Ex Parte Reineke

Patent Trial and Appeal Board

Jul 1, 2013

11776152 (P.T.A.B. Jul. 1, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/776,152 07/11/2007 Leland M. Reineke REINEKE-1001 R 6283
7733 7590 07/01/2013
WALKER & JOCKE
231 SOUTH BROADWAY STREET
MEDINA, OH 44256
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
07/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LELAND M. REINEKE
____________________

Appeal 2012-002748
Application 11/776,152
Technology Center 1700
____________________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002748
Application 11/776,152

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Appellant seeks relief under 35 U.S.C. § 134(a) from the Examiner’s
final rejection1 of Claims 1-12, 22, 23, 25, and 26. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.2

STATEMENT OF THE CASE
The invention relates to a method of producing diamond or cubic
boron nitride tipped cutting tools using a graphite electrical resistance heater
tube during sintering and bonding diamond or cubic boron nitride particles
to metal carbide substrates. Spec. 1:7-10. The heater tube comprises a
plurality of layers of expanded graphite foil which are compressed together.
Id. at 3:11-12. The layers of the graphite foil may be compressed a
sufficient amount (e.g. 30% or more decrease in the longitudinal length of
the layers) to create folds. Id. at 6:14-18. The Specification theorizes that
these folds increase the electrical resistance of the heater tube “because
electrical current travels through sections of the graphite that are
perpendicular to the original sheet direction or against the grain.” Id. 6:18-
21.
Independent claim 1, set forth below, is illustrative of the subject
matter on appeal:
1. A method for making a substrate supported compact
comprising:

1 Final Office Action mailed January 7, 2011.
2 Our decision refers to Appellant’s Appeal Brief (App. Br.) filed June 6,
2011, the Examiner’s Answer (Ans.) mailed September 13, 2011, and
Appellant’s Reply Brief (Reply Br.) filed November 11, 2011.
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Application 11/776,152

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a) forming a heater tube assembly by loading a heater tube
to include therein at least one substrate and a plurality of
crystalline particles positioned adjacent the at least one
substrate, wherein the heater tube includes a cylindrical
wall, wherein the cylindrical wall of the heater tube is
comprised of a plurality of wound layers of at least one
expanded graphite foil sheet, which plurality of layers
include a plurality of folds that are compressed together;
and

b) applying sufficient levels of pressure to the heater tube
assembly and a sufficient level of electrical current to the
heater tube assembly for a sufficient amount of time to
produce from the crystalline particles a compact layer that is
bonded to the at least one substrate.
App. Br., Claims App’x. (italics added).
The Rejections
The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
1.) claims 1-2 and 7-9 as unpatentable over Appellant Admitted Prior
Art3 in view of Pope4 and further in view of Ozaki5;
2.) claims 3-6 and 10-12 as unpatentable over AAPA in view of Pope
and Ozaki, and further in view of Marrocco6;
3.) claims 22-23 as unpatentable over AAPA in view of Pope and
Ozaki, and further in view of Marrocco and Dohi7; and

3 Appellant Admitted Prior Art, hereinafter “AAPA”, disclosed in pages 1
and 2 of Appellant’s Specification.
4 US 2005/0110187 A1, published May 26, 2005.
5 US 6,116,611, issued September 12, 2000.
6 US 5,976,437, issued November 2, 1999.
7 US 5,135,893, issued August 4, 1992.
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Application 11/776,152

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4.) claims 25-26 as unpatentable over AAPA in view of Pope and
Ozaki, and further in view of Dohi.
The Issue Presented
The dispositive issue before us on appeal is whether the Examiner
reversibly erred in finding Pope teaches a heater tube comprised of a
plurality of layers of graphite and finding Ozaki teaches a tube having plural
graphite layers including a plurality of folds that are compressed together,
thereby supporting the conclusion that Appellant’s claimed invention would
have been obvious to one of ordinary skill in the art.
We answer this question in the affirmative and therefore reverse the
Examiner’s rejections of the claims as unpatentable over AAPA in view of
Pope and Ozaki, alone or further taken with Marrocco and/or Dohi.

ANALYSIS
The Examiner finds AAPA discloses “it is known to make
polycrystalline diamond cutting tools by placing within a machined graphite
heater tube, a substrate such as a metal carbide shank and an unsintered mass
of abrasive crystalline diamond or CBN particles adjacent the substrate.”
Ans. 4. The Examiner also finds
The resulting heating tube is then placed in a shaped cavity of a high-
pressure cell, which is placed within a high pressure press. The entire
assembly is compressed under high pressure and an electrical current
is applied to produce sufficiently high pressures and temperatures to
affect intercrystalline bonding between adjacent grains of the abrasive
particles joining of the sintered particles to the metal carbide
substrate.

