Steven A. Jameson et al.

Patent Trials and Appeals Board

Dec 31, 2019

13626185 - (D) (P.T.A.B. Dec. 31, 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.
13/626,185 09/25/2012 Steven A. Jameson K-04559-US-NP 6192
27877 7590 12/31/2019
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX 231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
EXAMINER
HILL, STEPHANI A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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 STEVEN A. JAMESON, MICHAEL R. CRIPPS,
CHRISTOPHER J. SMITH, TERRY HAMMOND,
ROBERT K. CARLSON, and JOHN DUMMERMUTH

____________

Appeal 2019-002312
Application 13/626,185
Technology Center 1700
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 2, 4, 5, 7–13, 28, and 30.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Kennametal Inc. as the real party in
interest (Appeal Br. 3).

Appeal 2019-002312
Application 13/626,185

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (Appeal Br. 22,
23, Claims App’x):

1. A process for the production of cutting tool inserts,
the process comprising:
positioning a bottom punch into a powder compaction
mold, the bottom punch comprising:
a bottom punch body,
a bottom punch face located on a pressing end of
the bottom punch body,
an internal channel disposed in the bottom punch
body and opening at the bottom punch face, and
a core rod partially disposed in the internal
channel, the core rod comprising a pressing end
and a countersinking projection located on the
pressing end, wherein the core rod partially
extends through the opening of the internal
channel and above the bottom punch face,
the core rod countersinking projection comprising
a first arcuate projection surface;
introducing a metallurgical powder into a mold cavity
formed by the powder compaction mold and the bottom punch;
positioning a top punch into the powder compaction
mold in an orientation opposed to the bottom punch, the top
punch comprising:
a top punch body,
a top punch face located on a pressing end of the
top punch body,
an internal channel disposed in the top punch body
and opening at the top punch face, and
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Application 13/626,185

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a core pin disposed in the internal channel, the core
pin comprising a pressing end and a
countersinking projection located on the pressing
end, wherein the countersinking projection extends
through the opening of the internal channel and
below the top punch face,
the core pin countersinking projection comprising
a second arcuate projection surface; and
compressing the metallurgical powder between the
bottom punch and the top punch to form a powder compact;
wherein, upon pressing engagement of the core pin and
core rod with respect to one another during said compressing,
the first and second arcuate projection surfaces adjoin one
another and together form a contiguous through-hole
contouring surface and
wherein the contiguous through-hold contouring surface
presents a continuous arcuate profile when viewed in cross-
section, around a circumference of the core pin and the core
rod.

The following rejections under 35 U.S.C. § 103 have been maintained
by the Examiner: 2

1) Claims 1, 2, 4, 7, and 28–30 as unpatentable over Smilovici
’828 (US 2006/0165828 A1; published July 27, 2006) and
Smilovici ’384 (US 2007/0003384 A1; published Jan. 4,
2007);

2) claims 5, 8, 9, 10, and 11 as unpatentable over Smilovici ’828,
Smilovici ’384, and Masahiro (JP 2008-246567 A; published Oct.
16, 2008; as translated);

2 The rejection of claim 7 made under 35 U.S.C. § 112 was withdrawn by
the Examiner (Ans. 3).
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3) claims 12 and 13 as unpatentable over Smilovici 828, Smilovici
384, Gubanich (US 2004/0086415 A1; published May 6, 2004),
and Pressing and Sintering (Pressing and Sintering, The Library of
Manufacturing, http://thelibraryofmanufacturing.com/pressing-
_sintering.html, retrieved Mar. 15, 2016);

4) claims 1, 2, 4, 5, 7–13, and 28–30 as unpatentable over Smilovici
’384 and Masahiro.

