Ex Parte Westphal et al

Patent Trial and Appeal Board

Apr 28, 2016

12161032 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/161,032 07/16/2008
27877 7590 05/02/2016
KENNAMETAL INC
Intellectual Property Department
P.O. BOX231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
FIRST NAMED INVENTOR
Hartmut Westphal
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.
KW-2364DEUS1 7709
EXAMINER
BRAYTON, JOHN JOSEPH
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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 HARTMUT WESTPHAL and
HENDRIKUS VAN DEN BERG
Appeal2014-008940
Application 12/161,032
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and BRIAN
D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal 1 under 35 U.S.C. § 134(a) from a rejection of
claims 11-22. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Kennametal, Inc.
Appeal Br. 3.
Appeal2014-008940
Application 12/161,032
STATEMENT OF CASE
Appellants describe the "core idea of the present invention" as
subjecting a fully sintered hard-metal or cermet substrate with a blasting
agent until the residual stress of the substrate close to the surface is
substantially equal to the residual stress present in the first physical vapor
deposition (hereinafter "PVD") layer applied. Spec. 2:18-24. The process
could be used to make tools. Spec. 4:12-14. Claim 11, reproduced below
with emphasis added, is the only independent claim on appeal, and is
illustrative of the claimed subject matter:
11. A method of coating a hard-metal or cermet substrate, the
method comprising the steps of:
blasting with particles a sintered uncoated substrate until a level
of residual stress is imparted to a surface region of the substrate
that is substantially equal to a level of stress of a physical vapor
deposition (PVD) coating applied to the substrate; and thereafter
applying the PVD coating the surface region of the substrate.
Appeal Br. 12 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
Y ashiki et al.
(hereinafter "Y ashiki")
Borschert et al.
(hereinafter "Borschert")
us 5,545,268 Aug. 13, 1996
US 6,688,817 B2 Feb. 10,2004
Festeau US 2006/0051618 Al Mar. 9, 2006
(hereinafter "F esteau")
Sakurai et al. JP 358039776 A Mar. 8, 1983
(hereinafter "Sakurai")
Moriguchi et al. JP 2005138210 A June 2, 2005
(hereinafter "Moriguchi")
2
Appeal2014-008940
Application 12/161,032
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 11, 21, and 22 under
35 U.S.C. § 103 as unpatentable over the combination of Festeau in view of
Moriguchi as evidenced by Borschert, and Sakurai. Ans. 2.
Rejection 2. The Examiner rejected claims 12-14 and 17-19 under
35 U.S.C. § 103 as unpatentable over Festeau in view ofMoriguchi as
evidenced by Borschert and Sakurai as applied to claim 11 in further view of
Borschert. Ans. 7.
Rejection 3. The Examiner rejected claims 15, 16, and 20 under
35 U.S.C. § 103 as unpatentable over Festeau in view ofMoriguchi as
evidenced by Borschert and Sakurai as applied to claim 11 and further in
view of either Sakura or Y ashiki. Ans. 7.
Rejection 4. The Examiner rejected claims 11-14 and 17-19 under
35 U.S.C. § 103 as unpatentable over Borschert in view ofFesteau and
Moriguchi as evidenced by Sakurai. Ans. 9.
ANALYSIS
We sustain the Examiner's rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments well-expressed by the
Examiner in the Final Action and in the Answer. The following comments
are added for emphasis.
3
Appeal2014-008940
Application 12/161,032
Appellants do not separately argue dependent claims 12-22. Because
the issues that arise are the same for claims 12-22, we only need to address
claim 11 to resolve the issues for all these claims. 2
The Examiner's first and fourth rejections each reject claim 11 as
obvious in view of the combination of Festeau, Borschert, Sakurai, and
Moriguchi. Ans. 2, 9. The Examiner explains that these references teach
that the residual stress of the substrate is a result effective variable and
concludes that it would have been obvious to optimize residual stress levels
between components. Ans. 3; Final Act. 4. We agree.
Festeau is directed to materials for cutting tools and teaches blasting a
hard-metal or cermet substrate (thereby creating residual stress) prior to
applying a coating via PVD. Ans. 2--4; Final Act 2-3; Festeau Title, i-f 15.
F esteau teaches that adhesion and performance of the PVD coatings depends
on this blasting: "[i]mproper pre-coating surface treatment may lead to poor
adhesion of PVD coats on the Ru-featured carbide substrate, thus resulting
in premature failings of the PVD coatings." Festeau i125.
Boschert teaches microblasting a drill's hard-metal substrate prior to
PVD coating. Final Act. 3, 5, 10; Borschert Abstract, 6: 13-34. Borschert
explains that microblasting the substrate results in "distinct improvement in
adhesion" of the coating. Borschert 1:51-56.
Sakurai is also directed to cutting tools and discusses a method of
imparting stress to the substrate prior to application of a PVD coating. Ans.
2; Final Act. 3; Sakurai Abstract. In particular, Sakurai teaches peening the
2 We understand Appellants' argument concerning Y ashiki to be an
argument with respect to claim 11. App. Br. 8-9. To the extent this
argument is instead directed to claims 15, 16, and/or 20, this would not
impact our decision.
4
Appeal2014-008940
Application 12/161,032
substrate with steel balls prior to applying the coating and explains that this
