Sivaraman Gopalrao et al.

Patent Trials and Appeals BoardAug 30, 2019

14497742 - (D) (P.T.A.B. Aug. 30, 2019)

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. 14/497,742 09/26/2014 Sivaraman Gopalrao K-4282INUS1 1046 27877 7590 08/30/2019 KENNAMETAL INC. Intellectual Property Department P.O. BOX 231 1600 TECHNOLOGY WAY LATROBE, PA 15650 EXAMINER JONES, JEREMY CONRAD ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 08/30/2019 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): k-corp.patents@kennametal.com larry.meenan@kennametal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SIVARAMAN GOPALRAO, RAGHAVAN RENGARAJAN, RAMESH S. RAO, and ALAM RUKHSAR ____________________ Appeal 2019-00188 Application 14/497,742 Technology Center 1700 ____________________ Before BRADLEY R. GARRIS, BRIAN D. RANGE, and MICHAEL G. McMANUS, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1–8. We have jurisdiction. 35 U.S.C. § 6(b). We REVERSE. 1 Appellant is the Applicant, Kennametal India Limited. According to the Appeal Brief, the real party in interest is Kennametal, Inc. Appeal Br. 3. Appeal 2019-000188 Application 14/497,742 2 STATEMENT OF THE CASE2 Appellant describes the invention as relating to making a hard material such as “cemented (cobalt) tungsten carbide” from an aqueous slurry of hard material powder components (for example, tungsten carbide and cobalt) with the formed material having properties exceeding those formed from a solvent-based slurry. Spec. ¶¶ 1, 43. In particular, the invention seeks to avoid “oxygen pickup of the hard material components” which can lead to cracks, pits, and defects. Id. ¶¶ 19–20. Claim 1, reproduced below with emphasis added to certain key recitations, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. An aqueous emulsion for use in aqueous milling of hard material powder components in an aqueous slurry, the aqueous emulsion comprising: an oxidation inhibitor in an amount between about 0.6 weight percent and about 1.4 weight percent of the hard material powder components in the aqueous slurry; paraffin wax in an amount up to about 2.75 weight percent of the hard material powder components in the aqueous slurry; myristic acid in an amount between about 0.10 weight percent and about 0.50 weight percent of the hard material powder components in the aqueous slurry; and balance being water. Appeal Br. 8 (Claims App.). 2 In this Decision, we refer to the Final Office Action dated October 20, 2017 (“Final Act.”), the Appeal Brief filed March 26, 2018 (“Appeal Br.”), the Examiner’s Answer dated August 3, 2018 (“Ans.”), and the Reply Brief filed October 3, 2018 (“Reply Br.”). Appeal 2019-000188 Application 14/497,742 3 REJECTION On appeal, the Examiner maintains the following rejection of claims 1–8 under 35 U.S.C. § 103 as unpatentable over Quirmbach et al., U.S. 7,531,022 B2, issued May 12, 2009 (“Quirmbach”) in view of Penkunas et al., U.S. 4,902,471, issued Feb. 20, 1990 (“Penkunas”). Final Act. 2; Ans. 3. ANALYSIS The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). To resolve this appeal, we focus on independent claim 1, the Appellant’s arguments that identify error, and the Examiner’s determinations that relate to the error. The Examiner finds that Quirmbach teaches a liquid for use in preparing hard materials including water and an inhibitor. Ans. 3. The Examiner finds that Quirmbach teaches that polyacrylic acids can be used as Appeal 2019-000188 Application 14/497,742 4 dispersion agents but “is silent as to the use of myristic acid.” Id. at 4. The Examiner finds that Penkunas teaches use of myristic acid in a method for producing metal grade powders. Id. The Examiner determines that it would have been obvious “to use myristic acid as a dispersion agent in the liquid as taught by Quirmbach” in order to “improve carbide-binder metal powder particle surface interaction with paraffin wax.” Id. Appellant argues that the Examiner has not adequately explained why Penkunas’s myristic acid would be used as a dispersant with Quirmbach. Appeal Br. 4–6. In particular, Appellant argues that myristic acid is not compatible with the acrylic-based surfactants of Quirmbach. Id. at 4. Appellant also argues that Penkunas uses myristic acid to form a coating on particles rather than functioning as a dispersant. Id. at 5; see also Reply Br. 2. We agree that the Examiner has not adequately explained why a person of skill in the art would have chosen Penkunas’s myristic acid as Quirmbach’s dispersant. Quirmbach is primarily concerned with employing water as a mix or mill liquid for mixtures of cobalt powder and tungsten carbide powder. Quirmbach 1:4–27; 2:11–14. Quirmbach uses wax in the emulsion to inhibit hydrolysis of the hard metal particles. Id. at 2:22–32. Quirmbach teaches use of an optional dispersing agent in the liquid. Id. at 3:14–17. The dispersing agent presumably assists in mixing of the tungsten carbide and cobalt powders (which can be difficult because of the differing densities). Id. at 1:28–43. After Quirmbach forms its mixture of cobalt powder and tungsten carbide powder, Quirmbach dries the mixture and presses it into a molded part. Id. at 3:48–4:8. Appeal 2019-000188 Application 14/497,742 5 The process and focus of Penkunas is different. Penkunas seeks to create metal carbide grade powders where there is an even distribution of wax binder on the powder particles. Penkunas 1:5–8. To coat the particles with wax, an organic additive compound is added to the wax mixture. Id. at 2:61–63. The organic additive compound can be an ester of a fatty acid. Id. at 3:13–14. Myristic acid may be used as the fatty acid that forms the ester. Id. at 3:15–17. After wax coated carbon grade powder is made, the particles are dried and used to produce densified articles (presumably, molded parts, for example). Id. at 4:1–14. Penkunas states that the wax does not separate from the powder “during milling and drying and agglomerating.” Id. at 4:11–14. In sum, Penkunas uses myristic acid to form an ester that, in turn, the Penkunas process uses to evenly coat particles with wax. Penkunas provides no indication that myristic acid would be an appropriate dispersant for use in an aqueous mixture of tungsten carbide and cobalt powders (as in Quirmbach). Reply Br. 2. As such, the preponderance of the evidence does not support the Examiner’s stated reason why a person of skill in the art would use myristic acid in Quirmbach’s process (i.e., as a dispersant). Ans. 4. We, therefore, do not sustain the Examiner’s rejection of claim 1. Because the Examiner’s treatment of the dependent claims does not cure this error, we also do not sustain the Examiner’s rejection of claims 2–8. Appeal 2019-000188 Application 14/497,742 6 DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1–8. REVERSED