threaded end 23A of the rod being threaded into the outer end of opening 14. By turning knob 24, the inner end of rod 23 is caused to push against the rearward flat face 29E of cutting bit 29. This moves the bit simultaneously outwardly against the inner wall of tube 11 and at an incline away from the free end thereof.

As shown in Fig. 3, the cutting point 29A not only protrudes into and cuts the tube wall as shaft 12 is rotated, but also rides up over the tube wall as the cutting process progresses. This overriding action not only confines the tube wall to prevent it from flaring outwardly at the new tube terminal, thus holding its true cylindrical shape, but also forms the chamfered cut end 11C on the new tube terminal.

Claims 10, 11, and 21 are representative of those on appeal:

10. A tool for cutting a terminal piece from a metal tube from within the tube at a distance from the open free end of the tube, comprising a shaft insertable in said tube and rotatable therein relative to the tube wall, said shaft having an opening formed therein adjacent a first end portion and extending to a side of the shaft, said shaft having a second end portion accessible from the free end of said tube, said opening having a guide surface defining a wall on the side thereof farthest removed from said second end portion, said guide surface being disposed in a plane at an acute angle to the axis of the shaft and inclined away from said second end portion, a cutting bit disposed in said opening and having a side surface slidably engaging said guide surface of said opening and disposed at said acute angle, said cutting bit being revolved by the shaft with the rotation of said shaft, actuating means carried by the shaft and operatively engaging said cutting bit, to urge said cutting bit outwardly of said opening at said acute angle toward and against the wall of a tube in which the tube is inserted, said cutting bit having a cutting edge substantially in the plane of said side surface adapted to cut said tube wall upon being urged against the tube wall and upon being revolved relative thereto by the rotation of said shaft, the said cutting bit adjacent said cutting edge and extending therefrom to said side surface of the bit that is engageable by said guide surface being inclined toward said second end portion of the shaft to over-ride the edge of the tube farthest removed from said free end as the tube is being cut by said cutting edge said over-riding of said tube restraining the tube at said edge from outward flaring, said cutting bit having a length not substantially exceeding the length of said opening to be substantially accommodated therein upon being positioned in withdrawn position for permitting the ready insertion of the cutting bit in said opening wholly into a tube with said first end portion of the shaft.

11. A tool as claimed in claim 10 and in which said acute angle is of the order of 35° to 55°.

21. A tool as claimed in claim 10 and in which said acute angle is of the order of 40° to 50°.

The sole issue is whether the invention of the appealed claims is obvious (35 U.S.C. 103) in view of the following prior art:

Thomas

Vance

70,652 Nov. 5, 1867 380,777 Apr. 10, 1888

Thomas, the primary reference, discloses a tool for cutting off the ends of boiler-tubes or tubes for other purposes wherein there is

arranged, in a suitable stock, a cutting-tool which is forced outwardly with a screw by means of a double-inclined plane. The following is Fig. 1 from Thomas:

The cutting bit E is forced radially outward in a plane normal to the tool axis by the turning of handle C which moves the angular end face of member b against the angular end face of cutter bit E. With respect to the issue of obviousness, the only material difference between the tool of Thomas and appellants' tool is the angle of inclination of the cutting bit to the axis of the tool.

Referring to Fig. 2 of Vance, reproduced below, a cutter C is carried in a diagonal channel a extending through tool shaft A. The shaft is intended to be inserted into the open end of a boiler tube T from outside the boiler wall. In use, the outer end of cutter C is struck so as to cause the sharp edge thereof to completely penetrate the tube wall. The eccentric device e is then turned to lock the cutter in its penetrated position and shaft A is then rotated on its axis to sever the tube in one revolution.

d

T

Fig. 2

The examiner's position in the use of Thomas and Vance as references was as follows:

The Thomas reference discloses a metal tube, shaft (a and A') and a handle (C) for rotating said shaft. A cutting bit (E') is carried by the shaft and having means (b) to actuate the cutting bit and to adjust the protrusion of said cutting bit. The end of the actuating means (b) is inclined to engage the opposed surface of the cutting bit for slidable movement of said parts relative to each other, to vary the protrusion of the cutting bit. The cutting bit is sufficiently short so as to permit said bit in withdrawn position to be located within the tool, in order that it may be readily inserted or withdrawn from a tube.

