Ex Parte Schwartz et al

Board of Patent Appeals and Interferences

Feb 27, 2009

10618059 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN J. SCHWARTZ, ROBERT N. DAVIE, JR., BERNARD D.
VAILLETTE, JON C. HAMMETT, ALLAN B. PACKMAN, TIMOTHY L.
BROWN, and JAMES D. CAMPBELL, JR.
____________

Appeal 2008-4545
Application 10/618,059
Technology Center 3700
____________

Decided:1 March 2, 2009
____________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Brian J. Schwartz et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-8, 10-11, 13-16, and 18-26.
Claims 9, 12, and 17 have been canceled. The Appellants’ representative
presented oral argument telephonically on February 12, 2009. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn towards a cooling nozzle for a
machine tool using a rotating bit. Specification 1, ¶ 4. The cooling nozzle
20 includes a fluid inlet 62, three branch outlets 66, 68, and 70 located at
120O intervals, a plenum 72, and a circular array of outlet passageways 74,
wherein each outlet passageway extends from the plenum to an outlet 80.
Specification 3, ¶ 17 and figs. 2 and 4.

Claims 1 and 10 are representative of the claimed invention and read
as follows:
1. An apparatus comprising:

a machine tool;

an elongate abrasive bit carried by the machine tool; and

a nozzle, the nozzle comprising a sintered body having:

at least one coolant inlet;

a plurality of coolant outlets, no gap in either
circumferential direction between sequentially
adjacent ones of the outlets being more than 72°;
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internal surface portions defining one or more
passageways between the at least one coolant inlet
the and at least one coolant outlet; and

an aperture accommodating the bit.

10. An apparatus comprising:

a machine tool;

an elongate abrasive bit carried by the machine tool; and

a nozzle, the nozzle comprising:
a through-aperture accommodating the bit;

a coolant inlet;

a plurality of coolant outlets at more than one
angular position about the through-aperture and
oriented to discharge associated coolant outlet
streams to impact obliquely toward a tip of the bit
along a side of the bit, no gap in either
circumferential direction between sequentially
adjacent ones of the outlets being more than 72°,
there being no other coolant outlets in addition to
the plurality of coolant outlets; and
internal surface portions defining one or more
passageways between the coolant inlet the and the
plurality of coolant outlets.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Perkins US 4,252,768 Feb. 24, 1981
Reitmeyer US 6,471,573 B1 Oct. 29, 2002
Louis (as translated)2 DE 202 16 396 U1 Feb. 6, 2003

The following rejections are before us for review:
1. claims 10, 11, and 133 under 35 U.S.C. § 102(e) as anticipated
by Louis;
2. claims 1-8, 10, 11, 13-16, and 18-264 under 35 U.S.C. § 103(a)
as unpatentable over Reitmeyer;
3. claims 10-11 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Reitmeyer in view of Louis;
4. claims 1-8, 14-16, and 18-26 under 35 U.S.C. § 103(a) as
unpatentable over Reitmeyer in view of Perkins; and

2 An English language translation obtained by the USPTO is appended
to this opinion.
3 The Examiner has ostensibly inadvertently included claims 14 and 15,
which depend from claim 1, not claim 10, in rejections (1) and (3), rather
than rejections (4) and (5). In the interest of fairness to the Appellants, we
treat claims 14 and 15 as included in rejections (4) and (5), and not
rejections (1) and (3). In light of our disposition of rejections (4) and (5)
below, this treatment does not appear to prejudice the Appellants.
4 On Page 3 of the Examiner’s Answer (mailed October 18, 2007), the
Examiner rejects claims 1-11, 13-16, and 18-26 as being unpatentable over
Reitmeyer. The Examiner appears to have made a typographical error
because claim 9 has been canceled. The same typographical error appears
with respect to rejections (4) and (5). The correct grouping of the claims is
shown above.
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5. claims 1-8, 14-16, and 18-26 under 35 U.S.C. § 103(a) as
unpatentable over Louis, either alone or in view of Perkins.

THE ISSUES
1. Have the Appellants shown that the Examiner erred in
determining that the tool of Louis constitutes an “elongate bit”?
2. Have the Appellants shown that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer to include a
sintered body?
3. Have the Appellants shown that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer to provide a
plurality of outlets having an angular spacing between adjacent
outlets of no more than 72°?
4. Have the Appellants shown that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer with the
cooling rim (ring) of Louis such as to provide a plurality of
outlets having an angular spacing between adjacent outlets of
no more than 72°?
5. Have the Appellants shown that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer or the
cooling rim (ring) of Louis with the sintered nozzle of Perkins?

