Ex Parte Morrison et al

Patent Trial and Appeal Board

Apr 29, 2016

12273774 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/273,774 11/19/2008
27877 7590 05/03/2016
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
FIRST NAMED INVENTOR
Michael G. Morrison
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.
K-2707USUS1 8977
EXAMINER
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
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 MICHAEL G. MORRISON and SRIKANTH BONTHA
Appeal2014-003798
Application 12/273,774
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael G. Morrison and Srikanth Bontha (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C.
§ 103(a): (1) claims 9, 10, and 13-15 as unpatentable over Tsujimura '591
(US 4,834,591; iss. May 30, 1989) and Tsujimura '391 (US 4,883,391; iss.
Nov. 28, 1989); (2) claim 12 as unpatentable over Tsujimura '591,
Tsujimura '391, Satran (US 6,607,334 B2; iss. Aug. 19, 2003), and
Lundblad (US 6,126,366; iss. Oct. 3, 2000); 1 (3) claims 18-21 as
1 Claim 9 was listed in the heading of this rejection along with claim 12 but is
not addressed in the body thereof. See Final Act. 4-5; see also Ans. 5-6. We
Appeal2014-003798
Application 12/273,774
unpatentable over Tsujimura '591, Tsujimura '391, and Satran; and (4)
claim 16 as unpatentable over Tsujimura '591, Tsujimura '391, and Johnson
(US 5,893,683; iss. Apr. 13, 1999). Claims 1-8, 11, and 17 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OURAUTHORITYUNDER37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a cutting insert for a ball end
mill." Spec. para. 1; Figs. 1-8. Claims 9, 18, and 20 are independent.
Claim 9 is illustrative of the claimed subject matter and recites:
9. A ball end mill, comprising:
a body having a generally hemispherical forward end
portion, a rearward end portion and a central axis, the generally
hemispherical forward end portion including an insert-receiving
pocket, the insert-receiving pocket including a bottom support
surface, an axial support surface, a radial support surface, and a
free surface between the axial support surface and the radial
support surface; and
a cutting insert including a first substantially planar
surface, a second substantially planar surface, a first curvilinear
side surface, a second curvilinear side surface, a comer radius
between the first and second curvilinear side surfaces, a first pair
of cutting edges formed at an intersection between the first
substantially planar surface and the first and second curvilinear
side surfaces, and a second pair of cutting edges formed at an
intersection between the second substantially planar surface and
the first and second curvilinear side surfaces, wherein the cutting
insert is mirror symmetric about all three central x-, y- and z-
consider inclusion of claim 9 in the heading of this rejection to be an
inadvertent error by the Examiner. Accordingly, we do not consider claim 9
to be part of this particular rejection and address only claim 12. See Br. 17,
note 1.
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Application 12/273,774
axes,
wherein the cutting insert is mounted in the insert-
receiving pocket in such a way that at least a portion of the
cutting insert lies along the central axis of the body.
ANALYSIS
Obviousness over Tsujimura '591 and Tsujimura '391
Claims 9, 10, and 13-15
Independent claim 9 recites, in relevant part, "a corner radius between
the first and second curvilinear side surfaces." Br. 19, Claims App. (italics
added).
The Examiner finds that Tsujimura '591 discloses the limitations of
claim 9 (Final Act. 2-3) except that Tsujimura '591 "teaches a cutting insert
having a comer between the first and second curvilinear sides, but does not
teach the comer has a radius" (Id. at 4). The Examiner finds that Tsujimura
'391 teaches "a cutting insert having a comer radius between a first and
second curvilinear surface." Id. The Examiner concludes it would have
been obvious
to shape the short cutting edge of Tsujimura '591 as taught by
Tsujimura '391 to create a cutting edge having a comer radius
thereby increasing the size of the cutting surface. A change in
form or shape is generally recognized as being within the level
of ordinary skill in the art, absent any showing of unexpected
results. In re Dailey et al., 149 USPQ 47.
Id. The Examiner further concludes:
In the event that one may argue, the first and second curvilinear
sides of Tsujimura '591 do not meet at a comer having a radius,
Tsujimura '391 teaches a cutting insert (20) having a comer
radius (34) between a first and second curvilinear surface (32).
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It would have been obvious to one having ordinary skill in the art
at the time of invention to shape the short cutting edge of
Tsujimura '591 as taught by Tsujimura '391 to create a cutting
edge having a comer radius, which reduces the stress
concentration factors experienced by the comer cutting edge and
also aids in increasing the strength of the cutting edge.
