Ex Parte Hobohm et al

Patent Trial and Appeal Board

Aug 22, 2017

13397651 (P.T.A.B. Aug. 22, 2017)

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.
13/397,651 02/15/2012 Uwe Hobohm K-03092-US-NP 4072
27877 7590 08/24/2017
KFNNAMFTAT TNC EXAMINER
Intellectual Property Department
P.O. BOX 231
VITALE, MICHAEL J
1600 TECHNOLOGY WAY
LATROBE, PA 15650
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
larry.meenan@kennametal.com
k-corp.patents @kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE HOBOHM, HEINRICH GEORG MANNER,
and WERNER ZITZMANN
Appeal 2016-001918
Application 13/397,651
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Uwe Hobohm et al. (Appellants) appeal under 35 U.S.C. § 134 from
the rejection of claims 1—4 and 6—14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2016-001918
Application 13/397,651
CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A tool holder for fastening to a machine tool and for
reversibly receiving a rotary tool comprising a rear machine
part made of a tool steel for reversibly fastening to the
machine tool, a front clamping part made of a tool steel for
reversibly receiving the tool, and an intermediate part made
of a heavy metal disposed between the machine part and the
clamping part, wherein the rear machine part includes a
receiver having an inner thread, and wherein the intermediate
part includes a fastening shank having an outer thread, and
wherein the fastening shank of the intermediate part is
threaded into the receiver of the rear machine part.
The prior art relied upon by the Examiner in rejecting the claims on
REJECTIONS
I. Claims 1,2, and 6—12 stand rejected under 35 U.S.C. § 103(a)
as over Haimer ’952 and Haimer ’947.
II. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Haimer ’952, Haimer ’947, and Takahashi.
1 Both the Examiner and Appellants refer to the machine translation of
Haimer ’952 in citations to this patent. See, e.g. Final Act. 2; Appeal Br. 10.
For convenience, we do so as well. Accordingly, all citations to Haimer
’952 in this Decision are citations to its machine translation.
REFERENCES
appeal is:
Haimer ’947 US 2009/0003947 A1
Takahashi US 7,028,997 B2
Gulbrandsen US 4,383,784
Haimer ’9521 WO 2006/050952 A1
Jan. 1, 2009
Apr. 18,2006
May 17, 1983
May 18,2006
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Application 13/397,651
III. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Haimer ’952, Haimer ’947, and Gulbrandsen.
DISCUSSION
Rejection I
Appellants argue claims 1, 2, and 6—12 together. See Appeal Br. 13.
We select claim 1 as the representative claim, and claims 2 and 6—12 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Haimer ’952 discloses all of the limitations
of claim 1 except for “the first intermediate portion’s (60d) fastening shank
(64d) being threaded into receiver (22d) of the machine tool clamping
portion (16d).” Final Act. 4. The Examiner further finds that Haimer ’947
shows a tool holder “having a coupling formation (12f) with an internal
thread (46f).” Id. The Examiner observes that “[a] threaded engagement is
thus formed between these elements via the external (44f) and internal
threads (46f) [0070].” Id. Based on these facts, the Examiner determines
that it would have been obvious
to have substituted the solder material bond between the
fastening shank and the receiver for a threaded engagement, as
this is a substitution of one known securing means for another in
order to obtain the predictable result of the first intermediate
portion being fastened to the machine tool clamping portion. In
doing so, the fastening shank would be provided with an external
thread, and the receiver would be provided with an internal
thread.
Id.
Appellants contend that “Haimer ’952 teaches a vibration-damped
tool holder that teaches away from the modification asserted in the Office
action.” Appeal Br. 10. In support of this contention, Appellants note that
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“[i]n Haimer ’952, the vibration damping is achieved by preferably press
fitting or cohesively securing all the various parts of the tool holder by
applying an axial assembly force to the tool holder.” Id. (emphasis omitted)
(citing Haimer ’952 | 8). Appellants further note that Haimer ’952 states
that “an advantageous embodiment of the tool holder comprises no
additional connecting means for connecting the machine tool coupling part
and the tool clamping part are required, but is achieved by at least one of the
bearing surfaces and the associated abutment surface are formed to be self­
locking.” Id. (emphasis omitted) (citing Haimer ’952 120). Noting that
Haimer ’952 shows conical contact and mating surfaces, Appellants further
assert that “[i]t is respectfully submitted that such conical surfaces are
difficult, if not impossible, to be threaded to one another.” Id. Based on this
assertion, Appellants argue that “[t]o modify the conical contact and mating
surfaces of Haimer ’952 with a threaded connection would destroy the
vibration damping capability of the tool holder of [Haimer ’952].” Id.
Teaching away requires that the reference “criticize, discredit, or
otherwise discourage” the use of other alternatives. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Here, the portions of Haimer ’952 cited
by Appellants do not criticize, discredit, or otherwise discourage other
mechanisms for securing the various parts of the tool holder together such as
the threads used in Haimer ’947. We will not read into a reference a
teaching away from a proposed combination when no such language exists.
See Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, Appellants provide no
evidence or persuasive argument that the proposed modification would
destroy the damping capability of Haimer ’952’s tool holder. Whereas the
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Application 13/397,651
Examiner provides numerous examples of patents illustrating threaded
conical contact and mating surfaces. See Ans. 9. Accordingly, Appellants’
argument is unconvincing.
In addition, Appellants contend that “Haimer’952 teaches a tool
holder having a different configuration than the tool holder of Haimer ’947,
and therefore one skilled in the art would not have a rational motivation to
modify the tool holder of Haimer’952 with the teachings of Haimer ’947.”
Appeal Br. 11. In support of this contention, Appellants argue that “the tool
holder of Haimer ’947 includes a sleeve 20f that is directly threaded onto the
coupling formation 12f and does not include an intermediate portion at all.”
Id. (emphasis omitted); see also id. at 13. Further noting that “the threaded
engagement between the external thread 44f on the tool holder lOf and an
internal thread 46f on the sleeve 20f of Haimer ’947 is not a conical or
tapered surface, unlike the conical contact surfaces of the intermediate
portions 60d, 62d of Haimer ’952,” Appellants argue that “[bjecause the tool
holders of Haimer ’952 and Haimer ’947 have significantly different
configurations, one skilled in the art would not look to the teachings of
Haimer ’947 and have a rationale motivation to modify the tool holder of
Haimer ’952.” Id. at 11—12.
However, “it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
the teachings of references does not involve an ability to combine their
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specific structures.” In reNievelt, 482 F.2d 965, 968 (CCPA 1973). The
fact that Haimer ’952 and Haimer ’947 have different configurations is not
in dispute. Moreover, Appellants do not explain why the combined
teachings of Haimer ’952 and Haimer ’947 would not suggest the use of
threading as claimed. Thus, Appellants’ arguments do not apprise us of
error. Further, Appellants’ argument that one skilled in the art would not
modify Haimer ’952’s conical contact surfaces to have threads is
unconvincing for the reasons discussed supra.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2 and 6—12, which fall therewith.
Rejections II and III
Appellants do not present separate arguments for the patentability of
claims 3 and 4 (Rejection II) or claims 13 and 14 (Rejection III). Appeal Br.
13. Rather, Appellants contend that neither Takahashi nor Gulbrandsen
overcome the shortcomings in the combined teachings of the Haimer
references. See id. As we find no shortcomings in these references,
Appellants’ argument is unconvincing.
We sustain the Examiner’s decisions rejecting claims 3, 4, 13, and 14.
DECISION
The Examiner’s rejections of claims 1—4 and 6—14 are AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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