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SUMMARY OF DECISION
We AFFIRM-IN-PART.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Louis discloses a cooling rim (ring) 24 arranged concentric to a
grinding and polishing tool 14 for providing a cooling liquid
(fluid) to the tool 14 and a glass work piece 10 being processed
by the tool 14. Louis further teaches water as a cooling
medium. Louis, Page 3 and 7 and figs. 1 and 2.
2. The tool 14 is a grinding or polishing disc 16 or a milling tool.
Louis, Page 2 and 7.
3. The cooling rim (ring) 24 includes a plurality of holes (outlets)
26 distributed uniformly or irregularly along the perimeter
located at a first acute angle 30 with the rotation axis 18. Louis,
Page 3 and 7 and figs. 2 and 3. The cooling rim (ring) further
includes a single inlet 48. Louis, Page 9 and fig. 8. The
angular spacing between adjacent outlets is no more than 72°.
Louis, figs. 11 and 12.
4. A customary and ordinary meaning of the term “bit” is “the
cutting part of any tool.” Webster's New World Dictionary 145
(David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc.
1984).
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5. Those skilled in the art at the time of the invention understood a
face-milling tool to have a disc shape. See, e.g., U.S. Patent
No. 2,136,953 to Reaney, issued Nov. 15, 1938, figs. 1 and 2.
6. Reitmeyer discloses an adapter (cooling nozzle) mounted about
a tool for supplying lubricating fluid (cooling fluid) to a region
of a workpiece for reducing friction and heat resulting during an
operation between the tool and the workpiece. Reitmeyer, col.
1, ll. 9-14.
7. The adapter 20 includes a mounting portion 21 that engages the
housing 11 of the machine 10. Reitmeyer, col. 3, ll. 8-13, and
fig. 3.
8. The mounting portion 21 includes a split 22 defining two
adjacent ends that are fastened together using fastener 23.
Reitmeyer, col. 3, ll. 26-28 and fig. 2.
9. The adapter 20 further includes a lubrication conduit portion 25
that is either secured with fasteners to or is integral with the
mounting portion 21. Reitmeyer, col. 3, ll. 42-47 and fig. 2.
10. The lubrication conduit 25 includes an inlet port 26, a first
outlet port 27, multiple internal passageways 28, 28a, and 28b,
and additional outlet ports 29a and 29b. Reitmeyer, col. 3, ll.
48-56 and fig. 2.
11. Any desired number of outlet ports 27, 29a, and 29b may be
located in any desired positions relative to the tool 12.
Reitmeyer, col. 3, ll. 59-62.
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12. A customary and ordinary meaning of sintering is “to cause to
become a coherent mass by heating without melting.” Merriam
Webster's Collegiate Dictionary 1096 (Tenth Ed. 1997).
13. Reitmeyer does not disclose the material used to make the
adapter 21. Further, Reitmeyer does not disclose what type of
fluid constitutes the “lubricating fluid.”
14. Neither Reitmeyer nor Louis discloses a “sintered body.”
15. Reitmeyer discloses that the lubrication conduit portion 25 is a
sector having a center angle of about 90°. Further, the angle
between the outlet ports 29a, 27, and 29b appears to be about
22.5°. Reitmeyer, fig. 2.
16. Perkins discloses a sintered ceramic nozzle 10, 20 having high
temperature oxidation resistance, high hardness, and high
abrasion and corrosion resistance for use with abrasive and/or
corrosive materials. Perkins, Abstract and figs. 1 and 2.

PRINCIPLES OF LAW
Claim construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).

Anticipation
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“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (1987).
It is not necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or fully met by the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983).

Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, _, 127
S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
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sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the 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, _, 127 S. Ct. 1727, 1741 (2007).
When a work is available in one field of
endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one. If a person of
ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
For the same reason, if a technique has been
used to improve one device, and a person of
ordinary skill in the art would recognize that it
would improve similar devices in the same
way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, 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. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).

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Inherency
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient. (Citations omitted.)
If, however, the disclosure is sufficient to show
that the natural result flowing from the operation
as taught would result in the performance of the questioned
function, it seems to be well settled that
the disclosure should be regarded as sufficient.
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939)).

