Ex Parte Sampath et al

Patent Trial and Appeal BoardMar 31, 2017

13152389 (P.T.A.B. Mar. 31, 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. 13/152,389 06/03/2011 Karthik Sampath K-3046USUS1 6784 27877 7590 04/04/2017 KFNNAMFTAT TNC EXAMINER Intellectual Property Department P.O. BOX 231 GATES, ERIC ANDREW 1600 TECHNOLOGY WAY LATROBE, PA 15650 ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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 KARTHIK SAMPATH and ARMIN JOSEF ZIMMERMANN Appeal 2015-007029 Application 13/152,389 Technology Center 3700 Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-007029 Application 13/152,389 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a rotary cutting tool having a coated cutting tip and coolant holes, and a method of fabricating the cutting tool. Claims 1 and 6 are independent, with claims 2—5 ultimately depending from claim 1 and claims 7—15 ultimately depending from claim 6. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cutting tool for performing hole-cutting operations on a workpiece when the cutting tool is rotated about a central longitudinal axis, the cutting tool comprising: a generally cylindrical body having a first end structured to engage the workpiece and an opposite second end structured to be mounted to a machine tool; a groove formed in the first end of the generally cylindrical body, the groove disposed generally transverse to the longitudinal axis; and a nib portion disposed in, and joined to, the groove via a brazing process. THE CLAIMED SUBJECT MATTER REFERENCES Omori Katayama Karlsson Kim US 5,137,398 US 5,443,337 US 5,863,162 US 7,997,836 B2 Aug. 11, 1992 Aug. 22, 1995 Jan. 26, 1999 Aug. 16, 2011 2 Appeal 2015-007029 Application 13/152,389 REJECTIONS Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as anticipated by Omori. Final Act. 2. Claims 2, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Omori and Kim. Id. at 3. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Omori and Karlsson. Id. at 4. Claims 6—9 and 13—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Omori, Katayama, and Kim. Id. at 5. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Omori, Katayama, Kim, and Karlsson. Id. at 8. ANALYSIS Claims 1 and 3—Anticipation—Omori Claim 1 recites, inter alia, a cutting tool comprising a groove formed in the first end of a generally cylindrical body, the groove disposed generally transverse to the longitudinal axis of the cylindrical body, and a “nib portion disposed in, and joined to, the groove via a brazing process.” Br. 12 (Claims Appx.). The Examiner finds that Omari teaches all of the limitations of claim 1, except for the requirement that the nib portion be joined to the groove via a brazing process. Final Act. 2, 6. The Examiner contends, however, that this limitation is a “product-by-process” limitation, which “does not further limit the claim beyond the structural limitations cited in the claim.” Id. at 2—3 (citing In re Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985)). Appellants respond that Omari’s device differs structurally from the product recited in claim 1. Appellants contend, “a brazed connection is not the same structure as a mechanical connection such as described by Omori.” 3 Appeal 2015-007029 Application 13/152,389 Br. 4—5. According to Appellants, joining the nib to the groove via brazing results in the nib “generally permanently fixed therein,” whereas “Omori merely discloses arrangements which use a ‘throw-away’ type tip” that is “merely selectively coupled to the body portion via a disengageable, mechanical coupling.”1 Id. at 4 (citing Omori, col. 12, second full paragraph) (emphasis omitted). In its response, the Examiner acknowledges, “[wjhile the method of joining of Omori is different from that disclosed by the instant application, the teachings of Omori meet the product limitations of the claims, as the final product is usable for performing hole-cutting operations on a workpiece.” Ans. 8. In In re Garnero, 412 F.2d 276 (CCPA 1969), our reviewing court’s predecessor noted that terms that may be construed as process steps, such as “intermixed,” “ground in place,” “press fitted,” “etched,” and “welded,” have also been held capable of construction as structural limitations. Id. at 279. Indeed, such terms “are commonly and by default interpreted in their structural sense,” and “should be given their ordinary meanings with regard to the claimed product’s structure.” Regents of the Univ. of Minn. v. AG A Med. Corp., Ill F.3d 929, 938 (Fed. Cir. 2013) (internal citations and quotation marks omitted). The term at issue here, “joined . . . via a brazing process,” is similar to these terms—particularly “welded.”2 As such, “joined . . . via a brazing 1 As depicted in Figure 4 of Omori, Omori discloses insert 31 fitted in shank 32 so that the insert and shank are connected together “without a screw or the like, in a so-called self-grip system.” Omori, 7:26—30. This system uses “frictional force” to hold the pieces together. Id. at 7:32—37. 