Ex Parte Durfee

Patent Trial and Appeal Board

Nov 30, 2012

11567355 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LAVERNE DURFEE
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Appeal 2010-010693
Application 11/567,355
Technology Center 3700
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Before: MICHAEL L. HOELTER, SCOTT E. KAMHOLZ, and
JILL D. HILL, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/567,355

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 3-9, 11-12, and 14-21. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a drill bit. Claim 11,
reproduced below, is illustrative of the claimed subject matter:
11. A drill bit comprising:
a shank defining a longitudinal axis;
a lead screw extending along said longitudinal axis
having threads extending at a thread angle, said thread angle is
approximately between 4 and 20 degrees;
three ribs extending in a curve about the longitudinal axis
and a cutting edge formed along the edge of each of the ribs,
said cutting edge having a bevel angle where said thread angle
is less than said bevel angle.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Newton
Shaler
Brown
Lund
Ackart
Thomas
US 8,349X
US 298,786
US 530,923
US 808,245
US 3,387,511
US 6,612,788 B2
Aug. 8, 1834
May 20, 1884
Dec. 18, 1894
Dec. 26, 1905
Jun. 11, 1968
Sep. 2, 2003
Kobayashi
Wiker
US 2005/0169720 A1
US 2006/0083595 A1
Aug. 4, 2005
Apr. 20, 2006
Enke GB 2 219 229 A Dec. 6, 1989
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REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1 and 3-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Enke and Wiker. Ans. 4.
Claims 11, 12, 14, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Newton, Brown, and Lund. Ans. 5.
Claims 11, 12, 14, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Newton, Thomas, and Lund. Ans. 6.
Claims 15-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Brown, Lund, and Ackart. Ans. 7.
Claims 15-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Thomas, Lund, and Ackart. Ans. 8.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Newton, Ackart, and Lund. Ans. 9.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kobayashi, Shaler, and Thomas. Ans. 10.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kobayashi, Shaler, and Brown. Ans. 11.

ANALYSIS
1. Claims 1 and 3-9
Appellant argues these claims as a group; we therefore select claim 1
as representative and decide the appeal with respect to all claims in this
group on the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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The Examiner found that Enke1 discloses all limitations of claim 1
except the “first angle” and the ribs extending through a “twist angle of
between approximately 115 and 125 degrees.” Ans. 4. The Examiner
further found that Wiker discloses the first angle, and that the claimed extent
of the twist angle was discoverable with proper experimentation. Ans. 4-5.
The Examiner concluded that it would have been obvious to modify Enke to
have a “first angle” as shown in Wiker in order to reduce friction and heat
that would otherwise be generated by Enke’s side walls rubbing against the
bore wall, and that it would have been obvious to reach the claimed twist
angle from Enke’s disclosure as a result of proper experimentation, to
“provide a tool of sufficient strength that will adequately remove the chips
from the cutting region.” Ans. 4-5.
Appellant argues that (a) one skilled in the tool art “simply would not
have combined the spade bit of Wiker with the fluted drill bit of [Enke]”
because they are “two completely different types of drill bits”; (b) “[Enke]
does not disclose grooves extending in a ‘helical’ curve about the
longitudinal axis”; (c) the recited twist angle range could not have been
obtained through routine experimentation due to “a virtually unlimited
number of options available to the person of ordinary skill in the art” and
because the twist angle has not been recognized in the art as a result-
effective variable; and (d) neither reference describes two portions of the
ribs extending at two separate angles. Br. 12-13.
Appellant’s arguments do not apprise us of error in the rejection. As
to argument (a), the Examiner correctly explained that both Enke and Wiker
relate to “rotating tools having cutting edges for making a hole.” Ans. 13.