Ans. 4-5; see also id. at 10.
Appellants contend that "Tsujimura '591 teaches away from having a
comer radius between the first and second curvilinear surfaces." Br. 13.
According to Appellants: "Tsujimura '591 teaches a cutting insert 10 with a
front face 12, a rear face 14 and two pairs of first and second sides faces 16,
.IB extending perpendicular to the front and rear faces 12, 14." Id. (citing
Tsujimura '591 at col. 3, 11. 4-11). Appellants further contend that "the
opposite second side face 18 [of Tsujimura '591] engages the insert pocket,
as clearly seen in Figs. 6 and 8" and "it is physically impossible to modify
the second side face 18 [of Tsujimura '591] with a comer radius because the
cutting insert 10 would be prevented [from being] mounted in the insert
pocket." Id. at 14 (emphasis added).
Appellants' argument is persuasive. At the outset, Figures 6 and 8 of
Tsujimura '591 are reproduced below.
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Application 12/273,774
Fig.6
16b,20b 18 24
Fig.8
34 30
0
Figure 6 of Tsujimura '591 "is a plan view of a cutter insert" and
Figure 8 "is a front elevation of a ball end mill employing the insert of FIG.
6." Tsujimura '591, col. 2, 11. 56-57 and 60-61, respectively.
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The Examiner's rationales for combining Tsujimura '591 with
Tsujimura '391, i.e., to reduce stress concentration in the comer area and
increase strength of the cutting edge (see Ans. 5, 10) do not address
Appellants' argument for why Tsujimura '591 discourages having a comer
radius between first and second curvilinear surfaces.2 Figures 8 and 103 of
Tsujimura '591 depict the planar end face 18 seated against a similarly
planar surface of the insert receiving pocket. Reshaping the planar surface
18 ofTsujimura '591 with a rounded comer radius, as taught by Tsujimura
'391, would prevent proper seating of the insert against the planar pocket
surface. In other words, we agree with Appellants that the second (rear)
planar end surface 18 of Tsujimura '591 (see Figures 6 and 8 ofTsujimura
'591, supra) engages the insert pocket and to modify the second side face
18 with a comer radius would prevent the cutting insert 10 from being
mounted in the insert pocket. See Br. 14. A reference teaches away when
it would have led one of ordinary skill in the art in a direction divergent
from that chosen by Appellant (see In re Haruna, 249 F.3d 1327, 1335
(Fed. Cir. 2001) and In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)), or
when the proposed modification would change the basic principle of
2 The Specification describes a "comer radius" as follows:
The cutting insert 40 includes a first curvilinear side surface 46
and a second curvilinear side surface 48, and a comer radius 50,
52 between the first and second curvilinear side surfaces 46, 48.
As shown in FIGS. 6 and 7, the first and second side surfaces 46,
48 are substantially elliptical in shape. As shown in FIG. 8, the
plane formed by the comer radius 50 is substantially parallel to
the plane formed by the comer radius 52.
Spec. para. 23, Figs. 5-8.
3 Figure 10 of Tsujimura '591 "is a side elevation of a part of the end mill of
FIG. 8." Tsujimura '591, col. 2, 11. 63-64.
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operation of the primary reference (see In re Ratti, 270 F .2d 810 (CCP A
1959)).
In view of the foregoing, we find that Tsujimura '591 discourages
(teaches away from) having a comer radius between the first and second
curvilinear surfaces as called for in claim 9, and it would not have been
obvious to one of ordinary skill in the art to modify Tsujimura '591 with
Tsujimura '391 in the manner proposed by the Examiner.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 9 and its respective dependent
claims 10 and 13-15 as unpatentable over Tsujimura '591 and Tsujimura
'391.
Obviousness over Tsujimura '591, Tsujimura '391, Satran, and Lundblad
Claim 12
Claim 12 depends directly from claim 9. Br. 19, Claims App. The
Examiner relies on the same unsupported findings and conclusions for claim
12 as discussed above for claim 9. See Final Act. 4-5; Ans. 5-6. The
Examiner does not rely on Satran or Lundblad to remedy the deficiency of
Tsujimura '591 and Tsujimura '391.
Accordingly, we likewise do not sustain the Examiner's rejection of
dependent claim 12 as unpatentable over Tsujimura '591, Tsujimura '391,
Satran, and Lundblad.
