Ford Global Technologies, LLC

Patent Trials and Appeals Board

Jun 29, 2020

13913871 - (D) (P.T.A.B. Jun. 29, 2020)

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.
13/913,871 06/10/2013 Rodney G. Whitbeck 83371860 9963
28395 7590 06/29/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
KELLER, BRIAN D
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RODNEY G. WHITBECK, DAVID ALAN STEPHENSON,
KEITH RAYMOND BARTLE, and DAVID GARRETT COFFMAN
____________

Appeal 2020-000360
Application 13/913,871
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–18, 21–33, and 37–43. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Ford Global Technologies, LLC as the
real party in interest. Appeal Br. 1.
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Application 13/913,871
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THE INVENTION
Appellant’s invention relates to “a cylindrical surface cutting tool and
process.” Spec. ¶ 1. Claims 1, 15, 22, and 30 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of mechanically roughening a cylindrical surface,
the method comprising:
simultaneously rotating a cylindrical cutting body
rotatably mounted in a spindle about (a) a spindle axis and (b) an
axis of the cylindrical surface into an axial portion of the
cylindrical surface to form a profile having discrete,
discontiguous, flat-bottom grooves, flat-top peaks of constant
height and a flat-bottom pocket having side walls and a radius
greater than the cylindrical surface prior to the simultaneous
rotating step and less than each of the grooves.

THE REJECTIONS2
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Wackenhuth US 841,830 Jan. 22, 1907
Hunter US 2,451,089 Aug. 20, 1945
Vogelsang DE 103 16 919 A1 Oct. 21, 2004
Doerfler US 2010/0326270 A1 Dec. 30, 2010
Weisel US 2012/0321405 A1 Dec. 20, 2012
Klumpp US 2013/0149474 A1 June 13, 2013

2 The Examiner’s rejection of claim 35 is moot because claim 35 has been
cancelled. See Ans. 12; Appeal Br. 2–3; Adv. Act. 2; June 19, 2019
Amendment under 37 C.F.R. § 41.33(b).
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Application 13/913,871
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The following rejections are before us for review:
I. Claims 1, 5–9, 14, 21, 30–33, 37–39, 42, and 43 stand
rejected under 35 U.S.C. § 103 as being unpatentable
over Wackenhuth and Weisel.
II. Claims 2, 10–13, 15–18, and 22–29 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wackenhuth,
Weisel, Klumpp, and Doerfler.
III. Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Wackenhuth, Weisel, Klumpp, and
Hunter.
IV. Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Wackenhuth, Weisel, Klumpp, and
Vogelsang.
V. Claims 40 and 41 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wackenhuth, Weisel, Klumpp,
Doerfler, and Vogelsang.

OPINION
Rejection I
Independent claim 1 and dependent claims 5–9, 14, 21, 38, and 42
Appellant argues claims 1, 5–9, 14, 21, 38, and 42 as a group. Appeal
Br. 2–4. We select independent claim 1 as representative, and claims 5–9,
14, 21, 38, and 42 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 1, the Examiner finds that
Wackenhuth’s Figure 1 “suggests” that more than one discrete and
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discontiguous grooves are depicted in the inner surface of cylinder 18, and
also that Wackenhuth expressly depicts that such grooves have a flat-bottom,
as claimed. Ans. 3 (citing Wackenhuth, p. 1, ll. 45–50). The Examiner’s
annotated Figure 1 of Wackenhuth is reproduced below.