technique results in "high abrasion resistance and lubricity." Sakurai
Abstract.
Based on these teachings, we agree with the Examiner that a person of
ordinary skill in the art would have recognized that the residual stress
resulting from blasting a hard-metal or cermet substrate prior to PVD
coating would beneficially affect adhesion of the PVD coating and thus
would beneficially affect the abrasion resistance and durability of the end
product tool. Ans, 2-3. The residual stress of the substrate is thus a result-
effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
Cir. 2012) ("A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective."). The teachings of
F esteau, Borschert, and Sakurai discussed above suggest that optimizing this
variable would be within the capabilities of a person of skill in the art.
The Moriguchi reference further demonstrates that optimizing this
variable would be within the capabilities of a person of skill in the art. The
Moriguchi references teaches that, in the context of applying PVD coating to
a cutting tool's substrate, coating is improved where the compressive stress
in the inner layer is equal to or below that of the outer layer. Moriguchi
Abstract, i-fi-18, 9; Ans. 3. Moriguchi provides an example where a substrate
a PVD layer have stress levels of 3 and 3.5 GPa. Moriguchi i126; Ans. 3.
Moriguchi thus demonstrates that a person of skill in the art would have had
the capability to assess and modify compressive stresses for tool materials as
desired.
Appellants do not present persuasive evidence that arriving at claim
11 's step of blasting a substrate "until a level of residual stress is imparted to
a surface region of the substrate that is substantially equal to a level of stress
5
Appeal2014-008940
Application 12/161,032
of a physical vapor deposition (PVD) coating applied to the substrate"
produces unexpectedly beneficial properties. See, e.g., In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980) ("objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support."). Thus, because residual stress was a known result-
effective variable at the relevant time, we agree with the Examiner's
conclusion that it would have been obvious to reach the optimized substrate
stress value recited in claim 1 based on the prior art's teachings.
Appellants argue that the Examiner's reliance on Moriguchi is
misplaced because Moriguchi relates to ceramic layers. App. Br. 4--5. The
Examiner, however, uses Moriguchi to further support the teachings of the
Festeau and Borschert base references. As explained above, Moriguchi is
consistent with and further supports those primary references.
Appellants also argue that a person of skill in the art would have
followed the Tonshoff reference. Appeal Br. 5-8. Appellants present no
argument, however, that a person of ordinary skill in the art would have
chosen to follow Tonshoff rather than Festeau, Borschert, Sukarai, and
Moriguchi. Ans. 4.
Moreover, Appellants do not persuasively explain how Tonshoff is
contradictory to the teachings of the Examiner's cited references or would
have discouraged blasting a substrate so that the surface stress is equivalent
to PVD coating stress. Appellants state, for example, that Tonshoff Figures
4 and 6 illustrate a substrate with residual stress levels high enough to offset
PVD coatings while leaving a 1 GPa compressive stress remainder for
offsetting cutting loads (App. Br. 6), but we do not agree that this conclusion
can be drawn from the figures. Appellants also emphasize (Appeal Br. 5)
that Tonshoff teaches that a substrate's "high compressive stresses and flat
6
Appeal2014-008940
Application 12/161,032
stress gradient are required for optimized interface strength" (Tonshoff 528),
but Appellants do not persuasively explain how this statement contradicts
the teachings of Festeau, Borschert, Sukarai, and/or Moriguchi. Rather,
Festeau, for example, teaches that PVD coatings will have "high residual
compressive stress." Festeau if 23. Tonshoff's teaching of a substrate with
"high compressive stresses" therefore appears consistent with claim 11 's
recited blasting "until a level of residual stress is imparted to a surface
region of the substrate that is substantially equal to a level of stress of a
physical vapor deposition (PVD) coating applied to the substrate .... "
Appellants also argue that the Y ashiki reference teaches away from
the method of claim 11. Appeal Br. 9-10. Appellants, however, only
suggest that Y ashiki teaches a different method than claim 11-"teaching
blasting of the coating as opposed to the uncoated substrate." Appeal Br. 10.
Appellants provide no evidence from Y ashiki suggesting that the method of
claim 11 or methods taught by the other cited prior art is undesirable.
Assessing the prior art before us as a whole, we are not persuaded that
Yashiki discredits the other cited prior art. Cf In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) (holding that the Board, "in weighing the suggestive
power of each reference, must consider the degree to which one reference
might accurately discredit another").
We therefore sustain the Examiner's rejections of claims 11-22.
7
Appeal2014-008940
Application 12/161,032
DECISION
For the reasons given by the Examiner and reasons emphasized above,
we affirm the Examiner's rejections of claims 11-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
8