Id. at 4-5. The Examiner acknowledges AAPA does not teach the heating
tube is constructed from a plurality of layers from at least one expanded
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Application 11/776,152

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graphite foil. Id. at 5. Instead, the Examiner finds Pope teaches use of a
graphite heater tube comprising a plurality of layers of graphite material.
Id., referring to Pope, Fig. 8, element 84, [0232], and [0323]-[0325]. The
Examiner concludes it would have been obvious to one of ordinary skill in
the art construct the AAPA heater tube of a plurality of compressed graphite
layers in order to increase the strength and other heat transfer properties of
the tube as taught by Pope.
The Examiner then finds Ozaki teaches it is known to fold a graphite
sheet into a plurality of layers, bend the layers into a tube shape, and
compress the layers together. Ans. 6. Therefore, the Examiner concludes it
would have been obvious to have used Ozaki’s tube forming process to form
the AAPA heater tube because doing so “predictably would create a tubular
packing for high temperature use.” Id.
Appellant argues the applied prior art fails to disclose or suggest a
“heater tube is comprised of a plurality of wound layers of at least one
expanded graphite foil sheet, which plurality of layers include a plurality of
folds that are compressed together.” App. Br. 12. For example, Appellant
argues “nowhere does Pope disclose or suggest the cylindrical wall of the
heater tube is comprised of a plurality of wound layers of at least one
expanded graphite foil sheet, with a plurality of folds that are compressed
together.” Id. Appellant contends Pope, paragraph [0232], refers to bisque
molds/containers, but does not teach or suggest such are comprised of a
plurality of wound graphite layers compressed together or are capable of
receiving a sufficient level of electrical current to facilitate sintering of
crystalline particles. Id. at 13. In addition, Appellant notes Pope’s element
84 in Figure 8 refers to containment cans comprised of refractory metal, not
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graphite nor of a plurality of layers of at least one expanded graphite foil
compressed together. Id. at 14.
As to Ozaki, Appellant contends Ozaki is directed to a tubular packing
used in an automobile exhaust pipe and is non-analogous art. Id. Further,
Appellant argues Ozaki merely shows a graphite sheet with a single fold and
therefore fails to disclose or suggest a plurality of folds that are compressed
together. Id. at 15-16.
We have considered the respective positions clearly articulated by the
Examiner and Appellant, and find a preponderance of the evidence favors
Appellant. We note the Examiner’s position is that Figure 8 shows plural
graphite layers identified as element 84. However, Pope teaches Figures 7
and 8 depict a spherical, multilayered powder load within a pair of
containment cans 84 whose open ends overlap. Pope [0216]. As can be
seen from Figures 7 and 8, Figure 8 is a transverse cross-section of Figure 7
wherein the overlapping ends of the hemispheric containment cans in Figure
7 appear as the two elements 84 in Figure 8. Pope, Figs. 7 and 8.
Accordingly, the Examiner erred in finding Pope teaches a heating tube
comprised of plural graphite layers.
In addition, in response to Appellant’s argument that Ozaki fails to
teach or suggest plural folds, the Examiner finds Ozaki teaches that the sheet
is both folded and then curved thereby producing both a fold and a curve to
“make a plurality of folds.” Ans. 16. While Ozaki does indeed teach
producing both a fold and a curve in a graphite foil sheet to arrive at a
multilayered graphite tube, we find the Examiner’s characterization of the
fold and curve as a plurality of folds is erroneous. Ozaki teaches a single
fold in the graphite sheet, but the curve into the cylindrical shape is not also
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a fold. Ozaki, Figures 9 and 10. The Examiner fails to find any other
disclosure of Ozaki suggests plural folds, nor do we find any.
The Examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be
made explicit.”); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”), quoted with approval in KSR, 550 U.S. at 418. We find the
Examiner has not supplied the requisite rational underpinning to support the
obviousness conclusion for the reasons set forth above. Accordingly, we
cannot sustain the Examiner’s obviousness rejections based upon the
combination of AAPA, Pope and Ozaki.
The remaining obviousness rejections each build upon this
combination, adding Marrocco and/or Dohi. The Examiner does not rely on
either of these additional references to remedy the deficiencies noted above.
It follows therefore that we cannot sustain these remaining rejections as
well.

CONCLUSION
For the foregoing reasons, we find that the Examiner has failed to
establish the combination of AAPA, Pope and Ozaki, even taken with
Marrocco and Dohi make obvious the claimed invention to one of ordinary
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Application 11/776,152

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skill in the art. We therefore reverse the 35 U.S.C. § 103 rejections of
Claims 1-12, 22, 23, 25, and 26.

REVERSED
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