2 Neither Appellants nor the Examiner argues that “joined . . . via a brazing process” should be construed any differently than “brazed,” which, like 4 Appeal 2015-007029 Application 13/152,389 process” places limitations on the ultimate structure claimed.* * 3 Here, there is no dispute that Omori does not disclose a nib brazed onto a cutting tool. Appellants argue, “a brazed connection is not the same structure as a mechanical connection [that relies on frictional forces,] such as described by Omori.” Br. 5. In response, the Examiner stated, “[w]hile the method of joining of Omori is different from that disclosed by the instant application, the teachings of Omori meet the product limitations of the claim, as the final product is usable for performing hole-cutting operations on a workpiece.” Ans. 8. Whether a prior-art apparatus is capable of performing the same function as a claimed apparatus is not dispositive as to whether the prior art discloses the same structure as the claimed apparatus. The Examiner is silent on this point and therefore, we determine that Appellants have established a structural difference between claim 1 and Omori. Accordingly, we do not sustain the rejection of claim 1, and its dependent claims, as anticipated by Omori. Obviousness over Omori and Kim or Karlsson The Examiner’s rejections of claims 2, 4, 5, 11, and 12 are based on the premise that the “brazing” limitation is a product-by-process limitation. Because, as discussed above, we are not persuaded that this is correct, we do not sustain these rejections. “welded,” describes a manner in which separate parts are joined together. See McGraw-Hill Dictionary of Scientific and Technical Terms 280 (6th ed. 2003) (defining “braze” as “[t]o solder metals by melting a nonferrous filler metal, such as brass or brazing alloy (hard solder), with a melting point lower than that of the base metals, at the point of contact”). 3 “[T]he structure implied by the process step[] should be considered when assessing patentability . . . over the prior art.” MPEP § 2113. 5 Appeal 2015-007029 Application 13/152,389 Claims 6—9 and 13—15—Obviousness—Omori, Katayama, and Kim Appellants argue claims 6—9 and 13—15 as a group. Br. 8—10. We select claim 6 as representative of the group and decide the appeal of this rejection on the basis of claim 6 alone. 37 C.F.R. § 41.37(c)(l)(iv). Claim 6 is drawn to a method of forming a cutting tool comprising brazing a nib into a groove formed in a first end of a generally cylindrical rod member. Br. 12 (Claims Appx.). The Examiner relies on Omori to teach all of the steps of claim 6 except for brazing the nib into the groove. Final Act. 5—6. For this limitation, the Examiner relies on Katayama’s teaching of a cutting tool comprising a cylindrical body with a nib brazed into a groove for the purpose of fixedly attaching the nib to the body. Id. at 6; see Katayama, 6:39-44, Fig. 1C. According to the Examiner, it would have been obvious to one having ordinary skill in the art at the time of the invention to have combined the cutting tool of Omori et al. with the brazing attachment method of Katayama in order to use an alternative, well-known means for attaching the nib to the cutting tool. Final Act. 6. Appellants respond that a person of ordinary skill would not have combined Omori and Katayama as the Examiner suggests because brazing the tip to the cutting tool permanently attaches the two together, which would run counter to Omori’s stated purpose of providing a readily replaceable “throwaway” tip. Br. 8. The Examiner disputes that brazing is a permanent attachment method, and provides evidence that a person of ordinary skill would have known that brazing is reversible. Ans. 9 (citing U.S. 4,208,154 to Gundy, 5:46—51). According to the Examiner, “a cutting 6 Appeal 2015-007029 Application 13/152,389 nib that has been brazed to a body may be easily removed and discarded.” Id. Appellants did not respond to this evidence or argument. Appellants’ argument is premised on its contention that brazing a tip to a cutting tool would result in the tip not being readily replaceable, thereby conflicting with Omori’s desire to have a throwaway tip. Appellants do not support this contention with evidence. Conversely, the Examiner provides persuasive and unrebutted evidence that brazing is not an irreversible process, and that a person of ordinary skill would have known that a brazed tip could have been replaced. Accordingly, we sustain the rejection. Claim 10—Obviousness—Omori, Katayama, Kim, and Karlsson Appellants raise no additional arguments in support of the patentability of claim 10 beyond those that we determined above to be unpersuasive. Accordingly, we sustain the Examiner’s rejection of claim 10 as obvious over Omori, Katayama, Kim, and Karlsson. DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1—5, 11, and 12, and affirm the Examiner’s rejection of claims 6—10 and IS IS. 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). AFFIRMED-IN-PART 7