Ex Parte Endres et alDownload PDFPatent Trials and Appeals BoardJul 3, 201912350181 - (D) (P.T.A.B. Jul. 3, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/350,181 01/07/2009 23363 7590 07/08/2019 Lewis Roca Rothgerber Christie LLP POBOX29001 Glendale, CA 91209-9001 FIRST NAMED INVENTOR William J. Endres 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. 62859/Rl 77 6419 EXAMINER SWINNEY, JENNIFER B ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 07/08/2019 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): pto@lrrc.com pair_cph@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM J. ENDRES, DOUGLAS J. WOODRUFF, JOHN W. LOOSEMORE, and THIMMAIAH G. KUMBERA Appeal2018-007479 Application 12/350,181 Technology Center 3700 Before LINDA E. HORNER, DANIEL S. SONG, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William J. Endres et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 13, 14, 50-58, and 61-77, with claims 2-12, 15-20, and 59 having been withdrawn, and claims 21--49 and 60 having been canceled. See Appeal Br. 1-2; Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. According to Appellants, the real party in interest is Rotary Technologies Corporation. Appeal Br. 1. Appeal2018-007479 Application 12/350,181 CLAIMED SUBJECT MATTER Appellants' disclosed invention relates to compact forms of rotary cutters and mounting cartridges where heat transfer and cartridge size are reduced. See Spec. ,r 2. Claims 1 and 65 are independent. Claim 1, reproduced below with emphasis and line breaks added for clarity, is illustrative of the subject matter on appeal. 1. A rotary metal-cutting insert, tool, and rotor combination compnsmg: a tool body comprising a rotor for rotating about a rotor axis; and an insert comprising, a body having a central axial opening along said rotor axis extending between opposite ends of the body and by which the body is mounted to the rotor for rotation with the rotor about said rotor axis during and in response to cutting engagement of the insert with a workpiece, the body having an exterior surface which extends between the body ends and is defined as a surface of revolution concentric to the rotor axis, the body having an inner surface defining said axial opening, said inner surface comprising a plurality of circumferentially spaced apart peak surfaces, each of said peak surfaces extending in a circumferential direction, said peak surfaces defining a plurality of circumferentially spaced apart valleys, each of said plurality of peak surfaces comprising at least a surface portion for contacting an outer surface of said rotor and maintaining a radial separation from said rotor to said valleys, the exterior surface defining a circular cutting edge concentric to the rotor axis, wherein the body is rotationally fixed relative to the rotor. 2 Appeal2018-007479 Application 12/350,181 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Black us 2,630,725 Mar. 10, 1953 Briese' 184 us 4,378,184 Mar. 29, 1983 Briese '211 us 4,477,211 Oct. 16, 1984 Niebauer us 5,082,401 Jan.21, 1992 Markus son US D 351,606 Oct. 18, 1994 Arvidsson US 6,926,472 B2 Aug. 9, 2005 Falger EP 599393 Al June 1, 1994 REJECTIONS The following rejections are before us for review: I. Claims 76 and 77 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3--4; see also id. at 2-3 ( objecting to the drawings and the Specification for the same issue regarding lack of original disclosure). II. Claim 76 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 4. III. Claims 1, 50-52, 64---67, 69, 70, 73, and 74 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Briese' 184 and Falger. Id. at 5-7. IV. Claims 13, 14, 57, 58, 61, 76, and 77 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Briese' 184, Falger, Black, and Briese '211. Id. at 7-10. 3 Appeal2018-007479 Application 12/350,181 V. Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Briese '184, Falger, and Markusson. Id. at 10. VI. Claims 55, 56, 68, and 72 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Briese '184, Falger, and Briese '211. Id. at 10-11. VII. Claim 62 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Briese '184, Falger, Black, Briese '211, and Niebauer. Id. at 11-12. VIII. Claim 63 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Briese '184, Falger, Black, Briese '211, Niebauer, and Arvidsson. Id. at 12. IX. Claims 71 and 75 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Briese '184, Falger, and Black. Id. at 13. ANALYSIS Rejections I and II Appellants do not address these rejections, or the related objections premised on the same issue, in this appeal. See Appeal Br. 3-6. Therefore, we summarily sustain these rejections of claims 76 and 77. See MPEP § 1205.02 (An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued.); see also In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (confirming same). 4 Appeal2018-007479 Application 12/350,181 Rejections III-IX Appellants argue that Rejections III-IX are deficient based on an assertion that Falger's cutting insert is disposed differently relative to the rotor axis of the tool, as compared with that of Briese '184 ( and the present invention). See Appeal Br. 4--5. In particular, Appellants assert that Falger's cutting insert "does not rotate" about its central axial opening, which is "perpendicular to the rotor axis" of the tool. Id. at 4. But this line of argument is premised on bodily incorporation of the entirety of Falger's cutting insert into the tool assembly of Briese '184, which is neither the standard for an obviousness determination, nor an accurate characterization of the rejection presented. See In re Keller, 642 F.2d 413, 425 (CCPA 1981 ). Rather, the Examiner's rejection applied the relevant teaching from Falger-namely, providing the inner central axial opening surface with a plurality of circumferentially spaced apart peaks and valleys-to the inner surface of the central axial opening in Briese ' 184 to yield the structure claimed. See Final Act. 6. As reiterated by the Examiner in the Answer, one of ordinary skill in the art would have recognized a benefit in providing cooling channels (the scalloped arrangement defined by the plurality of circumferentially spaced apart peaks and valleys) that would be "applicable to both a stationary cutting tool (as disclosed by Falger, in which the insert is stationary and the cutting body of the tool is in rotation) and a rotary cutting too 1 ( as taught by Briese [' 184], in which the cutting insert is rotating)." Ans. 13. Thus, in the combination of teachings applied in the rejection (again, simply incorporating the scalloped arrangement of the inner surface of the 5 Appeal2018-007479 Application 12/350,181 central opening in Falger' s insert to the inner surface of the central bushing opening in Briese '184' s insert to enhance cooling), "the threaded center locking portion [ of Briese '184] would still permit locking of the insert relative to the rotor while also providing the center structure for the grooves to work in conjunction with ... the flow of fluid for cooling the insert." Id. In this regard, Appellants do not persuasively explain how such an incorporation of the teaching relied on ( scalloped arrangement of the inner surface), from Falger into Briese '184, would have yielded unpredictable results or somehow been beyond the level of ordinary skill in the art. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also Ans. 13-14. After careful consideration of the evidence of record, Appellants' argument does not apprise us of error in the Examiner's findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the prior art rejections. DECISION We AFFIRM the Examiner's rejections, as discussed above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation