Ex Parte Cho et al

Patent Trial and Appeal Board

May 24, 2016

13290689 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/290,689 11/07/2011
20551 7590 05/26/2016
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
FIRST NAMED INVENTOR
H. Sam Cho
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
02203-24655.CIP 8585
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
05/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@tnw.com
rich@tnw.com
annette.fields@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte H. SAM CHO, LEE BONG KYU, KIM YOUNG IL,
HAN KYUNG RYUL, and SONG GI JEON
Appeal2016-004035
Application 13/290,689
Technology Center 1700
Before JEFFREY T. SMITH, GEORGE C. BEST, and A VEL YN M. ROSS,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 10, 11, 13, and 14 of
Application 13/290,689 under 35 U.S.C. § 112, ,-i 1 for failure to comply
with the written description requirement and under 35 U.S.C. § 102(b) as
anticipated. Final Act. (December 18, 2014). Appellants 1 seek reversal of
1 Hyun Sam Cho is identified as the real party in interest. Br. 3.
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Application 13/290,689
those rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6.2
For the reasons set forth below, we REVERSE the Examiner's
rejections. We, however, enter NEW GROUNDS OF REJECTION for each
of the claims on appeal.
BACKGROUND
The '689 Application describes
Claims 1 and 10 are representative of the '689 Application's claims
and are reproduced below:
1. A contoured homogeneous solid polycrystalline
superabrasive segment
which is a drill tip segment_ having [sic, segment having][3J a
helical non-planar surface and
which is adapted for attachment to a cutting tool[,]
wherein said segment is prepared by HPHT processing of a
homogeneous superabrasive particulate charge feed.
10. A cutting tool comprising
a cutting tool substrate having attached thereto
2 On March 15, 2012, the Patent and Trademark Office granted Appellants'
Petition to Make Special based upon the age of inventor H. Sam Cho.
Decision on Petition (March 15, 2012). Accordingly, we have taken up this
appeal out of tum.
3 We note that Appellants' claims contain this and several other apparent
errors or informalities. Where appropriate, we have indicated our
understanding of the claims as they currently stand. If prosecution of the
'689 Application continues, we suggest Appellants carefully review their
claims.
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Application 13/290,689
a separately formed contoured homogeneous solid
polycrystalline superabrasive segment
which is a drill tip segment having a helical non-planer [sic,
non-planar] surface[,]
wherein said segment is prepared by HPHT processing of a
homogeneous superabrasive particulate charge feed.
Br. Claims App. 23-24 (paragraphing and indentation added).4
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 10, 11, 13, and 14 are rejected under 35 U.S.C. § 112,
iJ 1, as failing to comply with the written description requirement.
Final Act. 2.
2. Claims 1, 2, 10, 11, 13, and 14 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Ikegaya. 5 Final Act. 3.
3. Claims 1, 2, 10, 11, 13, and 14 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Crockett 6 Final Act 3.
4. Claims 1, 2, 10, 11, 13, and 14 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Packer. 7 Final Act. 4.
4 We cite Appellants' Brief filed June 1 7, 2015, as amended on September
11, 2015.
5 US 5,435,815, issued July 25, 1995.
6 US 5,868,885, issued February 9, 1999.
7 US 5,031,484, issued July 16, 1991.
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DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, 10, 11, 13, and 14
for failing to comply with the written description requirement. Final Act. 2.
The Final Action explained to the rejection: "The claim(s) contains subject
matter( homogenous [sic, matter (homogenous] solid polycrystalline
superabrasive segment) which was not described in the specification in such
a way as to reasonably convey to one skilled in the relevant art that ... the
inventor(s), at the time the application was filed, had possession of the
claimed invention." Id. In the Answer, the Examiner further explained that
"[t]he specification discloses that the feed materials is a homogenous
mixture. However, the specification does not disclose contoured solid
polycrystalline superabrasive segment is homogeneous." Answer 2
(emphasis in original).
