Ex Parte Ries et al

Patent Trials and Appeals Board

Mar 29, 2019

14430001 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/430,001 03/20/2015
23370 7590 04/02/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
Bernd Heinrich Ries
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.
58116-939471 8971
EXAMINER
KRECK, JANINE MUIR
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND HEINRICH RIES and
FRANK FRIEDRICH LACHMANN
Appeal2018-001334
Application 14/430,001
Technology Center 3600
Before: ANNETTE R. REIMERS, JEREMY M. PLENZLER, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 31--46. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2018-001334
Application 14/430,001
CLAIMED SUBJECT MATTER
The claims are directed to a strike tip for a pick tool having a flat apex
area. Claim 31, reproduced below, is the sole independent claim and is
illustrative of the claimed subject matter:
31. A strike tip for a pick tool, comprising
a strike structure joined to a substrate at an interface
boundary, the strike structure comprising polycrystalline
diamond (PCD) material and the substrate comprising carbide
material, the strike tip having a proximate strike end coterminous
with the PCD material, a distal end defined by the substrate, and
a side connecting the strike and distal ends;
the strike end including a flat apex area and an outer area
extending from the apex area to the side, the outer area defining
a partial conical surface arranged concentrically with the side,
the partial conical surface having a cone angle of 70 to 120°,
wherein the thickness of the strike structure between the apex
area and the interface boundary opposite the apex area is 2.5 to
10mm, the apex area being less than the outer area and being 1
to 25 square millimetres, wherein the apex area is at least partly
bounded by an edge formed between the apex area and the outer
area.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tank
Hall '993
Hall
Beuershausen
US 6,283,844 Bl
US 7,464,993 B2
US 8,061,457 B2
US 2001/0040053 Al
2
Sept. 4, 2001
Dec. 16, 2008
Nov. 22, 2011
Nov. 15, 2001
Appeal2018-001334
Application 14/430,001
REJECTIONS
Claims 31-37, 39, 40, and 43 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hall and Beuershausen.
Claim 38 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hall, Beuershausen, and Tank.
Claims 41, 42, and 44--46 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hall, Beuershausen, and Hall '993.
OPINION
Appellants solely argue over the rejection of independent claim 31,
from which all other pending claims depend. Thus, all of the pending claims
stand or fall with claim 31.
The Examiner finds that Hall teaches a strike tip having all of the
structural features of claim 31. Final Act. 2. The Examiner finds that Hall
"differs from the claimed invention in the measurements of the angle,
thickness and area" and further that Hall "fails to disclose any measurements
for the angle[,] thickness and area." Id. at 2-3. The Examiner finds that
"Beuershausen describes (paragraph 66) a similar strike tip with angle ... ,
thickness ... , and area ... in the claimed range." Id.
The Examiner initially determines that "[ s ]ince Hall fails to disclose
any measurements for the angle thickness and area ... it would have been
obvious ... to have tried [Beuershausen's dimensions of] an angle of 70°-
1200, a thickness of 2.5-lOmm and an area of 1-25 sq. mm as claimed." Id.
at 3. However, in response to Appellants' arguments, the Examiner "agrees
that the proposed modification does not meet the test for 'obvious to try' as
set forth in MPEP 2143." Ans. 6. Rather, the Examiner determines that as
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Application 14/430,001
"Hall fails to teach any dimensions for the angle, thickness and area" "[ o ]ne
of ordinary skill in the art would have turned to similar tips in order to find
workable dimensions. Beuershausen teaches those dimensions in the
claimed ranges, as detailed above, and Beuershausen teaches that a tip with
dimensions in the claimed range is effective for cutting hard materials." Id.
Appellants argue that the Examiner's rationale is still "obvious to try"
even though those words are not used. Reply Br. 2. This is because of the
similarity between the two rationales, which Appellants argue are really the
same. Id.
We disagree that the Examiner's revised rationale depends on an
"obvious to try" analysis. First, the Examiner explicitly states that "the
proposed modification ... does not meet the test for 'obvious to try."' Ans.
6. Second, even though the Examiner does not use these words, we
understand the Examiner's revised reasoning to be more closely aligned with
"design choice."
A claim feature that provides no novel or unexpected result is
generally considered to be "an obvious matter of design choice within the
skill of the art." In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); see In re
Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (holding that placement of
catalyst within a bag retainer is not merely "design choice" when it
overcomes a specific problem and the applicant(s) provided evidence of the
benefits of such placement, and distinguishing prior cases in which design
choice was properly relied upon because applicants "failed to set forth any
reasons why the differences between the claimed invention and the prior art
would result in a different function or give unexpected results"); see also In
re Conte, 36 F. App'x 446,451 (Fed. Cir. 2002) (non-precedential) (holding
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Appeal2018-001334
Application 14/430,001
that the difference between prior art's upward-opening slot and claimed
downward-opening slot was insignificant design choice because both types
of slots would retain the rubber band on the front of the gun barrel).
The following quotation from In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990), is applicable here:
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. [internal citations omitted] These
cases have consistently held that in such a situation, the
applicant must show that the particular range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range.
Appellants offer no evidence of criticality. Rather, based on the
current record and in view of the combination of Hall and Beuershausen,
claim 31 would be appear to be no more than the obvious "combination of
familiar elements according to known methods" yielding "no more than ...
predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416
(2007). Thus, we are not informed of error in the Examiner's rejection of
claim 31.
Appellants also argue that one of skill in the art would not combine
Hall and Beuershausen. Appeal Br. 8-10. In particular, Appellants argue
that the drag bits of Beuershausen "are not impact cutters, but rather act by
abrading a formation," which is different than Hall's impact cutters. Id. at 8.
Appellants cite the teachings of Hall to support their "position that the
cutters or Hall and Beuerhausen are different." Id. at 9. In particular,
Appellants quote Hall as stating: "It is believed that the large volume of
superhard material with respect to the carbide substrate, combined with the
substantially frustoconical geometry of the impact body, improves impact
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Appeal2018-001334
Application 14/430,001
resistance. Id. (quoting Hall 4:30-34 (Appellants' emphasis)). Appellants
allege that this "demonstrates that Beuerhausen's cutter is not suitable" for
impact cutting. We disagree.
First, in the above cited portion, Hall teaches that certain features are
"believed" to "improve[] impact resistance," not that these features that are
required for impact cutters. See Hall 4:30-34. Further, as cited by the
Examiner, Hall expressly acknowledges an overlap between impact cutters
and drag or abrasion cutters. Adv. Act. 1 (citing Hall 3:36, 3:39); Ans. 6.
Hall expressly states that a "carbide substrate 102A [of an impact tool lOOA]
... may be adapted for attachment to an implement for use in a high impact-
type service, such as a drag bit." Hall 3:33-36. Appellants' arguments,
which highlight differences between Hall and Beuershausen (see e.g. Reply
Br. 6-7), do not adequately address this overlap taught by Hall. Rather,
Appellants attempt to ignore this teaching arguing, in essence, that Hall is
limited to impact cutters, which are incompatible with drag bits. Reply Br.
5---6; see generally, Appeal Br. 8-10. For these reasons, we are not informed
of error in the Examiner's rejection.
DECISION
The Examiner's rejections of claims 31--46 are affirmed.
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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