Ex Parte Endres et al

Patent Trials and Appeals Board

Jul 3, 2019

12350181 - (D) (P.T.A.B. Jul. 3, 2019)

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61-77, with claims 2-12, 15-20, and 59 having been withdrawn, and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.
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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.
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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).
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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
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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
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