Ex Parte Rowlett et al

Patent Trial and Appeal BoardApr 13, 2016

13471398 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/471,398 05/14/2012 27877 7590 04/15/2016 KENNAMETAL INC Intellectual Property Department P.O. BOX231 1600 TECHNOLOGY WAY LATROBE, PA 15650 FIRST NAMED INVENTOR Don C. Rowlett 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-4154USUS1 1085 EXAMINER SINGH, SUNIL ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 04/15/2016 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 DON C. ROWLETT and RANDALL W. OJANEN Appeal 2014-003178 1,2 Application 13/471,398 Technology Center 3600 Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and BRADLEY B. BAY AT, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1---6, 8-14, 16, and 18-21. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. According to Appellants, "the ... invention pertains to a rotatable cutting tool that is useful for the impingement of earth strata wherein the cutting tool body possesses improved design so as to provide for improved 1 Our decision references Appellants' Specification ("Spec.," filed May 14, 2012) and Appeal Brief ("Br.," filed Sept. 16, 2013), as well as the Examiner's Answer ("Answer," mailed Oct. 28, 2013). 2 Appellants identify Kennametal Inc., as the real party in interest. Br. 3. Appeal2014-003178 Application 13/471,398 performance characteristics for the rotatable cutting tool." Spec. i1 1. We reproduce, below, independent claim 1 as representative of the appealed claims. 1. A rotatable cutting tool for use in impinging earth strata, the rotatable cutting tool comprising: a cutting tool body having a central longitudinal axis, the cutting tool body including a head portion, a collar portion axially rearward of the head portion, and a shank portion axially rearward of the collar portion; and a hard cutting tip affixed to the head portion of the cutting tool body, wherein the head portion includes: a first head section adjacent to an axial forward end of the head portion, the first head section comprising a plurality of first side faces wherein adjacent first side faces meet to form a corresponding plurality of first common edges; and a second head section adjacent to an axial rearward end of the head portion, the second head section comprising a plurality of second side faces wherein adjacent second side faces meet to form a corresponding plurality of second common edges, wherein the plurality of first side faces are offset from the plurality of second side faces such that none of the plurality of first common edges are aligned with any of the plurality of second common edges. Br., Claims App. REJECTION AND PRIOR ART The Examiner rejects claims 1---6, 8-14, 16, and 18-21 under 35 U.S.C. Â§ 103(a) as unpatentable over Fader (US 2012/0167420 Al, pub. 2 Appeal2014-003178 Application 13/471,398 July 5, 2012) and Bauschulte (US 6,354,771 Bl, iss. ivfar. 12, 2002). See Answer 2---6. ANALYSIS Appellants argue the rejection of claim 1 is in error, essentially, because "there is no motivation for combining [the references] because these references teach away from one another[,] and any attempt at modifying Fader ... with the teachings of Bauschulte ... would destroy the individual teachings of ... Fader ... and render it inoperable for its intended purpose." Br. 12. We do not find Appellants' arguments to be persuasive of error, and, thus, we sustain the rejection. More specifically, Appellants argue that [f]irst, it will be easily appreciated that Fader ... and Bauschulte ... clearly teach away from each other in that Fader ... specifically provides for the aligned faces and edges (e.g. faces 22, 32[,] and edges 24, 34), whereas Bauschulte ... provides for offset (i.e.[,] not aiigned) edges and spatiai areas. Appellant asserts that the distinct and opposite teachings of these references would not motivate one of ordinary skill in the art to look at these references and combine the same to obtain the invention recited in independent [ c ]laim 1. Br. 13. We are unpersuaded by Appellants' argument, however, inasmuch as Appellants do not point to anything in either Bauschulte or Fader that "criticiz[es], discredit[s], or otherwise discourage[s]" the Examiner's proposed modification of Fader based on the teaching of Bauschulte. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). It is not sufficient for Appellants to identify differences between Fader and Bauschulte, and rely on these differences as proof of teaching away. See, e.g., In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). 3 Appeal2014-003178 Application 13/471,398 Appellants further argue that "[ s ]econd, any attempt at modifying Fader ... with the teachings of Bauschulte ... to obtain the invention recited in independent [ c ]laim 1 ... would destroy the individual teachings of ... Fader ... and render it inoperable for its intended purpose." Br. 13. First, we note that many times an obviousness rejection is based on a modification to a reference, and, thus, Appellants' argument that the Examiner's modification of Fader "would destroy the individual teachings" of Fader simply because Fader is being modified is not persuasive of error. In addition, Appellants' remarks in the Appeal Brief are neither sufficient to establish that Fader's intended purpose is to "have at least one pair of opposite sides that are parallel to each other to enable the pick 10 to be pressed into shape" nor sufficient to establish that this intended purpose would be destroyed were Fader to be "modified to include the offset edges and spatial areas (faces) of Bauschulte." Br. 13. See Answer 5. Based on the foregoing, we sustain the obviousness rejection of claim 1. Appellants' arguments for each of independent claims 1, 8, and 14 are similar. See Br. 14--15. Appellants argue the remaining, dependent claims are allowable for the same reasons as the independent claims from which they depend. See id. at 15. Thus, we also sustain the rejection of claims 2---6, 8-14, 16, and 18-21. DECISION We AFFIRM the Examiner's rejection of claims 1---6, 8-14, 16, and 18-21under35 U.S.C. Â§ 103. 4 Appeal2014-003178 Application 13/471,398 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5