Obviousness over Tsujimura '591, Tsujimura '391, and Satran
Claims 18-21
Similar to independent claim 1, independent claims 18 and 20 call for
"a comer radius between the first and second curvilinear side surfaces." Br.
20-22, Claims App. The Examiner relies on the same unsupported findings
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Application 12/273,774
and conclusions for claims 18 and 20 as discussed above for claim 9. See
Final Act. 5-7; Ans. 7-9. The Examiner does not rely on Satran to remedy
the deficiency of Tsujimura '591 and Tsujimura '391.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 18 and 20 and their respective dependent claims 19 and
21 as unpatentable over Tsujimura '591, Tsujimura '391, and Satran.
Obviousness over Tsujimura '591, Tsujimura '391, and Johnson
Claim 16
Claim 16 depends directly from claim 9. Br. 20, Claims App. The
Examiner relies on the same unsupported findings and conclusions for claim
16 as discussed above for claim 9. See Final Act. 7-8; Ans. 9. The Examiner
does not rely on Johnson to remedy the deficiency of Tsujimura '591 and
Tsujimura '391.
Accordingly, we likewise do not sustain the Examiner's rejection of
dependent claim 16 as unpatentable over Tsujimura '591, Tsujimura '391, and
Johnson.
NEW GROUNDS OF REJECTION
Claims 18-21
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
18-21under35 U.S.C. § 103(a) as unpatentable over Tsujimura '391 and
Satran.
At the outset, we note that independent claims 18 and 20 do not
incorporate the limitation "wherein the cutting insert is mirror symmetric
about all three central x-, y- and z-axes" as recited in independent claim 9.
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Claim 18 requires "a comer radius between the first and second
curvilinear side surfaces." Br. 20, Claims App. We agree and adopt as our
own the Examiner's finding that Tsujimura '391 discloses a comer radius
between the first and second curvilinear side surfaces. See Final Act. 4, 7;
Ans. 4-5, 8, 10. Appellants do not dispute this finding of the Examiner. See
Br. 9-18. Claim 18 additionally requires "at least one of the axial support
surface and the radial support surface [of the insert-receiving pocket] having
a contact area defined by a protrusion" and "at least one of the first
curvilinear side surface and the second curvilinear side surface having at
least one contact area defined by a recess that contacts the at least one
contact area of the insert-receiving pocket when the cutting insert is mounted
in the insert-receiving pocket." Br. 20, Claims App. We further agree and
adopt as our own the Examiner's findings that
Satran teaches a cutting insert pocket having radial and axial
support surface having a polygonal shaped protrusion extending
thereform [sic] (70, 72), \vhich mates \vith a recess
corresponding in shape side surface of an insert ( 54) to prevent
rotational movement of the cutting insert when the cutting insert
is mounted in the insert-receiving pocket, in which the recesses
are triangular, square, and rectangular in cross section.
Final Act. 6-7; see also Ans. 8; Satran, col. 1, 1. 66 - 2, 1. 5; col. 5, 11. 48-57;
col. 6, 11. 8-15; Figs. 6, 8, and 9. Appellants do not dispute these findings of
the Examiner. See Br. 17-18.
It would have been obvious to one of ordinary skill in the art to
provide the cutting insert and pocket of Tsujimura '391 with a recess to
contact a protrusion, as taught by Satran, to prevent unwanted movement as
forces are exerted on the insert during a machining process, to maintain
cutting accuracy and precision. See Satran, col. 1. 1. 66-col. 2, 1. 5, col. 2, 11.
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48-50 and 60-67, col. 3, 11. 3-13, col. 4, 11. 54-58, and col. 5, 11. 35-57;
Figs. 6, 8, and 9. Accordingly, we conclude that claim 18 is unpatentable
over the combined teachings of Tsujimura '391 and Satran.
Claim 19 depends directly from claim 18. Br. 21, Claims App. Claim
19 recites "wherein the second curvilinear side surface has two contact areas
and the first curvilinear side surface has two contact areas." Id. It would
have been obvious to one of ordinary skill in the art to provide the first and
second curvilinear side surfaces of the cutting insert of Tsujimura '391 with
two contact areas as doubling the contact area would serve to enhance
positional stability of the insert during a machining process. Moreover, we
do not consider improved stability of the insert during machining due to a
duplication of contact areas on the first and second curvilinear side surfaces
of the cutting insert to be a new or unexpected result. See In re Harza, 274
F.2d 669, 774 (CCPA 1960) ("It is well settled that the mere duplication of
parts has no patentable significance unless a new and unexpected result is
produced."). Accordingly, we conclude that claim 19 is unpatentable over
the combined teachings of Tsu j imura '3 91 and Satran.