Appellant’s arguments focus on the disputed limitation highlighted
above of claim 1 (Appeal Br. 10–20; Reply Br. 3–8), with a conclusory
emphasis on dependent claim 7 (Appeal Br. 16, 19). We note that merely
reciting what claim 7 states is not considered a separate argument. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Accordingly,
all the claims stand or fall with claim 1, including those claims separately
rejected.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
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rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that the obviousness analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is well settled that a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992).
Appellant’s principal argument regarding claim 1 in each 103
rejection (Smilovici ’828 with Smilovici ’384 or Masahirio with Smilovici
’384) is that the Examiner’s reliance on Figure 8 of Smilovici ’384 as
depicting a continuous arcuate profile as recited in claim 1 is misplaced
because, a) Figure 8 of Smilovici ’384 at best shows only a part of the
throughhole 38 as it is a cross-section of the insert along line VIII-VIII of
Figure 3 of Smilovici ’384 (Appeal Br. 11, 12), b) Figure 8 is an inaccurate
representation of the insert disclosed therein (Appeal Br. 12), and c) a literal
interpretation of Figures 7 and 8 of Smilovici ’384 would reveal a stepped
inner profile (Appeal Br. 12, 13). These arguments are reiterated in the
Reply Brief, and Appellant also disputes the Examiner’s interpretation of
“arcuate” as encompassing being in the shape of a bow (Reply Br. 5; Ans. 6,
7).
Appellant’s arguments are not persuasive of reversible error as they
fail to appreciate the applied prior art as a whole and the inferences that one
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of ordinary skill in the art would have made therefrom. Even adopting
Appellant’s claim interpretation that would exclude bands, steps and other
discontinuities3, one of ordinary skill would have readily inferred that a
throughbore may have a continuous arcuate profile when viewed in cross-
section as claimed. While we appreciate Appellant’s detailed review of the
possible structure of Smilovici ’384’s throughbore, we agree with the
Examiner that one of ordinary skill in the art looking at Figure 8 would have
inferred that a smooth arcuate profile for a throughbore of a cutting insert
was one of a limited number of possible shapes (compare Figure 8 of
Smilovici ’384 to Figure 20B of Appellant’s Specification). It has been
generally held that ordinarily changes in shapes of known elements are
within the level of skill in that art, especially in the absence of unexpected
results or criticality. Cf. In re Dailey, 357 F.2d 669, 676 (CCPA 1966)
(change in shape ordinarily prima facie obvious). Indeed, here we have a
generally arcuate shape of a throughbore exemplified in the references (e.g.,
Smilovici ’828 Fig. 9; Smilovici ’384 Fig. 7, 8), the shape merely needs, at
best, to be modified to be a “contiguous” and “continuous” arcuate shape.
Appellant’s explanation that such a contiguous shape may be advantageous
as reducing potential from interference from attachment screws (Appeal Br.
14, 15, discussing Spec. ¶¶ 74, 75) is inadequate to establish non-

3 Paragraph 61 of Appellant’s Specification provides an explicit definition of
“contiguous through-hole surface” which excludes “bands, steps, planar
intersections, and other geometrical surface discontiguities.”
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obviousness of such a shape in light of the ordinary creativity of one of
ordinary skill in the art and the applied prior art.4
As we “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ,” we find a person of ordinary skill
in the art would have, within their level of skill, modified the core pin and
core rod of the applied prior art such that a throughbore would have any
desired shape including a continuous arcuate profile as recited, based on the
combined teachings of the applied prior art for the reasons articulated above
and by the Examiner (see generally Ans.). KSR Int’l, 550 U.S. at 418; see
also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton”); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of “the
inferences and creative steps,” as well as routine steps, that an ordinary
artisan would employ)). See also In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures”).

4 It is noted that Appellant’s Specification also encompasses many other
alternative shapes inclusive of bands and steps and other discontiguities
(e.g., Figs. 5A, 5B, 9A, 9B, 21A, 21B).
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Accordingly, we affirm the Examiner’s prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7, 28–
30
103 Smilovici ’828,
Smilovici 384
1, 2, 4, 7, 28–
30

5, 8-11 103 Smilovici ’828,
Smilovici ’384,
Masahiro
5, 8–11
12, 13 103 Smilovici ’828,
Smilovici ’384,
Gubanich, Pressing
and Sintering
12, 13
1, 2, 4, 5, 7–
13, 28-30
103 Smilovici ’384,
Masahiro
1, 2, 4, 5, 7–
13, 28–30

Overall
Outcome

1, 2, 4, 5, 7–
13, 28–30

TIME PERIOD FOR RESPONSE
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