OPINION5
Issue (1)
The rejection of claims 10, 11, and 13 as anticipated by Louis
The Appellants argue that the tool of Louis does not constitute an
“elongate bit” (App. Br. 6). In response, the Examiner points to the tool 14,
16 shown in Figure 10 of Louis and takes the position that the tool of Louis

5 We refer herein to the Appeal Brief (“App. Br.”), filed August 16,
2007, the Reply Brief (“Reply Br.”), filed December 20, 2007, the Final
Rejection (“Final Rejection”), mailed November 29, 2006, and the
Examiner’s Answer (“Answer”), mailed October 18, 2007.
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satisfies the limitation of an “elongated bit” because it includes an
“elongated” shaft. Furthermore, according to the Examiner, since the shaft
is inserted into the chuck of a machine tool, the tool of Louis satisfies the
limitation of a “bit” (Answer 6). Finally, the Examiner takes the position
that Louis also discloses a “milling tool” (Answer 6) which is “inherently
elongated” (Final Rejection 7). The Examiner points to Figure 2 of US
Patent No. 6, 739, 959 (issued to Bodenmiller on May 25, 2004) to show
that “a milling tool as known in the art is generally defined by an ‘elongate
bit’” (Answer 6-7). In response, the Appellants argue that a “milling tool is
not inherently elongated” (App. Br. 6) and that the use of newly cited prior
art, U.S. Patent No. 6, 739, 959, constitutes a new ground of rejection
(Reply Br. 4-5).
The tool 14 of Louis is a grinding or polishing disc 16 or a milling
tool (FF 2). The Appellants’ Specification does not expressly define the
term “bit” or otherwise indicate that these terms are used in a manner other
than their ordinary and customary meaning. Accordingly, we construe the
term “bit” in accordance with its ordinary and customary meaning. As
found above, a customary and ordinary meaning of the term “bit” is “the
cutting part of any tool” (FF 4). In the tool 14 of Louis, the “cutting edge”
of the tool is formed by the grinding or polishing disc 16 and not the shaft
portion, as the Examiner contends. As such, we are in agreement with the
Appellants that a person of ordinary skill in the art would not characterize
the tool 14 of Louis as an “elongate bit.” Therefore, the grinding or
polishing disc 16 of the tool 14 of Louis does not satisfy the limitation of an
“elongate bit,” as required by claim 10.
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As noted above, Louis also discloses the tool 14 to be a milling tool
(FF 2). Although the Examiner provides evidence of a “milling tool” that is
“elongated,” we disagree with the Examiner’s assertion that “a milling tool
as known in the art is generally defined by an ‘elongate bit’” (Answer 6-7),
that is, a milling tool is “inherently elongated” (Final Rejection 7). Not all
milling tools are necessarily “elongated.” For example, as noted above,
when face milling, the tool is disc-shaped and thus cannot be characterized
as “elongated” (FF 5), as the Examiner asserts.
In conclusion, we find that Louis does not disclose an “elongate bit,”
as required by claim 10. Therefore, Louis does not show all the elements of
claim 10. Accordingly, the rejection of claims 10, 11, and 13 under 35
U.S.C. § 102(e) as anticipated by Louis, cannot be sustained.

Issue (2)
The rejection of claims 1-8, 14-16, and 18-26 as unpatentable over
Reitmeyer
Each of independent claims 1, 16, and 20 recites an apparatus having
a nozzle comprising a “sintered body.” The Examiner contends that the
limitation of a “sintered body” is drawn to the process of forming the nozzle,
and hence, “is not germane to the issue of patentability of the [nozzle]”
(Answer 4). Furthermore, the Examiner takes the position that it is well
known in the art that sintering makes a device “last longer and/or protect it
against corrosion…and such modification would have been well within the
knowledge of one of ordinary skill in the art” (Answer 4).
The Appellants argue that the Examiner erred in rejecting these claims
because,
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There is no indication that one of ordinary skill in
the art would provide Reitmeyer with a sintered
body (and none that Reitmeyer’s structure would
be sinterable), let alone that the sintered body
would either make [the adapter of] Reitmeyer last
longer or protect it against corrosion in the
Reitmeyer use.

