Opinion

Application of George E. Myers

  • 410 F.2d 420
  • 56 C.C.P.A. 1129
Court
Court of Customs and Patent Appeals
Filed
May 22, 1969
Status
Published
Author
Worley
On the bench
Almond, Baldwin, Neese, Rich, Smith, Worley
Cited by
9 cases
Authority
More cited than 24.8%

The opinion

WORLEY, Chief Judge,

dissenting, with whom ALMOND, Judge, joins.

It seems to me that the majority, in reversing the board’s rejection under § 103, has attributed to the board a line of reasoning that it did not really pursue. The majority states:

* * * None of the references teaches a hard metal carbide cutting rim and thus none of the references can teach or suggest the expedient of joining a hard metal carbide rim, as that term is used in the prior art and is understood by those skilled in the art, to a sleeve or shaft by means of an epoxy resin and powdered metal supporting member. Combining the references as done by the examiner and sustained by the board will result in an abrasive or grinding wheel but will not result in appellant’s invention, namely, “a rotary slitter knife for slitting metal strip and sheet. * * *

I do not think the board intended to imply that it was limiting its consideration solely to what was taught merely to the abrading art by a consideration of the various teachings of the references, or that it was relying on that combination alone to render obvious appellant’s slitter knife.

It is well settled that we must consider the state of the prior art not only as shown in the references employed, but also as reflected in appellant’s specification. In re Davis, 305 F.2d 501 , 49 CCPA 1196 (1962). Here, appellant’s specification states:

* * * Two principal types of slitter knives having tungsten carbide blades are currently used. Slitter knives of small width (%" and less) have been made of solid tungsten carbide. Such knives obviously have in them a substantial amount of expensive tungsten carbide which does not serve to perform any of the cutting operation and has to be scrapped or reclaimed after the knife has worn to a certain extent A tungsten carbide rim is mechanically mounted on a steel hub for knives y%" and wider. In these structures, a screw clamp holds the tungsten carbide rim in position. Although there is less unusable carbide in such structures, the expense of manufacturing and assembling this type is high.

Thus it can be seen that the board, like this court, was faced with a record which establshes beyond peradventure that each element of appellant’s claimed combination is old. What is new, insofar as this record shows, is the use of a particular means — a previously known chemical composition consisting essentially of a mixture of epoxy resin and finely divided *429 metal 1 — to attach the concededly old “bonded hard metal carbide rim” or cutting blade to the equally old “metal bushing” or hub, thereby replacing the clamp holding means previously employed for that purpose in the prior art.

It was in those circumstances that the board stated:

* * * the references demonstrate that the expedient of joining a hard bonded rim to a sleeve or shaft by means of a thermosetting resin in a powdered metal composition would have been obvious. The difference in operation between a rotary slitter knife and an abrasive wheel is not a controlling consideration in this case. The record does not suggest that the problem of bonding the hardened rim to a supporting sleeve or shaft is different in these two types of wheels. [Emphasis supplied.]

The board’s language “hard bonded rim” or “hardened rim” is sufficiently broad to encompass either appellant’s “bonded hard metal carbide rim” or the abrading rims of the references. It is evident from those references that phenol formaldehyde or epoxy resin materials, with or without metal powder fillers for purposes of heat dissipation, have long been suggested to those in the art as supporting members for abrasive rims. I think the board properly found appellant’s particular means for attaching the cutting blade to the hub to be obvious in view of what had been suggested before in the abrading wheel art as shown by the references before us. 2

I would affirm the §• 103 rejection.

. That the epoxy resin-metal powder composition appellant employs was itself known prior to appellant’s filing date is clear from certain pages from Lee and Neville “Epoxy Resins” (1957) filed by appellant during proceedings below. Lee points out that epoxy resins “possess a number of unusually valuable properties immediately amenable to use in the formulation of adhesives, sealing liquids, cold solders, eastings, laminates, and coatings.” [Emphasis supplied.] “Cold solder,” in turn, is defined by yet another publication appellant submitted as “composed of finely divided metallic particles dispersed in epoxy resin.” Among the desirable properties of epoxy resins, Lee mentions “high adhesive strengths,” ability “to provide chemical bonds with surfaces, such as metals,” and “low shrinkage.” Appellant’s argument that it “is surprising and unexpected in the art that such a supporting member [of epoxy and powdered metal] would possess the strength, resistance to shrinkage, and adhesive properties requisite for the present application” appears contradicted by Lee.

. I agree with the solicitor that:

* * * The [slitter and abrading] arts would seem, insofar as the supporting structure is concerned, clearly to be analogous. Those in the slitter art would naturally look to abrading wheels for suggestions for improved supporting structures * * *.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.

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