Claim 20 requires "a comer radius between the first and second
curvilinear side surfaces." Br. 21, Claims App. We agree and adopt as our
own the Examiner's finding that Tsujimura '391 discloses a comer radius
between the first and second curvilinear side surfaces. See Final Act. 4, 7;
Ans. 4-5, 8, 10. Appellants do not dispute this finding of the Examiner. See
Br. 9-18. Claim 20 additionally requires an insert-receiving pocket
including "an axial support surface having a polygonal-shaped protrusion
extending therefrom, and a radial support surface having a polygonal-shaped
protrusion extending therefrom" and
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Application 12/273,774
wherein the first curvilinear side surface and the second
curvilinear side surface [of the cutting insert] each has a recess
corresponding in shape to the polygonal shaped protrusion of the
insert-receiving pocket, whereby the polygonal shaped
protrusion of the insert-receiving pocket mates with at least one
of the recesses of the cutting insert to prevent rotational
movement of the cutting insert when the cutting insert is mounted
in the insert-receiving pocket.
Br. 21, Claims App.
We further agree and adopt as our own the Examiner's findings that
Satran teaches a cutting insert pocket having radial and axial
support surfaces having a polygonal shaped protrusion extending
therefrom (70, 72), which mates with a recess corresponding in
shape side surface of an insert ( 54) to prevent rotational
movement of the cutting insert when the cutting insert is mounted
in the insert-receiving pocket, in which the recesses are
triangular, square, and rectangular in cross section.
Final Act. 6-7; see also Ans. 8; Satran, col. 1, 1. 66 - 2, 1. 5; col. 5, 11. 48-57;
col. 6, 11. 8-15; Figs. 6, 8, and 9. Appellants do not dispute these findings of
the Examiner. See Br. 17-18.
It would have been obvious to one of ordinary skill in the art to
provide the cutting insert and pocket of Tsujimura '391 with a recess to mate
with a protrusion, as taught by Satran, to prevent unwanted movement as
forces are exerted on the insert during a machining process, to maintain
cutting accuracy and precision. See Satran, col. 1. 1. 66-col. 2, 1. 5, col. 2, 11.
48-50 and 60-67, col. 3, 11. 3-13, col. 4, 11. 54-58, and col. 5, 11. 35-57;
Figs. 6, 8, and 9. Accordingly, we conclude that claim 20 is unpatentable
over the combined teachings of Tsujimura '391 and Satran.
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Claim 21 depends directly from claim 20. Br. 22, Claims App. Claim
21 recites "wherein the protrusions and recesses are triangular, square,
rectangular or diamond in cross-sectional shape." Id. We agree and adopt
as our own the Examiner's finding that "the recesses [of the Satran insert]
are triangular, square, and rectangular in cross section." Final Act. 6-7; See
also Ans. 8; Satran, Fig. 6, which shows recesses 54 that are substantially
rectangular in shape and Satran, Fig. 8, which shows protrusions 70, 72 that
are substantially rectangular in shape. Appellants do not dispute this finding
of the Examiner. See Br. 17-18. It would have been obvious to provide the
cutting insert and pocket of Tsujimura '391 with "protrusions and recesses
[that] are triangular, square, rectangular or diamond in cross-sectional shape,
as taught by Satran, because, for example, correspondingly shaped
protrusions and recesses would enhance mating and prevent unwanted
movement (see Satran col. 1, 1. 66 to 2, 1. 5) as forces are exerted on the
insert during a machining process, to maintain cutting accuracy and
precision. Moreover, modifying a ball end mill to include protrusions and
recesses of such cross-sectional shapes would have been within the level of
ordinary skill in the art. In other words, we do not consider a ball end mill
including protrusions and recesses having the recited cross-sectional shapes
to be critical or to achieve unexpected results. Accordingly, we conclude
that claim 21 is unpatentable over the combined teachings of Tsujimura '391
and Satran.
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DECISION
We REVERSE the decision of the Examiner to reject claims 9, 10,
12-16, and 18-21.
We enter new grounds of rejection, pursuant to 37 C.F.R. § 41.50(b),
of claims 18-21under35 U.S.C. § 103(a) as set forth supra.
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[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 Appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds 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. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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