App. Br. 9 (underlining in original).
We find the Examiner’s purported reason for modifying the adapter
(cooling nozzle) of Reitmeyer to make it as a sintered body in order to “last
longer and/or protect it against corrosion” deficient in this case because the
Examiner has not explained why a person of ordinary skill in the art would
have considered a sintered body to be suitable for the adapter of Reitmeyer.
First, we note that the Appellants’ Specification does not expressly
define the term “sintering” or otherwise indicate that this term is used in a
manner other than their ordinary and customary meaning. Accordingly, we
construe the term “sintering” in accordance with its ordinary and customary
meaning. As shown above, a customary and ordinary meaning of the term
“sintering” is “to cause to become a coherent mass by heating without
melting” (FF 12). As such, although we agree with the Examiner that
“sintering” is a process of forming the nozzle, the claims recite a “sintered
body.” Since in a “sintered body” the material is not melted we find that a
person of ordinary skill in the art would readily appreciate that a “sintered
body” has a separate and distinct structure than a body that includes melting.
Second, the Examiner has not provided any factual basis to show that
modifying the adapter (cooling nozzle) of Reitmeyer to include a “sintered
body” will make the adapter of Reitmeyer “last longer and/or protect it
against corrosion” or that a person of ordinary skill in the art would
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understand this to be the case. Although a “sintered body” has a separate
and distinct structure, the corrosion strength of an object is the result of
balancing a variety of factors such as, the corrosion strength of the material
used to make the object (i.e., metallic, ceramic, plastic), the corrosive
properties of the environment in which the object is used (i.e., water, salt
content, abrasive particles), and the forces acting on the object during its use
(i.e., pressure, temperature, mechanical stress). Without taking these factors
into consideration, we find that it is not clear that a sintered adapter would
“protect it against corrosion,” as proposed by the Examiner. Reitmeyer does
not disclose the material used to make the adapter 21. Further, Reitmeyer
does not disclose what type of fluid constitutes the “lubricating fluid” (FF
13). Since neither the material of the adapter nor the fluid flowing through
the adapter of Reitmeyer are disclosed, we find that a person of ordinary
skill in the art would not reasonably appreciate that a sintered adapter would
“protect it against corrosion,” and hence, modify the adapter of Reitmeyer
with a sintered body, as proposed by the Examiner. Accordingly, the
modification proposed by the Examiner of modifying the adapter (cooling
nozzle) of Reitmeyer to include a “sintered body” would not have been
obvious to the person of ordinary skill in the art.
For the above stated reasons, the Examiner has failed to set forth a
prima facie case of obviousness of the subject matter of independent claims
1, 16, and 20. We will not sustain the rejection of claims 1, 16, and 20 or
their dependent claims 2-8, 14, 15, 18-19, and 21-26. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious
under 35 U.S.C. § 103, then any claim dependent therefrom is nonobvious).

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Issue (3)
The rejection of claims 10, 11, and 13 as unpatentable over Reitmeyer
The Appellants argue that Reitmeyer does not disclose a plurality of
outlets having an angular spacing between adjacent outlets of no more than
72° (App. Br. 7). Specifically, the Appellants argue that the angular spacing
between outlet ports 29a and 29b of Reitmeyer is more than 270°” (App. Br.
24). In response, the Examiner takes the position that because
Reitmeyer discloses…that “any desired number of
such outlet ports 27, 29a, and 29b may be located
in any desired positions relative to the tool 12”. It
would have been obvious to one of ordinary skill
in the art, at the time the invention was made, to
modify the invention of Reitmeyer with more
outlet ports (e.g., 5, spaced substantially around
the adapter) with spacing of no more than 72
degrees, in adapting the device for a particular
application.”

