Application of Myers

• Decision Date: 22 May 1969
• Docket Number: Patent Appeal No. 8035.
• Citation: 410 F.2d 420,161 USPQ 668
• Parties: Application of George E. MYERS.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

161 USPQ 668, 410 F.2d 420 (1969)

Application of George E. MYERS.

Patent Appeal No. 8035.

United States Court of Customs and Patent Appeals.

May 22, 1969.

John M. Webb, Pittsburgh, Pa., attorney of record, for appellant. Spencer B. Michael, Washington, D. C., of counsel.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents. S. Wm. Cochran, Washington, D. C., of counsel.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and BALDWIN, Judges.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals¹ affirming the examiner's rejection of claims 16-20, the only remaining claims in appellant's application.² The board affirmed the rejection of certain of those claims on several grounds: (1) claims 16-20, as based on an insufficient disclosure, under 35 U.S.C. § 112; (2) claims 16-20, as unduly broad and indefinite, under 35 U.S.C. § 112; (3) claims 16-20, as obvious in view of Van der Pyl,³ Nestor,⁴ Kistler et al.,⁵ and Voegeli-Jaggi,⁶ under 35 U.S.C. § 103; and claims 17, 19 and 20, as drawn to new matter. No claims have been allowed.

THE INVENTION

The invention relates to an improved rotary or wheel-type slitter knife for cutting metal strip and sheet and is illustrated below as having a hard metal carbide blade or cutting rim 10, 10a, preferably of tungsten carbide, separated from and mounted on a hardened steel bushing 11, 11a by means of a supporting member 12, 12a formed in situ by curing or hardening a mixture of powdered or finely divided metal, such as steel or aluminum, and epoxy or epoxy-polyamide resin having an epoxide equivalent (grams of resin containing one gram equivalent of epoxide) of 400 or less.

In describing the preferred embodiment, the specification states:

The supporting member must form a strong bond with both the tungsten carbide cutting rim and the steel bushing, it must possess substantial strength, particularly under compression, and it should not shrink during curing. These properties are obtained by using a mixture of powdered or finely-divided metal, such as steel or aluminum, and an epoxy or epoxy-polyamide resin. These resins have excellent dimensional stability during the curing process and provide a strong bond with the rim and the bushing. When coupled with powdered metal, they yield a supporting member with excellent compressive strength. I have found that a mixture of 80% powdered steel and 20% resin works very satisfactorily. However these proportions may be varied depending on the strength desired.

THE CLAIMS

The appealed claims read:

16. A rotary slitter knife for slitting metal strip and sheet comprising a bonded hard metal carbide rim as the cutting element of said knife, said rim being mounted on a metal bushing by a supporting member disposed between at least a part of said bushing and said rim, said supporting member consisting essentially of a hardened material of a powdered metal and an epoxy resin, said resin being characterized by high dimensional stability during curing and good bonding properties, said supporting member effecting a bond with said rim and said bushing.

17. The knife of Claim 16 wherein said resin has an epoxide equivalent no greater than 400.

18. The knife of Claim 16 wherein said supporting member is substantially about 80% powdered metal and substantially about 20% resin, said powdered metal being selected from a group consisting of steel and aluminum.

19. The knife of Claim 16 wherein said bonded hard metal carbide consists essentially of tungsten carbide and said resin has an epoxide equivalent no greater than 400.

20. The knife of Claim 19 wherein the binder for said bonded hard metal carbide is a metal selected from the group consisting of cobalt and nickel.

THE REFERENCES

The reference patents, all relating to "abrasive" or "grinding" articles and not metal "slitting" or "cutting" tools, are summarized below.

Van der Pyl discloses a grinding wheel having an outer grinding rim formed of diamond grains bonded with a synthetic resin, and an inner supporting member formed of metal powder, preferably aluminum, bonded with natural or synthetic resins. Suitable natural or synthetic resins include phenol-formaldehyde resin, any alkyd resin, thermoplastic resins, and shellac or the like.

Nestor discloses an abrasive wheel made by whirling a rotating mold containing a suspension of abrasive grit, preferably aluminum oxide grains, and a resin binder, preferably epoxide resin having an "epoxy number approximately 192 grams per epoxide equivalent." Centrifugal force causes the abrasive grains to be arranged uniformly at the periphery leaving a "clear inner resin ring."