Ans. 4. The Examiner’s annotated Figure 1 of Wackenhuth discloses lining
23 formed in the inner surface of cylinder 18, wherein the inner surface is
depicted, in cross-section, as having trapezoidal indentations identified by
the Examiner as separate grooves G1, G2.
Alternatively, the Examiner finds that “[a]ssuming arguendo that the
grooves of Wackenhuth are not necessarily [discrete] and discontiguous,”
the Examiner reasons that “it would have been obvious to one of ordinary
skill in the art to configure the grooves shown as parallel and continuous
around inner wall of cylinder 18 for consistent and even connection of lining
23 to cylinder 18.” Ans. 5.
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The Examiner determines that Wackenhuth fails to disclose a method
for making the grooves, and the Examiner relies on Weisel for teaching
machining using “a cylindrical cutting body 10 rotatably received in a tool
(via chuck or spindle) to cut the inner surface of a cylinder to produce
multiple parallel inner grooves.” Final Act. 4 (citing Weisel ¶¶ 19, 34). In
particular, the Examiner finds that “Weisel teaches a rotatable machine tool
10 having cutting inserts 22 disposed thereon, the cutting inserts each
comprising two flat-topped cutting edges” and further, that “with the tool
inserted in a cylinder, simultaneously rotating the cutter about its axis and an
axis of the cylindrical surface . . . would necessarily form corresponding flat-
bottomed grooves.” Ans. 13–14 (citing Weisel ¶¶ 4, 19, 34, Fig. 6). The
Examiner reasons that it would have been obvious “to incorporate the
method of eccentric, or interpolating, tool rotation, as taught by Weisel . . .
to effectively produce the series of inner grooves taught by Wackenhuth.”
Final Act. 4–5.
The Examiner determines that Wackenhuth also fails to disclose a
flat-bottom pocket, as claimed, and the Examiner relies on Klumpp for
disclosing “providing a step 10, 11 in the bottom corners of the grooves to
relieve stress on the tool.” Final Act. 5 (citing Klumpp ¶¶ 7, 13, Fig. 1).
The Examiner reasons that it would have been obvious “to incorporate the
corner steps in the grooves described [in Klumpp] to [relieve] stress on the
corner tip of the tool, thereby decreasing chance of fracture and prolonging
the working life of the tool.” Id. The Examiner proposes “providing the
corner relief” on the grooves of Wackenhuth by using the “cutting edge of
[cutting insert] 22,” as depicted in Weisel’s Figure 1. Ans. 14–15. In
particular, the Examiner states that “steps 10, 11” (i.e., Klumpp’s flat-bottom
Appeal 2020-000360
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pocket) “are created via the relieved tool bit.” Id. at 15 (emphasis added).
Thus, we understand that the Examiner proposes modifying Weisel’s tool to
have a cutting insert that relieves stress on the corner tip of the tool, which
will produce a pocket and groove as shown in Klumpp, and as required by
claim 1. Cf. Spec. ¶ 4 (“the groove cutting teeth may be rectangular pocket
and groove cutting teeth”); id. ¶ 11 (“Figure 2B depicts an interpolating step
in which a travel area is machined using a cutting tool to produce a recessed
inner surface with a pocket and annular surface grooves”).
First, Appellant argues correctly that “Wackenhuth is silent as to
whether the unnumbered projections shown in cross section in Figure 1 are
annular or continuous,” and as such, does not disclose “flat-bottom grooves
and flat-top peaks [that] are discontiguous,” as claimed. Appeal Br. 3.
Appellant concludes that the Examiner’s finding that Wackenhuth’s
unnumbered projections are discrete and discontiguous is speculative. Reply
Br. 2. Appellant also argues that, alternatively, the Examiner’s rationale for
modifying Wackenhuth’s unnumbered projections (or trapezoidal
indentations) to be annular, discrete, discontiguous grooves is speculative,
because Wackenhuth does not disclose that “[a] [c]onsistent and even
connection of lining 23 and cylinder 18” is an objective of Wackenhuth’s
unnumbered projections (or trapezoidal indentations). Reply Br. 2.
Claim 1 requires the profile formed in the cylindrical surface to have
“discrete, discontiguous, flat-bottom grooves” and “flat-top peaks of
constant height.” The claim terms “discrete” and “discontiguous” do not
appear in the Specification. Claim 1, as originally filed, recited “a plurality
of annular grooves,” however, Appellant amended claim 1 by replacing the
original language, “a plurality of annular,” with the terms “discrete,
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discontiguous.” May, 22, 2017 Amendment. Appellant remarked that the
limitation “discrete, discontiguous grooves resid[ing] in planes parallel to
each other” has written description support in paragraphs 31 and 43, and
Figure 2B of the Specification as originally filed, and is distinguishable from
a profile having a screw-like, continuous thread or groove. May, 22, 2017
Amendment 8–9.
We find that a preponderance of the evidence supports the Examiner’s
finding that Figure 1 of Wackenhuth reasonably suggests to a person of
ordinary skill in the art that each pair of horizontally opposing trapezoidal
indentations may be the cross-section of an annular, flat-bottom groove that
is discrete and discontiguous from an adjacent annular, flat-bottom groove
represented by another pair of opposing trapezoidal indentations. Notably,
both discrete, discontiguous, flat-bottom grooves (as evidenced by the
cylindrical inner surface formed by Weisel’s cutter3), and a single,
continuous, helical groove (as evidenced by Klumpp’s cylindrical inner
surface4), are known profiles for roughening the inner cylindrical surface of
a bore.
Moreover, we are not persuaded by Appellant’s argument that the
Examiner’s alternative reasoning for interpreting (or modifying)
Wackenhuth’s trapezoidal indentations to be annular, discrete, discontiguous
grooves lacks rational underpinning. The Examiner reasons that such a
modification would provide for a consistent and even connection of lining
23 to cylinder 18, which is recognized in the prior art as particularly
desirable: “[g]rooves in a surface of a cylindrical component are known to