Answer 4.
Finally, the Appellants appear to argue that even if a plurality of outlet
ports, i.e., 10 ports, are provided to the adapter of Reitmeyer, according to
the teachings of Reitmeyer, the outlet ports would merely be spaced closer
together on the same sector and the gap between adjacent outlets would be
more than 72° (App. Br. 9). In other words, it appears that the Appellants
are arguing that even if multiple outlet ports are provided to the the adapter
of Reitmeyer, as the Examiner proposes, that does not necessarily result in
an angular spacing between adjacent outlets of no more than 72°, as required
by claim 10.
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Reitmeyer specifically teaches that any desired number of outlet ports
27, 29a, and 29b may be located in any desired positions relative to the tool
12 (FF 11). In view of the teachings of Reitmeyer, we find that a person of
ordinary skill in the art would readily appreciate that location of any desired
number of outlet ports located in any desired position relative to the tool
encompasses providing more than three nozzles over a greater portion of the
adaptor than that occupied by the particular conduit portion 25 illustrated in
fig. 2. In order to accommodate such an array of nozzles in the adapter of
Reitmeyer, a person of ordinary skill in the art would understand that either
a larger conduit portion 25 is required or a plurality of lubrication conduit
portions 25 are required. Reitmeyer discloses that the lubrication conduit
portion 25 is a sector having a center angle of about 90° and the angle
between the outlet ports 29a, 27, and 29b appears to be about 22.5° (FF 15).
As such, we find that Reitmeyer teaches that there are a finite number of
alternatives for the positioning of a plurality of lubrication conduit portions
25. A person of ordinary skill in the art would readily appreciate that
because each lubrication conduit portion 25 has a center angle of about 90°,
only four lubrication conduit portions 25 can be mounted to the mounting
portion 21 in the adapter of Reitmeyer, hence forming a full 360° coverage
(as required by claim 13). In such a case the angular spacing between
adjacent outlets is about 45°, which is no more than 72°, as required by
claim 10. Moreover, the Appellants’ argument that a “comprehensive
reengineering would be required” in order to for the plenum 28 to feed all
the outlets (App. Br. 8) is unpersuasive because a person of ordinary skill in
the art would readily appreciate that in order to feed four similar lubrication
conduit portions 25, merely four similar inlet ports 28 would be provided.
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When there is a design need or market
pressure to solve a problem and there are a
finite number of identified, predictable
solutions, a person of ordinary skill has good
reason to pursue the known options within his
or her technical grasp. If this leads to the
anticipated success, it is likely the product not
of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show
that it was obvious under § 103.

KSR at 1742.
Accordingly, the selection of the number of lubrication conduit
portions, that is, four lubrication conduit portions, appears to be the product
not of innovation but of ordinary skill and common sense. The Appellants
have not shown that providing four lubrication conduit portions to the
mounting portion in the adapter of Reitmeyer would be uniquely challenging
or beyond the technical grasp of a person of ordinary skill in the art. In
conclusion, the Appellants’ arguments do not persuade us the Examiner
erred in rejecting claims 10, 11, and 13.
Accordingly, the rejection of claims 10, 11, and 13 under 35 U.S.C. §
103(a) as unpatentable over Reitmeyer is sustained.