The Vance reference discloses an internal tube cutter having an adjustable cutting bit that is positioned at an acute angle as included in these claims. The cutting bit also produces a bevel on the end of the severed pipe as stated above in the description of the Vance reference. To have the cutting bit of Thomas provided with additional cutting means to produce a bevel on the end of the severed pipe and positioned at an acute angle to the axis of the tool and tube as disclosed by Vance would be an expedient obvious to one skilled in the art in accordance with 35 U.S.C. 103, because it is merely a mechanical design feature as well as selecting various old features from the prior art and incorporating same into a single device, with each performing their old function. 374-293-71-3

The board essentially agreed with the examiner, saying "it is our opinion that it would be obvious to one skilled in the art to have the cutting means in Thomas extend at an angle to the axis of the tube as disclosed by Vance."

[1] Appellants argue the century-old status of the references but this argument does not impress us, absent some showing that the art tried and failed to solve some problem notwithstanding its presumed knowledge of the references. For aught that appears, as soon as the need for an inside tubing cutter for copper tube was perceived it was produced out of the accumulated skill of the art.

Appellants rely heavily on the argument that the steel boiler-tube cutters of the references do not make their claimed invention obvious. within the meaning of section 103 because it would not be apparent therefrom that internal cutters used on copper or other soft metal tubing would cause it to bulge from the pressure exerted thereon, thus making subsequent assembly with other fittings difficult. But this desideratum of maintaining the external diameter of the cut tube was contemplated and disclosed by Vance, who says:

The chisel-pointed cutting edge c' of the inclined cutter c produces a beveled cut on the end of the severed tube, and thereby leaves the same in proper shape to allow it to be removed through the same hole in the flue-sheet in which it was seated, and also in suitable shape for scarfing and welding the said end of the tube.

Obviously, if the boiler tube initially fits closely in the hole in the flue sheet, as clearly it does, it is not bulged by the cutting tool because of the angle of the cutting tool which exerts an inward pressure on the tube end as the cut is made. Thus the tubing can be withdrawn through the hole. It seems evident to us that Vance contemplated that a cut otherwise made might bulge the tube-even the steel boiler tube. Surely one skilled in this mechanic art could appreciate the elementary fact that the softer the metal the greater the bulge. Avoiding bulge was clearly uppermost in Vance's mind as he mentions it twice in his specification. The specification would convey this teaching to those skilled in the art and suggest the advantage of the cutter angle shown by Vance, which corresponds to the angle of appellants' claims.

We see no error in the rejection and the decision of the board is affirmed.

PATENTS

416 F.2d 1385; 163 USPQ 545

IN RE JOHN S. BOZEK (No. 8173)

1. CLAIMS MEANS” CLAIMS

Third paragraph of 35 USC 112 requires that "means *** for performing a specified function," in order to be accorded structural significance, be a means which possesses a presently existing function or a presently existing capability to perform a function; thus, where means performs function during process of manufacturing claimed article, it does not distinguish over article of reference. 2. SPECIFICATION-SUFFICIENCY OF DISCLOSURE

Reference disclosure must be evaluated for all that it fairly suggests and not only for what is indicated as preferred.

3. PATENTABILITY-INVENTION-IN GENERAL

Test for obviousness is not whether features of one reference may be bodily incorporated into the other to produce claimed subject matter but simply what the combination of references makes obvious to one of ordinary skill in pertinent art.

United States Court of Customs and Patent Appeals, November 6, 1969 Appeal from Patent Office, Serial No. 345,615

[Affirmed.]

Mason, Porter, Diller & Brown, attorneys of record, for appellant. Charles E. Brown, Vincent L. Ramik, of counsel.

Joseph Schimmel for the Commissioner of Patents. Fred W. Sherling, of counsel.

[Oral argument October 8, 1969 by Mr. Ramik and Mr. Sherling]

Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and GANEY, Judge, sitting by designation.

BALDWIN, Judges, delivered the opinion of the court:

This is an appeal from the Patent Office Board of Appeals decision, adhered to on reconsideration, which affirmed the rejection of claims 2, 4, 5, 7, and 9-14 in appellant's application,' as unpatentable over Speidel in view of Henchert under 35 US.C. 103. The board reversed the rejection of three claims.

3

The Invention

As stated in appellant's specification, the invention relates to "a can end of the easy opening type adapted for the dispensing of beverages including beer, wherein an end panel of the can end is provided with a score line which defines a tear-out portion through which the beverage is poured”. The specification does not state explicitly how the score line is provided but in his briefs to the board and this court, appellant

1 Serial No. 345,615, filed Feb. 18, 1964, for "Non-Flipping Beer Can End". 2U.S. Patent 2,112,231, issued Mar. 29, 1938.

Canadian Patent 484,099, issued June 17, 1952.