In their Brief, Appellants argue that "[t]he word 'homogenous' was
... sufficiently described with words to demonstrate possession of the
"I • "I • • • • .... ...... ""'""' "I • r- • • -i-i ~ "I,..,, Q 0 ... crn1mea mvennon m me ongmauy ruea spec1ncanon. tir. u. ~, / As
Appellants point out, the '689 Application's Specification describes
formation strike that a process for making the claimed solid polycrystalline
superabrasive segment that includes filling the shaped openings of the
8 Although the heading in Appellants' Appeal Brief only mentions the
rejection of claim 2 on this basis, we understand Appellants to be appealing
the rejection of all of the claims in the '689 Application for lack of written
description support.
9 In the Appeal Brief, Appellants cite the specification of US 2012/0103701
Al, which is the Pre-Grant Publication of the '689 Application. These
citations are improper because the Pre-Grant Publication is not part of the
Record as defined in 37 C.F.R. § 41.30. Accordingly, we cite the
Specification contained in the Image File Wrapper of the '689 Application.
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precursor mold with "a substantially homogeneous mixture of superabrasive
source particulates, sintering binder, and optional inorganic bonding
medium." Spec. 8. In the Specification further states that particular types of
superabrasive source particulates "facilitate production of larger PCD
segments having a high quality and uniform sintering throughout." Id. at 9.
A claim term need not appear word for word in the specification to
meet the written description requirement. In re Edwards, 568 F.2d 1349,
1351-52 (Fed. Cir. 1978). In this case, however, it appears that the
Examiner is attempting to hold Appellants to this standard. See Answer 5
("The examiner respectfully submits that there is no description that [the]
contoured solid polycrystalline superabrasive segment having a helical non-
planar surface for attachment is substantially homogeneous."). In the
absence of a more detailed explanation of the basis for the rejection from the
Examiner-e.g., why a person of ordinary skill in the art would understand
that Appellants' Specification describes sintering process the results in a
nonhomogeneous product-we agree with Appellants that their
Specification adequately demonstrates possession of a homogenous
superabrasive segment. Thus, we reverse this rejection.
Rejection 2. The Examiner rejected claims 1, 2, 10, 11, 13, and 14 as
anticipated by Ikegaya. Final Act. 3. The Examiner's rejection is
reproduced below:
Regarding claims 1-2, 10-11 and 13-14, Ikegaya et al.
disclose a drill tool comprising polycrystalline abrasive such as
diamond having helical non-planar surface to attach to a
substrate (col. 5, lines 30-37).
The patentability of a product does not depend on its
method of production. If the product in the product-by-process
claim is the same as or obvious from a product of the prior art,
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Id.
the claim is unpatentable even though the prior product was made
by a different process.
A recitation of the intended use of the claimed invention
must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the
claimed invention from the prior art. If the prior art structure is
capable of performing the intended use, then it meets the claim.
Appellants argue, inter alia, that "Ikegaya does not teach a segment
prepared by HPHT processing, and Ikegaya itself clearly describes the final
products of HPHT (polycrystalline sintered diamond) and CVD (vapor
deposited diamond) processing as having distinctive physical properties."
Br. 1 7. Because we agree with Appellants' argument on this point, we
reverse the rejection of claims 1, 2, 10, 11, 13, and 14 as anticipated by
Ikegaya.
The Examiner did not find the Ikegaya describes the use of a
polycrystalline sintered diamond in a drill tip segment. Rather, the
Examiner concluded that in the pending claims 1 and 10 included product-
by-process limitations specifying that the polycrystalline superabrasive
segment be prepared by HPHT processing. See Final Act. 3; Answer 3, 6-7.
The Examiner then asserted that "[t]he patentability of a product does not
depend on its method of production. If the product in the product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process." Answer 7 (citing In re Thorpe, 77 F.2d 695, 698 (Fed. Cir. 1985)).
We begin by noting that the Examiner rejected the '689 Application's
claims as anticipated by Ikegaya. For this to be correct, Ikegaya must
disclose the claimed invention. Thus, Ikegaya must describe an apparatus
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comprising a component that is the same as that claimed in a product-by-
process limitation.
Ikegaya, however, only describes the manufacture of a cutting tool
that includes a polycrystalline diamond that is the result of a chemical vapor
deposition process. See, e.g., Ikegaya col. 4, 11. 17-30. Furthermore,
Ikegaya describes several alleged advantages of such CVD polycrystalline
diamond surfaces relative to those produced by HPHT sintering processes.
