the
application, stand allowed.
The subject matter on appeal is directed to a method for
cutting a piled fabric such as carpet or carpet tiles.
Independent claims 18 and 19 are representative of the subject
matter on appeal and a copy of those claims may be found in
the Appendix to appellants’ brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Rummer 4,041,818 Aug. 16, 1997
MacDonald 5,209,148 May 11,
1993
Claim 18 stands rejected under 35 U.S.C. § 102(e) as
being anticipated by MacDonald.
Claim 19, 21 and 22 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Rummer.
Appeal No. 97-4048
Application 08/371,934
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Claim 20 stands rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103
as obvious over Rummer.
The full text of the examiner's rejections and response
to the arguments presented by appellants appears in the
examiner’s answer (Paper No. 14, mailed January 7, 1997).
Rather than reiterate each of the points of argument
advocated by appellants, we make reference to the appeal brief
(Paper No. 13, filed October 29, 1996) for a complete
statement of appellants’ position.
OPINION
As a preliminary matter, we note that on page 3 of the
brief appellants have indicated that “[c]laim 18 stands or
falls separately from claims 19-22 which stand or fall
together.” Accordingly, in our discussions below we consider
that claims 20 through 22 will stand or fall with claim 19,
Appeal No. 97-4048
Application 08/371,934
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and thus limit our comments regarding the appealed rejections
to independent claims 18 and 19.
In reaching our decision on the issues raised in this
appeal, we have carefully considered appellants’ specification
and claims, the applied references, and the respective
viewpoints expressed by appellants and the examiner. As a
consequence of our review, we have made the determination that
the examiner’s rejections of the claims on appeal will be
sustained. Our reasoning follows.
Like the examiner, we consider that claim 18 on appeal is
readable on the carpet cutting method disclosed in MacDonald.
As explained on pages 5 and 6 of the answer, the cutting of
the carpet in MacDonald includes the steps of a) bending the
pile elements of the carpet piece (24) downward toward the
base portion of the carpet along a line to be cut (i.e., via
movement of the portion of arm 14 and extension member 32
thereof located immediately in front of cutting blade 20' in
the direction of movement of the cutting blade 20' along the
Appeal No. 97-4048
Application 08/371,934
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line to be cut), and b) cutting through the pile elements bent
in step a) and the underlying base portion in a direction
generally normal to said base portion along said line to be
cut, thereby partially shearing the pile elements bent
downward in step a) along said
line to be cut such that a two-sided cut is formed wherein the
pile elements adjacent to one side of the cut remain substan-
tially unsheared. As has been noted by the examiner (answer,
page 6), claim 18 does not necessarily require that the pile
elements remain bent during the cutting step, but only that
the pile elements which are cut in step b) are those which
were bent in step a), which pile elements may now remain
partially bent or have returned to their upright position.
Appellants’ assertion (brief, page 4) that the disclosure
of MacDonald (col. 6, lines 16-19) concerning the size of the
cutting blade would preclude the blade 20' from performing the
partial shearing feature recited in claim 18, is unpersuasive.
MacDonald merely indicates that the blades (20, 20') do not
Appeal No. 97-4048
Application 08/371,934
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“appreciably extend into the carpet pile,” not that they do
not extend into the carpet pile at all. Given that the blade
20' can extend into the carpet pile to some extent, we must
agree with the examiner (answer, page 7) that the blade (20')
moving along the line to be cut will inevitably cut some of
the pile elements which were bent by the immediately preceding
portion of the extension element (32) in MacDonald. In
contrast to appellants’
position that MacDonald fails to disclose in any manner the
formation of a two-sided cut wherein the pile elements
adjacent to one side of the two-sided cut remain substantially
unsheared (brief, page 4), we note that there will clearly be
pile elements “adjacent” to one side of the two-sided cut seen
in Figure 1 of
MacDonald, and in fact, “adjacent” to both sides of the cut,
which remain substantially unsheared. As an example, we note
that in appellants’ own Figure 5 there are clearly shown pile
elements “adjacent” cut edge (69), as well as pile elements
“adjacent” cut edge (67), which are substantially unsheared,
Appeal No. 97-4048
Application 08/371,934
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and that similar substantially unsheared pile elements would
also be “adjacent” the two sides of the cut in MacDonald.
Thus, having considered appellants’ arguments and having
given claim 18 its broadest reasonable interpretation
consistent with appellants' specification, we conclude that
the subject matter of claim 18 on appeal is anticipated by
MacDonald. Accordingly, the examiner’s rejection of claim 18
under 35 U.S.C. § 102(e) as being anticipated by MacDonald is
sustained.
We next review the examiner’s rejection of claim 19 as
being anticipated by Rummer. Rummer discloses a system and
method
(e.g., col. 5, lines 1-24) for cutting a carpet web into
sample pieces, with each of the sample pieces having chamfered
edges so as to avoid unraveling of the nap (col. 1, lines 16-
19). For the reasons advanced by the examiner on pages 8 and
9 of the answer,
we are in agreement that claim 19 on appeal is readable on the
chamfer cutting stroke in Rummer. Accordingly, we incorporate
Appeal No. 97-4048
Application 08/371,934
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the examiner’s reasoning on pages 8 and 9 of the answer as our
own and sustain the rejection of claim 19 under 35 U.S.C.
§ 102(b) based on Rummer.
Appellants’ argument on pages 4 and 5 of their brief
appears to misapprehend the examiner’s position regarding the
reading of claim 19 on Rummer. In this regard, we note that
it is only the chamfer cutting stroke of Rummer which the
examiner relies upon to meet the steps of appellants’ claim
19, and not the later movement of the cutting blade therein
from the angled to the vertical position, as appellants seem
to believe.
With respect to the above-noted rejections, we observe
that the law of anticipation does not require that the
reference specifically teach what the appellants have
disclosed and are
claiming but only that the claims on appeal "read on"
something disclosed in the reference, i.e., all limitations of
the claim or claims are found in the reference. See Kalman
Appeal No. 97-4048
Application 08/371,934
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v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed. Cir.
1983). As explained supra, in the present case, all the
limitations of appellants’ claims 18 and 19 are found
respectively in MacDonald and Rummer, and thus claims 18 and
19 are clearly anticipated thereby.
Based on the foregoing, it is clear that appellants’
arguments for patentability have not been persuasive of error
on the examiner’s part. Accordingly, the examiner's rejection
of claim 18 under 35 U.S.C. § 102(e) based on MacDonald is
sustained, as is the examiner’s rejection of claim 19 under 35
U.S.C. § 102(b) based on Rummer. Given the grouping of claims
herein, pursuant to 37 CFR § 1.192(c)(7), and as noted above,
claims 20 through 22 are considered to fall with claim 19. It
also follows from the above determinations that the examiner’s
alternative rejection of claim 20 under 35 U.S.C. § 103 based
on Rummer is likewise sustained.
Accordingly, the decision of the examiner is affirmed.
Appeal No. 97-4048
Application 08/371,934
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
vsh
Appeal No. 97-4048
Application 08/371,934
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Terry T. Moyer
P.O. Box 1927
Spartanburg, SC 29304