1 Referred to in the record as “GB ’229.”
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A preponderance of evidence in the record does not support Appellant’s
contention that they are “completely different.” As to argument (b), the
Examiner correctly pointed out that Enke expressly discloses that grooves
(and therefore the flutes) run along the bit at an angle of 15 degrees and
“slightly in the shape of an arc.” Ans. 13 (quoting Enke 7). The Examiner
found, and we agree, that Enke’s disclosure of ribs running along a bit
“slightly in the shape of an arc” and inclined to the bit’s axis meets the claim
limitation “ribs extending in a helical curve.” Appellant’s argument does
not explain how the Examiner’s finding is in error. As to argument (c), the
Examiner observed that the prior art need not recognize a parameter as a
result-effective variable so long as the Examiner sets forth an appropriate
discussion as to why that parameter is a result-effective variable. Ans. 14.
This the Examiner did in the discussion of the balance between tool rigidity
and chip removal needs. See id. Appellant does not explain how or why the
Examiner’s analysis is in error, and we find the Examiner’s analysis to be
reasonable. Argument (d) is non-responsive to the rejection because the
Examiner did not assert that either reference discloses both angles; rather,
the Examiner explained why it would have been obvious to incorporate
Wiker’s first angle into Enke’s bit. Argument (d) consequently does not
identify error in the articulated rationale for this combination.
For these reasons, we affirm the rejection of claims 1 and 3-9.
2. Claims 11, 12, 14, 18, and 19
a. Obviousness over Newton, Brown, and Lund
i. Claims 11, 14, 18, and 19
The Examiner found that Newton discloses all limitations of claim 11
except for the recited thread angle range and the requirement that the thread
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angle be less than a bevel angle. Ans. 5. The Examiner also found that
Brown discloses in Figure 3 a wood bit in which the lead screw has a thread
angle that “is smaller than the bevel angle formed by clearance face b and a
perpendicular to the tool axis.” Ans. 5. The Examiner further found that
Lund discloses that “various hardnesses of wood and the particular desired
quality of the workpiece will require different pitches and angles of the lead
screw.” Ans. 6 (citing Lund p. 1, ll. 25-35 and 82-88). The Examiner
concluded that it would have been obvious to make Newton’s thread angle
smaller than the bevel angle to ensure that the clearance surface will not bind
against the bottom of the hole, and that Lund establishes that it would have
been obvious to reach the claimed thread angle range through
experimentation. Ans. 6.
Appellant argues that (a) no rationale was given in the rejection to
combine Newton, Brown, and Lund; (b) neither Newton, Lund, or Brown
discloses that “the cutting edge of the ribs has a thread angle less than the
bevel angle of the cutting edge”; (c) Lund does not disclose the recited
thread angle range; and (d) Lund does not recognize thread angle as a result-
effective variable, and the experimentation required to find the claimed
thread angle range based on Lund’s disclosure would not have been routine.
Br. 14-15.
Appellant’s arguments do not apprise us of error in the rejection. As
to argument (a), we agree with the Examiner that a rationale for combination
was provided. See Ans. 5, 15. Argument (b) is inapposite because it is the
lead screw, not the ribs, that claim 11 requires to have the thread angle. To
the extent that Appellant intended this argument to be directed to the claim
as written, we agree with the Examiner’s analysis of Brown’s Figure 3 and
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find nothing in Appellant’s argument that explains how or why the
Examiner’s interpretation is not correct. Argument (c) is non-responsive to
the rejection; the Examiner acknowledged that Lund does not disclose the
claimed range and instead explained why it would have been obvious to
reach it; see Ans. 6; 16. As to argument (d), we agree with the Examiner
that Lund establishes thread angle as a result-effective variable that controls
how quickly a bit will penetrate wood; see Ans. 6; 16. Appellant’s argument
that the experimentation would not have been routine is insufficient to
overcome the Examiner’s finding in this regard.
For these reasons, we affirm the rejection of claim 11 as unpatentable
over Newton, Brown, and Lund. Appellant presents no arguments for
separate patentability of claims 14, 18, and 19. We affirm the rejection of
these claims for the reasons given above.
ii. Claim 12
Appellant argues that Lund does not disclose the specific pitch and
thread angle recited in claim 12. Br. 16. Appellant’s argument does not
apprise us of error because it is non-responsive to the Examiner’s finding
that the claimed values would have been obvious in view of Newton, Brown,
and Lund. We affirm the rejection of claim 12.
b. Obviousness over Newton, Thomas, and Lund
i. Claims 11, 14, 18, and 19
The Examiner found that Newton discloses all limitations of claim 11
except for the recited thread angle range and the requirement that the thread
angle be less than a bevel angle. Ans. 6. The Examiner also found that
Thomas discloses a bevel angle that is greater than a thread angle in view of
Thomas’s disclosure that the thread angle is selected in order to limit
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advancing speed of the bit so as not to cause the main cutting edge to bind.