Kistler et al. relates to a molded abrasive article or grinding wheel. The abrasive portion is disclosed as composed of abrasive grains, such as, "any of the hard carbides, for example boron carbide or tungsten carbide" bonded with a novel synthetic resin formed by copolymerizing a suitable ester of acrylic acid or an alpha substituted acrylic acid with a compatible polymerizable hardening agent. The resin is softer than phenol-formaldehyde and more heat resistant than shellac or rubber.

Voegeli-Jaggi discloses a grinding wheel comprising an outer grinding portion formed of an abrasive grit embedded in a phenolic resin, mounted on an iron support by means of a supporting portion which "is formed of artificial resin such as phenolic condensation product resin and is in the form of a hollow cylinder or disc."

THE REJECTIONS

Insufficient Disclosure

In support of his rejection of claims 16-20 as being based on an insufficient disclosure, the examiner stated in his Answer:

* * * Since appellant\'s disclosure as originally filed fails to identify the bond material for the tungsten carbide rim "10", the specification * * * fails to set forth a complete written description of the best mode contemplated by the inventor of carrying out his invention.

In sustaining, the board noted appellant's "failure to describe the tungsten carbide rim material" and the absence of "a statement in the original specification to the effect that a bonded carbide rim was employed." Emphasis supplied.

Unduly Broad and Indefinite

In rejecting the claims "as not particularly pointing out and distinctly claiming the invention as required by 35 USC 112," the examiner said:

Claim 16 is considered unduly broad and indefinite in the recited limitations of (1) "a bonded hard metal carbide rim" and (2) "a powdered metal". In the first recited limitation, the identity of the bond * * * is indefinite and would include resins and ceramics as the binder * * *. In fact, the limitation reads on a self-bonded metal carbide rim. The affidavits * * * disclose the use of an iron-group metal as essential for bonding the hard carbide particles. The board noted that (1) applied only to claims 16-19. The second recited limitation above, includes the powdered metals of cobalt, nickel, iron and silver in supporting member "12" which are not taught by appellant as being operative. * * * Aluminum and steel are the only two specific metal powders identified as operative * * *. The board noted that (2) applied only to claims 16, 17, 19 and 20 and "that the term `powdered metal\' is broad enough to refer to powdered sodium, or lithium, for instance, apparently unsuitable."

Obviousness

The examiner rejected claims 16-20 as unpatentable over Van der Pyl in view of Nestor, Kistler et al. and Voegeli-Jaggi. The examiner's application of the references to the claims is summarized:

Van der Pyl discloses an inner non-grinding ring consisting of aluminum powder and a synthetic resin bonded to an outer abrading rim of diamond grains in a synthetic resin bond. Kistler et al. discloses employing tungsten carbide or diamonds as the abrasive grains in molding resin-bonded grinding wheels. Nestor discloses an abrasive grinding wheel consisting of an epoxy ring and an outer grinding rim consisting of abrasive grains and an epoxy resin. Substituting tungsten carbide particles for the diamond grains in the outer rim of Van der Pyl and employing an epoxy resin as the synthetic resin in the inner ring thereof would be obvious expedients in view of Kistler et al. and Nestor. Employing a metal bushing in Van der Pyl\'s abrasive wheel would also be obvious in view of Voegeli-Jaggi. Emphasis added.

In sustaining, the board opined that:

* * * 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.

New Matter

The board sustained the rejection of certain claims as being drawn to new matter

* * * in the limitation "no greater than 400" characterizing the epoxide equivalent in claims 17 and 19, and in the expression "a metal selected from the group consisting of cobalt and nickel" in claim 20.

In so holding, the board was of the opinion that:

* * * the epoxide equivalent of "no greater than 400" is new to the application as a description of the final product. The specification, page 4, refers to an epoxy resin equivalent "of 400 or less" but this reference is directed to the liquid resin prior to curing, and is intended to insure liquidity at room temperature, a process and not a product feature.

We find no basis in the original application for the reference to cobalt and nickel. Assuming that iron group metals have been employed as bonding materials in this art, this would not give appellant the option of selecting cobalt and nickel for monopoly after the filing date of the application.

OPINION

We believe the board's affirmance of the rejection of claims 16-20 to be in error, excepting the...