See id. at col. 1, 1. 31-col. 2, 1. 37. Ikegaya, therefore, establishes that its
CVD polycrystalline diamond is a different material from that recited in the
'689 Application's independent claims. Thus, we reverse this rejection.
Rejection 3. The Examiner rejected claims 1, 2, 10, 11, 13, and 14 as
anticipated by Crockett. Final Act. 3.
Appellants argue that this rejection should be reversed for either of
two independent reasons: (1) Crockett's HPHT sintering process would
create a final product that is structurally distinct from the claimed invention,
Br. 19-20, and (2) Crockett describes the formation of a cutting edge in an
end mill rather than in a drill tip segment, id. at 19.
We address Appellants' arguments seriatim.
First, Appellants argue that the HPHT sintering process described in
Crockett would not create a final product that falls within the scope of the
'689 Application's claims. Br. 19-20. In particular, Appellants rely upon
the Rule 132 declaration of the inventor Hyun Sam Cho. Id. In his
declaration, Cho asserts that "the [HPHT] process of Crockett is critically
flawed and would not produce the disclosed materials." Cho Deel. ,-i 12
(dated May 16, 2014).
The Examiner responded to this argument by stating that a
"declaration under37 C.F. R [sic, under 37 C.F.R. §] 1.132 cannot
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overcomes [sic] 35 U.S.C. 102(b) rejection." Answer 8. We are not aware
of any support for this proposition. There is no prohibition on the use of
Rule 132 declarations to provide evidence that might be used to overcome
an anticipation rejection. 10
The Examiner also states, without analysis, that "[t]he appellant
argues that Crockett would fail to product [sic, produce] a sintered diamond
as disclosed. The Examiner respectfully submits that [Crockett's] structure
is sintered (col. 5, 11. 33-45)." Answer 8. We understand the Examiner to
be finding the Cho Declaration insufficiently persuasive.
In the end, the weight to be given to the Cho Declaration relative to
Crockett's disclosure is based upon the relative credibility of each of these
documents. In this instance, Appellants rely upon a declaration that provides
an opinion regarding the workability of the process disclosed in Crockett.
The Cho Declaration does not provide any actual evidence-e.g.,
experimental results or data-to support the contention that the process
described in Crockett does not produce a sintered diamond product. Thus,
we conclude that Appellants have not submitted evidence sufficient to
overcome the presumption that an issued US patent is enabled. Accordingly,
10 Perhaps the Examiner is misapplying the rule that a declaration under 3 7
C.F.R. § 1.131 cannot be used to "swear behind" prior art to overcome a
rejection under § 102(b ). Evidence may be introduced to overcome a
rejection under 35 U.S.C. § 102, e.g., evidence demonstrating that an applied
reference is not enabling, Reading & Bates Constr. Co. v. Baker Energy
Resources Corp., 748 F.2d 645 (Fed. Cir. 1984); to show that a recited
characteristic is not inherent in a prior art article, In re Fitzgerald, 619 F .2d
67 (CCPA 1980); or to show that an applied reference is not actually valid
prior art under 35 U.S.C. § 102, In re Cronyn, 890 F.2d 1158 (Fed. Cir.
1989).
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we do not reverse the Examiner's rejection of the '689 Application's claims
as anticipated by Crockett on this basis.
Second, Appellants argue that Crockett describes the formation of a
cutting edge in an end mill rather than in a drill tip segment. Br 19. We
agree with Appellants, and we, therefore, reverse the rejection of claims 1, 2,
10, 11, 13, and 14 as anticipated by Crockett.
The Examiner found that Crockett discloses "a drill tool comprising
[a] polycrystalline abrasive such as diamond having [a] helical non-planar
surface to attach to a substrate." Final Act. 4 (citing Crockett Figs.; col. 1, 11.
10-55). The Examiner's reasons for this rejection also include the
boilerplate recitation that
[a] recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable
of performing the intended use, then it meets the claim.
