Ex Parte 7,306,408 B2 et al

Patent Trial and Appeal BoardSep 10, 2014

90012742 (P.T.A.B. Sep. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/012,742 12/17/2012 7,306,408 B2 115646.00082 8340 21324 7590 09/10/2014 HAHN LOESER & PARKS, LLP One GOJO Plaza Suite 300 AKRON, OH 44311-1076 EXAMINER GELLNER, JEFFREY L ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/10/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SGS TOOL COMPANY ____________________ Appeal 2014-007923 Reexamination Control Number 90/012,742 Patent 7,306,408 Technology Center 3900 ____________________ Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and TIMOTHY J. GOODSON, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE SGS Tool Company (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM and designate our affirmance as NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50. Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 2 CLAIMED SUBJECT MATTER The claims are directed to a rotary cutting tool. Claims 1 and 19 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An end mill rotary cutting tool comprising: a body having a cutting portion and a shank portion; a plurality of diametrically-opposed, symmetrical, helical flutes formed in the cutting portion of the body, wherein adjacent helical flutes form an index angle therebetween in each radial plane along the axial length of the flutes, and a first index angle between at least a first pair of adjacent helical flutes is less than or greater than a second index angle between at least a second pair of adjacent helical flutes in at least one of the radial planes; a plurality of peripheral cutting edges, the peripheral cutting edges formed along an intersection of a circumferential surface of the cutting portion of the body and a portion of an inner surface of a respective one of the helical flutes facing in a direction of rotation of the body; a plurality of end cutting edges located on an axial distal end of cutting portion of the body, the end cutting edges being contiguous with a corresponding one of the plurality of peripheral cutting; wherein at least one of the peripheral cutting edges has a radial rake angle different from radial rake angle of a peripheral cutting edge of a different helical flute. Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dobbelaere Hiyama Beck Kawai US 3,217,382 US 4,963,059 US 5,049,009 US 6,997,651 B2 Nov. 16, 1965 Oct. 16, 1990 Sep. 17, 1991 Feb. 14, 2006 Serwa US 2002/0090273 A1 Jul. 11, 2002 Alan Richter, Variations on a Theme, Cutting Tool Engineering, Vol. 56, No. 10, October, 2004. (“Variations”) REJECTIONS Claims 1-20 stand rejected under 35 U.S.C. §112 second paragraph as being indefinite. Claims 1, 2, 6, 8, 11, 13, and 16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Serwa and Kawai. Claims 3-5, 7, 17, 19 and 20 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Serwa, Kawai, and Hiyama. Claims 9, 10, and 12 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Serwa, Kawai, and Variations. Claims 14 and 15 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Serwa, Kawai, and Dobbelaere. Claim 18 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Serwa, Kawai, and Beck. Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 4 OPINION Indefiniteness The Examiner determines that claims 1-20 are indefinite because “[c]laims 1 and 19 recite the limitation ‘one of the plurality of peripheral cutting’ in lines 14-15. There is insufficient antecedent basis for this limitation in the claim.” Ans. 2. The Examiner notes that “[t]he limitation should probably be --one of the plurality of peripheral cutting edges--.” Id. Appellant does not contest this rejection. Accordingly, we summarily sustain the Examiner’s decision rejecting claims 1-20 under 35 U.S.C. § 112, second paragraph.1 Obviousness Appellant states that “[t]he claims under appeal include independent claims 1 and 19. Claims 2-18 and 20 depend respectively from these claims. The dependent claims rise and fall with their respective independent claims.” Appeal Br. 11; Reply Br. 11. Further, Appellant relies solely on the arguments presented for claim 1 in contesting the rejection of claim 19, such that claim 19 stands or falls with claim 1. Appeal Br. 20; See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Thus, our resolution of the issues raised regarding claim 1 is dispositive as to all claims and rejections involved in this Appeal. The Examiner finds that Serwa discloses all of the limitations of claim 1 except for “the peripheral cutting edges having different radial rake angles; and, the end cutting edges being end mill