Issue (4)
The rejection of claims 10, 11, and 13 as unpatentable over Reitmeyer in
view of Louis
The Appellants argue the rejection under 35 U.S.C. § 103(a) of claims
10, 11, and 13 together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2007), we have selected claim 10 as the representative
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claim to decide the appeal, with claims 11 and 13 standing or falling with
claim 10.
The Appellants argue that the Examiner’s conclusion of obviousness
is based on improper hindsight (App. Br. 12). However, it must be
recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made, and does not include knowledge
gleaned only from the applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
In this case, Reitmeyer specifically teaches that any desired number of
outlet ports 27, 29a, and 29b may be located in any desired positions relative
to the tool 12 (FF 11). As shown above, a person of ordinary skill in the art
would readily appreciate that location of any desired number of outlet ports
located in any desired position relative to the tool encompasses providing
more than three nozzles over a greater portion of the adaptor than that
occupied by the particular conduit portion 25 illustrated in fig. 2. In order to
accommodate such an array of nozzles in the adapter of Reitmeyer, a person
of ordinary skill in the art would understand that either a larger conduit
portion 25 is required or a plurality of lubrication conduit portions 25 are
required. Louis discloses a cooling rim (ring) arranged concentric to a tool
for providing a cooling liquid (fluid) to the tool and the work piece being
processed (FF1). Furthermore, Louis discloses that the cooling rim (ring)
includes a single inlet and a plurality of outlets distributed uniformly or
irregularly along its perimeter having an angular spacing between adjacent
outlets of no more than 72° (FF 3). Hence, in view of the teachings of
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Reitmeyer suggesting a plurality of outlets and the explicit teachings of
Louis of a cooling rim (ring) having a plurality of outlets distributed
uniformly along its perimeter, we agree with the Examiner that “[i]t would
have been obvious to one of ordinary skill in the art, at the time of the
invention was made, to modify the invention of Reitmeyer with more outlet
ports as taught by DE ‘396 [(Louis)]” (Answer 5) because the modification
is no more than “the simple substitution of one known element for another or
the mere application of a known technique to a piece of prior art ready for
the improvement.” KSR at 1740. Therefore, the substitution appears to be
the product not of innovation but of ordinary skill and common sense.
Further, the Appellants argue that modifying the adapter of Reitmeyer
to provide multiple ports as taught by Louis “would greatly increase
Reitmeyer’s already high complexity and manufacturing cost” (App. Br. 12).
We find the Appellants’ argument unpersuasive for at least two reasons.
First, the Appellants have not provided any objective evidence that the
Examiner’s proposed modification would increase the manufacturing cost.
The arguments of counsel cannot take the place of evidence in the record. In
re Schulze, 346 F.2d 600, 602 (CCPA 1965). Second, the modified adapter
of Reitmeyer in view of Louis includes a single unitary ring having a single
inlet and a plurality of outlets, whereas the unmodified adapter of Reitmeyer
includes multiple lubrication conduit sections, multiple inlets, and multiple
outlets. Hence, in contrast to the Appellants’ position, we find that the
modified adapter of Reitmeyer in view of Louis is actually a less complex
device than the adapter of Reitmeyer because of the reduced number of
inlets and its integral and unitary construction.
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Finally, the Appellants appear to argue that because the adapter of
Reitmeyer has a different construction than the cooling rim (ring) of Louis,
the teachings of Reitmeyer and Louis teach away from the combination
(App. Br. 12). However, simply that there are differences between two
references is insufficient to establish that such references "teach away" from
any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed.
Cir. 1992).
For the foregoing reasons, the Appellants’ arguments do not persuade
us the Examiner erred in rejecting claim 10, and claims 11 and 13 standing
or falling with claim 10. Accordingly, the rejection of claim 10, and claims
11 and 13 standing or falling with claim 10, is sustained.
Issue (5)
The rejection of claims 1-8, 16, and 18-26 as unpatentable over Reitmeyer in
view of Perkins
Each of independent claims 1, 16, and 20 recites an apparatus having
a nozzle comprising a “sintered body.” As shown above, neither Reitmeyer
nor Louis discloses a “sintered body” (FF 14). Perkins discloses a sintered
ceramic nozzle 10, 20 having high temperature oxidation resistance, high
hardness, and high abrasion and corrosion resistance for use with abrasive
and/or corrosive materials (FF 16). The Appellants argue that the Examiner
has not “properly cited motivation as to why a person of ordinary skill in the
art would so modify Reitmeyer or otherwise attempt sintered material use in
a coolant nozzle” (App. Br. 14) (underlining in original). In response, the
Examiner asserts that,
The teaching from Perkins et al to one of ordinary
skill in the art would be that if a nozzle as
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disclosed by Reitmeyer [is] utilized in [a] highly
corrosive/abrasive environment were subject to
corrosion/abrasion itself, the problem may be
cured using sintered ceramic body.
Answer 10-11. Underlining added.
We find the Examiner’s purported reason for modifying the adapter
(cooling nozzle) of Reitmeyer to include a sintered body “if a nozzle as
disclosed by Reitmeyer [is] utilized in [a] highly corrosive/abrasive
environment,” to be speculative. We could not find any teachings in
Reitmeyer and the Examiner has not pointed to any teachings in Reitmeyer
that would suggest to a person of ordinary skill in the art that the adapter
(cooling nozzle) of Reitmeyer is utilized in a highly corrosive or abrasive
environment. As shown above, Reitmeyer does not disclose what type of
fluid constitutes the “lubricating fluid” (FF 13). Hence, Reitmeyer does not
disclose that the adapter (cooling nozzle) is used in a highly corrosive or
abrasive environment, as the Examiner appears to suggest. Moreover, we
note that the use of the term “lubricating” to describe the fluid flowing
through the adapter of Reitmeyer would reasonably suggest to a person of
ordinary skill that the fluid is not abrasive. As such, the Examiner’s
contention is mere speculation based on an unfounded assumption that the
“lubricating fluid” is highly corrosive or abrasive. Hence, we do not find
that the Examiner has established a factual basis to show that modifying the
adapter (cooling nozzle) of Reitmeyer to include a “sintered body” as taught
by Perkins would have been obvious to a person of ordinary skill in the art.
For the above stated reasons, the Examiner has failed to set forth a prima
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facie case of obviousness of the subject matter of independent claims 1, 16,
and 20.
In conclusion, we will not sustain the rejection of claims 1, 16, and 20
or their dependent claims 2-8, 14, 15, 18-19, and 21-26 under 35 U.S.C. §
103(a) as unpatentable over Reitmeyer in view of Perkins. See In re Fine,
837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).