Id. The Examiner's Answer suggests that the Examiner concluded that the
recitation-which appears in each of the '689 Application's independent
claims-that the claimed superabrasive segment "is a drill tip segment" is a
statement of intended use. See Answer 8.
Because the Examiner has not clearly explained the basis for this
rejection, we will assume that the Examiner has presented alternative bases
for finding that Crockett anticipates the '689 Application's claims. Neither
of these bases is persuasive.
To the extent that the Examiner's rejection is based upon a finding
that Crockett describes formation of a drill tip segment, it is based upon an
erroneous factual determination and must be reversed. Crockett states that
"the method of manufacturing cutting tools is described herein in reference
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to an end mill." Col. 2, 11. 38-39. Crockett, therefore, does not describe the
manufacture of a drill tip segment. An alleged anticipatory reference "must
disclose each and every element of the claimed invention, whether it does so
explicitly or inherently." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009). Thus, we cannot sustain the Examiner's rejection on this basis.
Nor can we sustain the rejection premised upon the theory that the
statement in each of the independent claims that the "superabrasive segment
... is a drill tip segment" is a statement of intended use rather than a
structural limitation. We begin by noting that the claim language, on its
face, states what the superabrasive segment is and not how it may be used.
Furthermore, our review of the '689 Application's Specification supports
Appellants' contention that a person of ordinary skill in the art at the time of
the invention would have understood that drill tips meet different structural
requirements than end mills. Thus, any claim construction which regards the
statement that the claimed "superabrasive segment ... is a drill tip segment"
as a statement of intended use is not correct. Thus, we cannot affirm the
Examiner's rejection on this basis.
Because the Examiner erred either by finding that Crockett describes
the formation of a polycrystalline diamond cutting edge in a drill tip segment
or by concluding that the statement that the claimed superabrasive segment
"is a drill tip segment" is a statement of intended use, we reverse the
Examiner's rejection of claims 1, 2, 10, 11, 13, and 14 as anticipated by
Crockett.
Rejection 4. The Examiner rejected claims 1, 2, 10, 11, 13, and 14 as
anticipated by Packer. Final Act. 4.
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Appellants' sole argument for reversal of this rejection is that "Packer
is exclusively drawn to end mill segments, which are structurally distinct
from drill tip segments." Br. 21.
In making this rejection, the Examiner found that Packer describes "a
drill tool comprising [a] polycrystalline abrasive such as diamond having [a]
helical non-planar surface attached to a substrate." Final Act. 4 (citing
Packer Figs.; col. 3, line 33-col. 5 line 60). The Examiner also argues that
"[a] recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art . . . . If
the prior art structure is capable of performing the intended use, then it
meets the claim." Id. at 4-5.
As discussed above, we conclude that the language in each of the '689
Application's independent claims describing the claimed polycrystalline
superabrasive segment as "a drill tip segment" is more than a mere statement
of intended use. Rather, we conclude that this language constitutes a
positive limitation imposing structural requirements on the claimed
apparatus. After our review of Packer's specification, we find that the
Examiner erred by finding that Packer describes a drill tool. As stated in
Packer's title, Packer describes diamond fluted end mills. Furthermore, the
Examiner does not explain why Packer's end mill segments also are drill tip
segments. Thus, we are constrained to reverse the Examiner's rejection of
the '689 Application's claims.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50, we enter the
following new grounds of rejection with respect to claims 1, 2, 10, 11, 13,
and 14 of the '689 Application.
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New Ground of Rejection 1. Claims 1, 2, 10, 11, 13, and 14 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Crockett.
Crockett describes methods for manufacturing polycrystalline
diamond ball end mills. In particular, Crockett describes the manufacture of
cutting tools having diamond-like cutting surfaces. E.g., col. 2, 11. 39-41. In
Crockett's cutting tools, a homogeneous polycrystalline superabrasive
segment comprising polycrystalline diamond or polycrystalline cubic boron
nitride is inserted into a groove in the surface of a cutting tool. See Figs. 1,
2, 6. The grooves (and thus, the polycrystalline superabrasive segment
formed within them) have a compound curvature. See col. 2 11. 56-60; Figs.
1, 6. The polycrystalline superabrasive segment is prepared by HPHT
processing. Col. 3, 11. 16-26.