and contiguous with a 1 See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 5 corresponding one of the plurality of peripheral cutting edges.” Ans. 4. The Examiner finds that Kawai discloses at least one of the peripheral cutting edges has a radial rake angle (for example, 15° of col. 7, lines 10-l7) different from radial rake angle of a peripheral cutting edge of a different helical flute (for example, 6° of col. 7, lines 10-17); and, further discloses that it was known in the art to have the end mill cutting edges being contiguous with a corresponding one of the plurality of peripheral cutting edges (shown in Figs. lA-lD and col. 1, lines 17-20). Also to the exten[t] required, Kawai discloses an end mill (abstract). Id. The Examiner further finds that in Kawai the different rake angles on different flutes “prevent chattering of the tool.” Id. (citing Kawai, col. 3, l. – col. 4, l. 9, emphasis added). Based on these findings, the Examiner concludes that it would have been obvious to modify the rotary cutting tool (end mill) of Serwa by having different rake angles for the different flutes so as to prevent chattering of the tool (Kawai at col. 3, line 65 to col. 4, line 9) and further to modify Serwa by having end mill cutting edges being contiguous with a corresponding one of the plurality of peripheral cutting edges depending upon the need and use of the cutting tool. Id. Sufficiency of the Rationale to Combine the References Appellant argues that “the Examiner’s rationale is insufficient to support a finding of obviousness.” Appeal Br. 16. In support of this argument, Appellant notes that the portion of Kawai cited by the Examiner “teaches that the overall arrangements are effective to prevent a chattering of the end mill, and not solely the different radial rake angles of the peripheral cutting edges.” Id. Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 6 The relevant part of Kawai states: Therefore, at least one first end cutting edge having the relatively small axial rake angle and at least one second end cutting edge having the relatively large axial rake angle are alternately arranged in the circumferential direction, while at least one first peripheral cutting edge having the relatively large radial rake angle and at least one second peripheral cutting edge having the relatively small radial rake angle are alternately arranged in the circumferential direction. These arrangements are effective to assure the even distribution of the cutting resistance on all the cutting edges of the end mill, thereby reliably preventing a chattering of the end mill. Kawai, col. 3, l. 65 – col. 4, l. 9. Although Appellant’s characterization of the teachings in this part of Kawai is correct, this is not indicative of error as claim 1 does not preclude different axial rake angles. Even though “[t]he present patent under reexamination teaches that ‘[t]he end cutting edges 60 all have an equivalent axial rake angle’” (Appeal Br. 17 (citations omitted)), we do not construe claim 1 to require equivalent axial rake angles. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Thus, the Examiner’s rationale is sufficient to support a finding of obviousness. Testing of the Kawai Invention Appellant notes that “Patent Owner reviewed and tested the invention of Kawai (U.S. Pat. No. 6,997,651) and discussed the same in the present patent.” Appeal Br. 18. Appellant further notes that “[t]he testing results show that the amplitude of noise created by Kawai (U.S. Pat. No. 6,997,651) having different axial rake angles and different radial rake angles, but with Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 7 equal index angles and helix angles is over 18 times that of the end mill of the present invention.” Appeal Br. 18-19 (citing, Spec., col. 7, ll. 16-20); see also Reply Br. 19. Based on this information, Appellant argues that “Kawai is a far inferior end mill than the end mill of the present invention” and concludes that “the rationale provided by the Examiner (i.e. that Kawai explicitly discloses, in end mills, that varying radial rake angles reduces chattering) is incorrect and misplaced.” Appeal Br. 20. As described in the Specification, Appellant’s invention, as tested, has equivalent axial rake angles. Spec., col. 5, ll. 13-14. Claim 1 does not require equivalent axial rake angles. Appeal Br., Clms. App. Therefore, Appellant’s evidence and the arguments based thereon are not commensurate with the scope of claim 1, and do not demonstrate error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). “Evidence of secondary considerations must be reasonably commensurate with the scope