Ex Parte Rysavy

Patent Trial and Appeal BoardOct 25, 2012

11745555 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAROMIR RYSAVY ____________________ Appeal 2010-011267 Application 11/745,555 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011267 Application 11/745,555 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 17 and 19-21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a cutting insert and cutting tool. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cutting insert comprising an insert body having a clamping hole including a clamping surface defining at least part of a non-circular, substantially elliptical cone and having two clamp contact points defining outer edges of at least one area of contact between the damping surface and a clamp, the insert comprising a top surface, a bottom surface, and a plurality of edge surfaces comprising insert supporting surfaces between the top surface and the bottom surface, wherein the outer edges of the at least one area of contact are arranged relative to at least two non-parallel insert supporting surfaces of the insert supporting surfaces so that components of a force applied to at least the two damp contact points of the at least one area of contact are adapted to be transmitted simultaneously to the two non-parallel insert supporting surfaces of the insert supporting surfaces. REJECTION Claims 1-17 and 19-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gräfe (US 4,283,163 iss. Aug. 11, 1981) and Weller (US 3,341,921 iss. Sep. 19, 1967). Ans. 3. Appeal 2010-011267 Application 11/745,555 3 OPINION The original position taken by the Examiner regarding the “clamping hole including a clamping surface defining at least part of a non-circular, substantially elliptical cone” of independent claims 1 and 10 was, “[i]t is old and well known in the art of geometry that a circle is a form of an ellipse.” Final Rej. 11. However, perhaps because this interpretation is precluded by the express language of the claim, “non-circular,” and the express definition in Appellant’s Specification as “excluding shapes that are circular, even though, technically, a circle is a form of ellipse” (Spec. 5), the Examiner appears to have abandoned this position. Nevertheless, in the statement of rejection the Examiner contends Gräfe teaches a substantially elliptical cone (Ans. 3); for example, in response to Appellant’s arguments the Examiner contends that Grafe teaches a clamping surface having a curvature. It is old and well known in the art of geometry for curvatures to define a path (which may lead to a desired shape). According to Britannica Encyclopedia, the term curvature is defined as, the rate of change of direction of a curve with respect to distance along the curve. Therefore, the clamping hole and the claming [sic] surface are defined by curvature capable of being non- circular and substantially elliptical. Ans. 11. Like Appellant, we have difficulty understanding the Examiner’s position. Reply Br. 1-2. The rejection is based upon 35 U.S.C. § 103(a), and the Examiner, in the Answer, appears to recognize that there are differences between the prior art and the claimed subject matter. But, the Examiner does not offer reasoning as to why the claimed subject matter as a whole would have been obvious in light of those differences. See KSR Int’l. v. Teleflex, Appeal 2010-011267 Application 11/745,555 4 550 U.S. 398 (reaffirming the framework of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)). The meaning of “curvature capable of being non-circular and substantially elliptical” is unclear. As best we can tell, the Examiner’s position appears to be that since Gräfe discloses a hole defining a circular cone, and circles are curved, that in light this disclosure, cones of all other curvatures, such as ellipses, would have been obvious. This is not a case where the disclosure of a fairly small genus can be said to disclose each species therewithin. The particular geometries of the clamping holes in the prior art and the claimed subject matter are selected to ensure the ability to maintain precise tolerances. See e.g., Weller col. 2, l. 2. And, there are a wide variety of geometries one could choose or conceive of. The Examiner has not articulated reasoning with rationale underpinnings as to why the specific structure claimed by Appellant would have been obvious in light of Gräfe’s hole simply because they share a common feature: curvature. Accordingly, the Examiner’s rejection cannot be sustained. DECISION The Examiner’s rejection of claims 1-17 and 19-21 is reversed. REVERSED Klh