The rejection of claims 1-8, 16, and 18-26 as unpatentable over Louis,
alone, or in view of Perkins
With respect to the teachings of Louis and Perkins the Examiner
merely states that,
DE '396 modified with respect to choice of
material as indicated above, or in view of Perkins
et al. further modified in light of combination with
known tools, depending on the intended use, as
indicated above meets all the limitations.

Answer 6.
Louis discloses a cooling rim (ring) 24 arranged concentric to a
grinding and polishing tool 14 for providing a cooling liquid (fluid), such as
water, to the tool 14 and a glass work piece 10 being processed by the tool
14 (FF 1). Perkins discloses a sintered ceramic nozzle 10, 20 having high
temperature oxidation resistance, high hardness, and high abrasion and
corrosion resistance for use with abrasive and/or corrosive materials (FF 16).
We could not find any teachings in Louis and the Examiner has not pointed
to any teachings in Louis that would suggest to a person of ordinary skill in
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the art that the cooling rim (ring) 24 of Louis is utilized in a highly corrosive
or abrasive environment. Louis specifically discloses water as a cooling
fluid (FF 1). A person of ordinary skill in the art would readily appreciate
that the cooling water of Louis cannot constitute a corrosive or abrasive fluid
because it would damage the tool 14. Hence, we do not find that the
Examiner’s statement establishes a factual basis to show that modifying the
cooling rim (ring) 24 of Louis to include a “sintered body” as taught by
Perkins would have been obvious to a person of ordinary skill in the art. For
the above stated reasons, the Examiner has failed to set forth a prima facie
case of obviousness of the subject matter of independent claims 1, 16, and
20.
In conclusion, we will not sustain the rejection of claims 1, 16, and 20
or their dependent claims 2-8, 18-19, and 21-26 under 35 U.S.C. § 103(a) as
unpatentable over Louis, either alone or in view of Perkins.

CONCLUSIONS
1. The Appellants demonstrated that the Examiner erred in
determining that the tool of Louis constitutes an “elongate bit.”
2. The Appellants demonstrated that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer with a
sintered body.
3. The Appellants failed to demonstrate that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer to provide a
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plurality of outlets having an angular spacing between adjacent
outlets of no more than 72°.
4. The Appellants failed to demonstrate that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer with the
cooling rim (ring) of Louis such as to provide a plurality of
outlets having an angular spacing between adjacent outlets of
no more than 72°.
5. The Appellants demonstrated that the Examiner erred in
determining that a person of ordinary skill in the art would have
been prompted to modify the adapter of Reitmeyer or the
cooling rim (ring) of Louis with the sintered nozzle of Perkins.

SUMMARY
The decision of the Examiner to reject claims 10, 11, and 13 under 35
U.S.C. § 102(e) as anticipated by Louis is reversed.
The decision of the Examiner to reject claims 1-8, 10, 11, 13-16, and
18-26 under 35 U.S.C. § 103(a) as unpatentable over Reitmeyer is reversed
as to claims 1-8, 14-16, and 18-26 and affirmed as to claims 10, 11, and 13.
The decision of the Examiner to reject claims 10-11 and 13 under 35
U.S.C. § 103(a) as unpatentable over Reitmeyer in view of Louis is
affirmed.
The decision of the Examiner to reject claims 1-8, 14-16, and 18-26
under 35 U.S.C. § 103(a) as unpatentable over Reitmeyer in view of Perkins
is reversed.
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The decision of the Examiner to reject claims 1-8, 16, and 18-26
under 35 U.S.C. § 103(a) as unpatentable over Louis, either alone or in view
of Perkins, is reversed.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

hh

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NEW HAVEN, CT 06510

Attachments: English translation of Louis reference (DE 202 16 396 U1)