of the claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) and In re Hiniker, 150 F.3d 1362, 1369 (Fed. Cir. 1998)). Predictability of the Art Appellant contends “that there are multiple features involved in the design of an end mill, including, but not limited to helical angle, index pitch, rake angle (both axial and radial), along with whether or not these features are constant or variable and if variable, how so.” Appeal Br. 21 (citing Burton Declaration, para. 17); see also Reply Br. 19-20. Appellant further contends that “one skilled in the art recognizes that the result of changing Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 8 one of these features is not necessarily predictable and that the result of changing any combination of multiple features, let alone the determination of which sets of features to change, is inherently unpredictable.” Id. (citing Burton Declaration, para. 18); see also Appeal Br. 25, Reply Br. 20. The Burton Declaration, however, does not provide any evidence in support of the conclusory statements set forth in paragraphs 17 and 18 and thus does not provide evidence that the results of the proposed combination would not be predictable. To the extent that the Burton Declaration is relying on the test results described in the instant Specification, that evidence is not commensurate in scope with the claimed invention, as discussed supra, and thus, cannot support a showing that the results of the proposed combination would not be predictable. For these reasons, Appellant’s contentions are not persuasive and we need not determine if Variations rebuts Appellant’s contention that “changing any combination of multiple features . . . is inherently unpredictable.” Appeal Br. 21. Hindsight Appellant notes that “while Serwa does mention rotary cutting operations generally, the tool described in Serwa is particularly a router bit.” Appeal Br. 23 (citing Serwa, para. 22); see also Reply Br. 21. Appellants argue that “one skilled in the art would not look to combine the features of the Serwa tool, a router bit with roughing and finishing edges, with the features of the Kawai tool.” Appeal Br. 24 (citing Burton Declaration, para. 15). Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 9 The Burton Declaration states in relevant part: However, one skilled in the art would not look to combine the features of the Serwa tool, a router bit with rouging and finishing edges, with the features of the Kawai tool, an end mill with at least one peripheral cutting edge having a radial rake angle different than another peripheral cutting edge. Burton Dec., para. 15. The Burton Declaration provides no evidence in support of this conclusory statement. Moreover, Appellant’s argument disregards Serwa’s explicit disclosure that “[t]he following description and present invention therefore applies to any conventional rotary cutting tool, such as drill bits, mill bits, router bits, countersink bits, and the like. The term ‘rotary cutting tool’ as used herein and in the appended claims refers to any such tool.” Serwa, para. 2 (emphasis added). Accordingly, Appellant’s argument is unpersuasive. Appellant further argues that: the only way to maintain the current rejection with the attempted combination of cited references is to present a classic example of hindsight reconstruction of the prior art using the presently claimed invention and its disclosure to show the way and fill in the glaring deficiencies in the cited prior art. Appeal Br. 26. However, Appellant does not identify where the Examiner relies upon improper hindsight in the rejection. As discussed supra, the Examiner’s articulated rationale for the proposed modification (to prevent chattering of the tool) is explicitly disclosed by Kawai. See Ans. 4 (citing Kawai, col. 3, l. 65 – col. 4, l. 9). Thus, Appellant does not apprise us of error. Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 10 For these reasons, we sustain the Examiner’s decision rejecting independent claim 1, and independent claim 19 which falls therewith. We likewise sustain the Examiner’s decision rejecting claims 2–18 and 20 which Appellant does not argue separately. Appeal Br. 11. To the extent that our reasoning in response to Appellant’s arguments supra differs from that of the Examiner, we designate our affirmance as a new ground of rejection. DECISION The Examiner’s rejections of claims 1-20 are AFFIRMED and designated as NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2014-007923 Patent 7,306,408 Reexamination Control 90/012,742 11 Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). AFFIRMED; 37 C.F.R. § 41.50(b) Klh