3 See Weisel ¶ 9, Fig. 1.
4 See Klumpp ¶ 10.
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have various geometries to improve the retention of coatings applied to the
surface of the cylindrical component” (Klumpp ¶ 3), wherein, as set forth
supra, annular and helical grooves are known geometries.
Second, Appellant argues that “Weisel does not disclose or suggest
the structural details of the grooves that are formed,” and also that “there is
no reason to combine these two references,” as proposed by the Examiner,
because Wackenhuth does not disclose the claimed profile, as argued supra.
Appeal Br. 3–4. Appellant submits that, “[a]t best, Weisel discloses ‘a
grooving tool assembly for use in forming one or more grooves in a wall of a
bore when the tool body is rotated about a first axis and simultaneously
circularly interpolated about a second axis,’” and that “Weisel cannot inform
a skilled artisan of how to produce the three-dimensional profile of
Wackenhuth because Wackenhuth only discloses a cross-sectional view of
unnumbered protrusions.” Reply Br. 3. Appellant concludes that the
Examiner improperly relies on hindsight and speculates as to whether
Weisel’s tool forms Wackenhuth’s structure. Appeal Br. 4.
Appellant’s argument, however, does not apprise us of error in the
Examiner’s finding supra that Weisel discloses cutting inserts, with
reference to Figure 6, that would necessarily form corresponding discrete,
discontiguous, flat-bottomed grooves and also flat-top peaks of constant
height between the grooves, as claimed.5 Appellant’s argument also does
not apprise us of error in the Examiner’s reasoning, which we determine is

5 The Examiner relies on Doerfler for disclosing a second process for
forming an undercut region (or trapezoidal shape) relative to each groove,
such that the Examiner does not need to rely on Weisel’s machining method
for forming Wackenhuth’s trapezoid indentations. Final Act. 6–7; Appeal
Br., Claims App. 1 (claim 2).
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supported by rational underpinning, as the Examiner applies Weisel’s
method as a known process for producing annular, discrete, discontiguous
grooves in a cylindrical surface, i.e., grooves of the type disclosed in
Wackenhuth or the proposed modification thereof.”
Third, Appellant argues that the Examiner fails to explain “how the
Weisel tool would be able to simultaneously rotate to provide the flat-bottom
pocket having side walls along the discrete, discontiguous, flat-bottom
grooves, and flat-top peaks of constant height.” Appeal Br. 4. Appellant
concludes that the Examiner improperly relies on hindsight and speculates as
to whether Klumpp’s pockets would be formed in Wackenhuth’s profile
using Weisel’s tool. Appeal Br. 4.; Reply Br. 3 (“[i]t is improper for the
Examiner to make a modification based on mere supposition”).
We are not persuaded by Appellant’s argument. As set forth supra,
the Examiner proposes modifying Weisel’s cutting insert 22 so as to form
steps 10, 11, which have the benefit of relieving stress on the tool, as taught
by Klumpp. The material removed by the modified cutting insert forms a
pocket whose base is defined by the top surface of the steps, and a flat
bottom groove extending radially further into the wall of the cylinder. See
Ans. 15 (“The steps that are created via the relieved tool bit define the
recited flat-bottomed pocket.”). We find that the Examiner’s proposed
modification is sufficiently articulated and supported by rational
underpinning, and based neither on hindsight nor speculation. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness
conclusion to be based on explicit articulated reasoning with rational
underpinning), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) .
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Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 5–9, 14, 21, 38, and 42 fall therewith.

Independent claim 30 and dependent claims 31–33, 37, 39, and 43
Appellant argues claims 30–33, 37, 39, and 43 as a group. Appeal Br.
4–6. We select independent claim 30 as representative, and claims 31–33,
37, 39, and 43 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 30, the Examiner makes the same
findings and applies the reasoning with respect to Wackenhuth, Weisel, and
Klumpp in the rejection of independent claim 30, as the Examiner made with
respect to independent claim 1 supra. Final Act. 3–5; Ans. 3–6, 12–13.
Appellant repeats the arguments made supra with respect to claim 1
for the patentability of claim 30.
Accordingly, for the same reasons stated supra, we sustain the
Examiner’s rejection of independent claim 30, and claims 31–33, 37, 39, and
43 fall therewith.

Rejections II–V
Appellant repeats the arguments made supra with respect to claim 1
for the patentability of claims 2–4, 10–13, 15–18, 22–29, 40, and 41.
Accordingly, we sustain the Examiner’s rejections for the same reasons
stated supra with respect to claim 1.

Appeal 2020-000360
Application 13/913,871
11
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–9, 14,
21, 30–33,
37–39, 42,
43
103 Wackenhuth, Weisel 1, 5–9, 14,
21, 30–33,
37–39, 42,
43

2, 10–13,
15–18, 22–
29
103 Wackenhuth, Weisel,
Klumpp, Doerfler
2, 10–13,
15–18, 22–
29

3 103 Wackenhuth, Weisel,
Klumpp, Hunter
3
4 103 Wackenhuth, Weisel,
Klumpp, Vogelsang
4
40, 41 103 Wackenhuth, Weisel,
Klumpp, Doerfler,
Vogelsang
40, 41
Overall
Outcome
1–18, 21–
33, 37–43

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED