Ex Parte Flynn et al

Patent Trial and Appeal Board

Dec 11, 2012

10245193 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CLIFFORD M. FLYNN and PAUL ST. LOUIS
________________

Appeal 2010-003995
Application 10/245,193
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, JOHN W. MORRISON and
NEIL T. POWELL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-6 and 8. The Examiner rejects claims 1-4, 63

1 The Appellants are the real parties in interest.

Appeal No. 2010-003995
Application No. 10/245,193

2
and 8 under 35 U.S.C. § 1022 as being anticipated by Flynn (US 6,435,780, 1
issued Aug. 20, 2002); and claim 5 under 35 U.S.C. § 103(a) as being 2
unpatentable over Flynn, either alone or in view of Gibbs (US 3,990,451, 3
issued Nov. 9, 1976). Claim 7 is cancelled. We have jurisdiction under 35 4
U.S.C. § 6(b). 5
We REVERSE. 6
The claims on appeal relate to a rotary cutting tool for use in machines 7
performing plunging, ramping or drilling operations. (Spec. 1, ll. 6-8 and 8
Spec. 6, ll. 3-6). Claim 1 is the sole independent claim: 9
1. A cutting tool, comprising: 10
a cylindrical body having an outer surface 11
and a longitudinal center and terminating in a 12
cutting end with a plurality of cutting edges, each 13
edge initiating at the outer surface and extending 14
radially inwardly to the same point at or near the 15
center; and 16
wherein each edge begins with a first dish 17
angle and transitions to a second dish angle which 18
is greater than the first dish angle to increase the 19
clearance around the center of the tool. 20
Flynn describes a tool including a cutting portion tip end 18 having 21
cutting edges 20, 22, 24. (Flynn, col. 2, ll. 41-46 and fig. 1). Each cutting 22
edge 20, 22, 24 comprises a peripheral edge portion 70 and an inner edge 23

2 Although the Examiner identifies the statutory basis for the rejection
as 35 U.S.C. § 102(b) (see Ans. 3), Flynn does not appear to have been
issued more than one year prior to the effective filing date of the application.
Nevertheless, the Appellants appear to have waived any argument that Flynn
is not prior art under 35 U.S.C. § 102. See 37 C.F.R. § 41.37(c)(1)(vii)
(2007). Since Flynn presumably is prior art under 35 U.S.C. § 102(e)(2), the
appeal will proceed on the latter statutory basis.

Appeal No. 2010-003995
Application No. 10/245,193

3
portion 72. (Flynn, col. 3, ll. 7-11 and fig. 3). The Examiner finds that the 1
cutting edges 20, 22, 24 extend “radially inwardly to the same point at or 2
near the” longitudinal center of the tool. (Ans.3 3, ll. 9-11 and 4, ll. 12-13). 3
The Appellants disagree. (See, e.g., Reply Br. 1).4 4
The Examiner finds that the cutting edges 20, 22, 24 extend “radially 5
inwardly to the same point at or near the” longitudinal center of the tool 6
based on column 3, lines 3-24 of Flynn along with Figures 2 and 3 of Flynn. 7
(See Ans. 3, ll. 9-11 and 4, ll. 12-13). Column 3, lines 11-13 of Flynn state 8
that “[p]eripheral end edge portion 70 slopes relatively shallowly toward 9
shank portion 14 from the tool periphery to interior edge portion 72.” 10
Column 3, lines 16-18 of Flynn state that “[i]nterior edge portion 72 slopes 11
relatively steeply toward shank portion 14 from end edge portion 70 to 12
intersection with gash [40].” Thus, column 3, lines 3-24 does not expressly 13
or inherently describe the cutting edges 20, 22, 24 as extending radially 14
inwardly to the same point. 15
Furthermore, Figures 2 and 3 of Flynn do not clearly depict the 16
cutting edges 20, 22, 24 as extending radially inwardly to the same point. In 17

3 Unless otherwise noted, the abbreviation “Ans.” will refer to the
Substitute Examiner’s Answer mailed January 3, 2011.

4 On page 4 of the Final Office Action mailed November 16, 2006 (the
“Final Rejection”), the Examiner concluded that the limitation by which
each cutting edge 20, 22, 24 “extend[s] radially inwardly to the same point”
constitutes “language orientating the cutting edges relative to each other and
no language stating that the cutting edges intersect.” The Examiner did not
repeat this claim interpretation in the Answer but instead found that “in
figures 2 and 3 that the cutting edges originate at the outer surface [and]
extend inwardly to the same point at the center (CL).” (Ans. 3). In doing
so, the Examiner appears to have withdrawn the claim interpretation stated
in the Final Rejection.
App
App

parti6
the c7
dista8
estab9
20, 210
17
of in18
unde19
Gibb20
form21
how 22
havin23
near 24
the s25
susta26
Flyn27
18
19
20
21
22
Klh 23

5
colum
Flyn
gash
56).
cutti
eal No. 20
lication No
cular, Figu
utting edg
nce from t
lished by
2, 24 exte
Since Fl
dependent
r § 102 as
s as disclo
ing a cutti
this disclo
g cutting
the center
ubject mat
in the reje
n, either a

We REV

Althoug
n 3, line
n uses the
es interspa
Flynn use
ng edge 20
10-003995
. 10/245,1
re 3 appea
e 20 inters
he longitu
a prepond
nd “radiall
ynn does n
claim 1, w
being anti
sing “that
ng edge (2
sure migh
edges “ex
.” Neither
ter of claim
ction of cl
lone or in v
ERSE the

h the text o
18, the ide
reference
ced with t
s the refer
. (See Fly

93
rs consist
ecting the
dinal cente
erance of t
y inwardly
ot describ
e do not s
cipated by
it is well k
8, 30).” (
t remedy F
tending rad
does the E
5 might
aim 5 und
iew of Gi
DE
Examiner
RE

f Flynn id
ntification
numerals 4
he cutting
ence nume
nn, col. 2,
4
ent with th
gash 405 a
r . In s
he evidenc
to the sam
e a cutting
ustain the
Flynn. F
nown in t
Ans. 3). T
lynn’s fai
ially inwa
xaminer a
have been
er § 103(a
bbs.
CISION
’s decision
VERSED
entifies th
appears t
0, 42, 44
edges 22,
ral 46 to i
l. 63 – co
e interior
nd termin
hort, the E
e that Fly
e point a
tool inclu
rejection
urthermore
he art to h
he Examin
lure to des
rdly to the
rticulate a
obvious.
) as being
rejecting
is feature
o be a typo
to identify
24, 26. (F
dentify a l
l. 3, l. 2 an
edge porti
ating at a s
xaminer h
nn’s cuttin
t or near th
ding every
of claims 1
, the Exam
ave a cont
er does n
cribe a cu
same poi
ny other r
Therefore
unpatentab
claims 1-
as “gash 4
graphical
the chann
lynn, col.
and adjoin
d col. 3, ll
on 72 of
ignificant
as not
g edges
e center.”
limitation
-4, 6 and
iner cites
inuous arc
ot explain
tting tool
nt at or
eason why
, we do no
le over
6 and 8.
6” at
error.
els or
2, ll. 55-
ing the
. 20-23).

8

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