Thus, Crockett describes each of the limitations in independent claims
1 and 10 except that Crockett specifically describes manufacture of an end
mill. Crockett, however, specifically suggests that the methods it describes
can be used to make other types of cutting tools having diamond-like cutting
surfaces including various types of drill bits:
For descriptive purposes, the method of manufacturing
cutting tools is described herein in reference to an end mill. As
it will be come [sic] apparent to one skilled in the art, the method
can be used in the manufacture of other cutting tools having
diamond like [sic, diamond-like] cutting surfaces. Such cutting
tools include, but are not limited to, drag bit inserts as well as
rotary cutting tools such as various types of end mills (e.g., ball
end mills), diamond twist drills, composite sintered twist drills,
printed circuit board drills, reamers and taps.
Col. 2, 11. 38--46 (emphasis added).
Crockett, therefore, describes or suggests each limitation of
independent claim 1. Accordingly, we conclude that the differences
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between the subject matter of claim 1 and Crockett would have been obvious
to a person of ordinary skill in the art at the time of the invention. Claims 1
and 10, therefore, are unpatentable.
We adopt the Examiner's findings with regard to the limitations
present in claims 2, 11, 13, and 14. For the reasons set forth above, we
conclude that these claims also are unpatentable over Crockett.
New Ground of Rejection 2. Claims 1, 2, 10, 11, 13, and 14 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Packer.
Packer discloses an end mill comprising a polycrystalline
superabrasive segment such as polycrystalline diamond having a helical non-
planar surface to attach to a substrate. See Figs.; col. 3, line 33-col. 5, line
60. The polycrystalline superabrasive segment is prepared by HPHT
processing. Col. 4, line 53-col. 5, line 46.
Packer does not describe the manufacture of a drill tip segment.
Packer, however, recognizes that the technology it describes may also be
useful for other types of cutting tools. Col. l, 11. 35-37 (specifically
identifying router bits, reamers, and taps). Furthermore, in discussing the
prior art, Packer addresses patents describing drills comprising
polycrystalline diamond cutting edges. Col. 2, 11. 9-29. Indeed, Packer
teaches that "[i]t would additionally be obvious to provide cutters across the
ends 13 and 113 of the blank bodies 12 and 112 to enhance plunging and
milling operations without departing from the scope of this invention (not
shown)." Col. 4, 11. 12-15. Thus, Packer would have suggested to a person
of ordinary skill in the art at the time of the invention that its methods could
be used to manufacture a drill tip segment.
In view of the foregoing, we conclude that independent claims 1 and
10 are unpatentable over Packer.
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We adopt the Examiner's findings with regard to the limitations
present in claims 2, 11, 13, and 14. For the reasons set forth above, we
conclude that these claims also are unpatentable over Packer.
New Ground of Rejection 3. Claims 1, 2, 10, 11, 13, and 14 are
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Packer and Crockett. As discussed above, Packer describes every limitation
in independent claims 1 and 10 and dependent claims 2, 11, 13, and 14
except for a specific description of manufacturing a drill tip segment.
Packer further states that its methods could be used to manufacture rotary
cutting tools other than end mills. Like Packer, Crockett describes methods
for manufacturing end mills. Crockett specifically states that such methods
can be used to manufacture various types of drill tip segments.
In view of the combined descriptions and suggestions in Packer and
Crockett, it would have been obvious to a person having ordinary skill in the
art at the time of the invention to use Packer's manufacturing methods to
manufacture drill tip segments as suggested by Crockett. Thus the '689
Application's claims are unpatentable over the combination of Packer and
Crockett.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1, 2,
10, 11, 13, and 14 for failure to comply with the written description
requirement. We also reverse the rejection of these claims as anticipated by
Ikegaya, Crockett, and Packer.
As discussed above, however, we enter new grounds of rejection
pursuant to 37 C.F.R. § 41.50(b). In particular, we reject claims 1, 2, 10, 11,
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13, and 14 under 35 U.S.C. § 103(a) as obvious in view of either Crockett or
Packer or of the combination of Packer and Crockett.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that the 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 ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
REVERSED; NEW GROUNDS OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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