Ans. 6. The Examiner further found that Lund discloses that “various
hardnesses of wood and the particular desired quality of the workpiece will
require different pitches and angles of the lead screw.” Ans. 7 (citing Lund
p. 1, ll. 25-35 and 82-88). The Examiner concluded that it would have been
obvious to make Newton’s thread angle smaller than the bevel angle to
ensure that the clearance surface will not bind against the bottom of the hole,
and that Lund establishes that it would have been obvious to reach the
claimed thread angle range through experimentation. Ans. 7.
Appellant argues that (a) Thomas’s Forstner bit is “a completely
different bit and functions completely different” from Newton and Lund’s
wood augers; (b) no rationale was given in the rejection to combine Newton,
Thomas, and Lund; (c) neither Newton, Lund, or Thomas discloses a thread
angle less than the bevel angle, and that Thomas in particular lacks
disclosure of any angles in the portion relied upon by the Examiner; (d)
Lund does not disclose the recited thread angle range; and (e) Lund does not
recognize thread angle as a result-effective variable, and the experimentation
required to find the claimed thread angle range based on Lund’s disclosure
would not have been routine. Br. 16-18.
Appellant’s arguments do not apprise us of error in the rejection. As
to argument (a), we agree with the Examiner’s findings that “all of the bits
are wood bits having threaded lead screws” and are “rotary tools used to
make holes in workpieces” and therefore analogous; see Ans. 17. A
preponderance of evidence in the record does not support Appellant’s
contention that they are “completely different.” As to argument (b), we
agree with the Examiner that a rationale for combination was provided. See
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Ans. 6, 17. As to argument (c), we agree with the Examiner’s explanation as
to how Thomas discloses the relevant angles, and we find nothing in
Appellant’s argument that explains how or why the Examiner’s
interpretation is not correct. Arguments (d) and (e) are identical to those
given with respect to the rejection of claim 11 over Newton, Brown, and
Lund, and we find that they do not apprise us of error for the reasons given
above.
For these reasons, we affirm the rejection of claim 11 as unpatentable
over Newton, Thomas, and Lund. Appellant presents no arguments for
separate patentability of claims 14, 18, and 19. We affirm the rejection of
these claims for the reasons given above.
ii. Claim 12
Appellant argues that Lund does not disclose the specific pitch and
thread angle recited in claim 12. Br. 18. Appellant’s argument does not
apprise us of error because it is non-responsive to the Examiner’s finding
that the claimed values would have been obvious from the teachings of
Thomas and Lund, not just Lund alone. Ans. 6-7. We affirm the rejection
of claim 12.
3. Claims 15-17
Claims 15-17 were rejected for obviousness over Newton, Brown,
Lund, and Ackart, and also for obviousness over Newton, Thomas, Lund,
and Ackart. Appellant argues for patentability solely on the basis of the
arguments presented with respect to claim 11. Br. 18. We affirm both
rejections for reasons similar to those given above.
4. Claim 20
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Claim 20 was rejected for obviousness over Newton, Ackart, and
Lund. Appellant argues that Ackart does not disclose an included angle of
the claimed 52 degrees (or even of any included angle less than 60 degrees),
and that Lund does not disclose a first angle of a lead screw being
approximately 8 degrees. Br. 19. Appellant’s arguments do not apprise us
of error because they are non-responsive to the Examiner’s finding that it
would have been obvious to experiment with various angles in view of
Newton, Ackart, and Lund. Ans. 9-10. We affirm this rejection.
5. Claim 21
Claim 21 was rejected for obviousness over Kobayashi, Shaler, and
Thomas, and also for obviousness over Kobayashi, Shaler, and Brown.
Among other things, the Examiner found that Kobayashi discloses a bit in
which ribs extend into a conical region between reference numbers 1 and 1a
in Figure 1. Ans. 10.
Appellant argues that Thomas and Brown both fail to disclose the
claimed feature that the “thread angle is less than said bevel angle.” Br. 19.
This argument does not apprise us of error in either rejection. As we
explained above, we agree with the Examiner’s interpretations of Thomas
and Brown, and we find nothing in Appellant’s arguments that explains how
the Examiner interpretations are not correct.
Appellant also argues that Kobayashi does not disclose that the second
portion of the ribs “extend helically about the longitudinal axis” because
while Kobayashi’s grooves extend into the narrowing portion of the shaft,
they are not helically shaped in this position, and because they do not extend
“helically about each other within this portion.” Br. 19-20. This argument
does not apprise us of error. As the Examiner found, the grooves, and
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therefore necessarily the flutes, extend into the conical region at the same
angle, for however short a distance. Claim 21 imposes no limitation on the
length of the second portion of the ribs; consequently, Kobayashi meets the
limitation at issue.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1, 3-9,
11-12, and 14-21 is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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