Ex Parte Simmons et alDownload PDFPatent Trial and Appeal BoardSep 22, 201411522395 (P.T.A.B. Sep. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JASON M. SIMMONS and DONALD R. FLATAU ____________________ Appeal 2012-004345 Application 11/522,395 Technology Center 3600 ____________________ Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and JILL D. HILL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–26. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter new grounds of rejection. The claims are directed to bucket teeth having a metallurgically bonded coating and methods of making bucket teeth. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-004345 Application 11/522,395 2 1. A bucket tooth for a bucket, comprising: a steel body comprising a bottom surface, a top surface opposite the bottom surface, and a tip disposed between the bottom surface and the top surface, wherein the top surface and the bottom surface converge toward the tip; and a metallurgically bonded, wear-resistant coating formed on the bottom surface, top surface and tip of the body, the wear- resistant coating comprising a fused hard metal alloy comprising at least 60% by weight iron, cobalt, nickel or alloys thereof wherein the wear-resistant coating is formed on the entire bottom surface. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Stoody Taguchi Brown Fellner Lukavich Materkowski Revankar US 2,033,594 US 3,888,637 US 4,224,382 US 5,018,283 US 5,111,600 US 5,337,801 US 5,879,743 Mar. 10, 1936 June 10, 1975 Sept. 23, 1980 May 28, 1991 May 12, 1992 Aug. 16, 1994 Mar. 9, 1999 Wodrich US 2006/0017323 A1 Jan. 26, 2006 REJECTIONS Claims 1–3, 6, 71, 10, 13, 15–19, 22–23, and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukavich, Revankar, Brown, and Materkowski. Ans. 5. Claims 4, 5, 14, 20, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Fellner. Ans. 10. 1 Based on the entirety of the Examiner’s Answer, which addresses claim 8 only with respect to the combination below, we believe the inclusion of claim 8 in this ground of rejection was a typographical error. App. Br. 12. Appeal 2012-004345 Application 11/522,395 3 Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Stoody. Ans. 11. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Taguchi. Ans. 12. Claims 9, 12, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukavich, Revankar, Brown, Materkowski, Stoody, and Wodrich. Ans. 12. OPINION The claimed invention. The claimed invention involves the application of the wear-resistant alloy coating described in the commonly owned U.S. Patent No. 5,879,743 (“Revankar”), to bucket teeth for “excavators, diggers and other related excavation, digging, construction and mining equipment.” Spec. p. 1, para. 1; p. 4, para. 23. The commonly owned prior patent, Revankar, did not specifically teach applying the disclosed and claimed coating process to bucket teeth for the implements described above. Revankar discussed, more generally, application to “the metal surface[s] of a tool or an agricultural implement . . . particularly [the] cutting edges of tools.” Revankar, col. 1, ll. 9–15, col. 2, ll. 51–52. Revankar specifically contemplated “hardfacing surfaces of steel items subject to high impact, corrosion, and abrasive wear including, but not limited to, tools (especially cutting edges of tools), bearings, pistons, crankshafts, gears, machine parts, firearms, farm implements, and surgical instruments.” Id. at col. 5, ll. 26–30. Revankar described “hardfacing surfaces” but did not specify coating “entire” surfaces or entire specific surfaces such as the “entire bottom Appeal 2012-004345 Application 11/522,395 4 surface” of a bucket tooth as is now required by Appellants’ claims. Revankar also described the relationship between the coating and the substrate as “fused” or “tightly bonded,” but did not specify whether the coating is “metallurgically bonded” to the substrate as is now also required by Appellants’ claims. Appellants’ Specification describes specific profiles and attachment means for bucket teeth, and that the bucket teeth may be induction hardened. See, e.g., Figs. 1, 2, 7; Spec. p. 3, paras. 16–18; p. 4, para. 20; p. 9, paras. 39, 41. However, there is no indication that these arrangements were previously unknown in the art or that Appellants developed these arrangements. Spec. passim. One skilled in the art would understand that Appellants’ invention is focused on the application of Revankar’s coating to bucket teeth having the features described in the Specification and recited in the claims. Id. Thus, the claimed invention is directed to the application of the commonly owned Revankar method to a specific product (claims 15–26), and for the product resulting therefrom (claims 1–14).2 The Applied Prior Art At the outset, in describing the Examiner’s rejection, Appellants implicitly argue the number of references applied. App. Br. 5–6 (“yet another reference . . . ”). Patent specifications are written for those skilled in the art and, therefore, need not teach or point out in detail that which is well- known in the art. In re Myers, 410 F.2d 420, 424 (CCPA 1969). In fact, the omission of that which is well-known is preferred. MPEP § 2164.08. Our 2 Although no such rejection is before us for review, In re Laughlin, 48 F.2d 921, 924 (CCPA 1931) discusses the obviousness issues associated with a similar situation in the context of a double patenting rejection. Appeal 2012-004345 Application 11/522,395 5 inquiry under 35 U.S.C. § 103(a) takes into account the fact that that which is old, well-known, or obvious is often left unstated. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to know something about the art apart from what the references disclose). For these reasons, it has been held that reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Lukavich, although predominantly concerned with the “strategic placement and sizing” of hardfacing (see, e.g., col. 5, ll. 9–13) on bucket teeth, is cited by the Examiner to demonstrate that it was well-known in the art to “apply hard material to the entire top, bottom, and/or side surfaces of the tooth 10” Lukavich, col. 4, l. 65 – col. 5, l. 2; see also Ans. 5 Revankar, the commonly owned patent, is cited by the Examiner to demonstrate that the coating process was well-known in the art. Ans. 5 (citing Revankar, col. 6, ll. 62–65). Appellants’ Specification states that Revankar’s coating process is suitable for the claimed method or to make the claimed teeth. See Spec. p. 4, para. 23. Because Lukavich does not mention any specific material for making the bucket teeth that are hardfaced, the Examiner cites Materkowski as demonstrating that it was known in the art to make such teeth from “steel.” Ans. 5 (citing Materkowski, col. 5, ll. 1–5). As noted above, Revankar describes the relationship between the coating and a substrate, that may be steel, as “fused” or “tightly bonded” but does not specify whether the coating is “metallurgically bonded.” Lukavich also does not describe the specific type of bond that the tooth substrate and the hardface coating cooperate to form. It is not apparent from the record before us why the same process applied to the same materials might result in Appeal 2012-004345 Application 11/522,395 6 a coating having a different type of bond than Revankar’s process would normally form. Nevertheless, the Examiner cites Brown as demonstrating that coatings “metallurgically bonded” were known in the art. Ans. 5 (citing Brown, col. 2, ll. 45–48). Fellner is cited by the Examiner as teaching “a ripper tooth wherein the bottom surface is substantially planar (23) and the top surface (20) is concave.” Ans. 10. Stoody is cited by the Examiner as teaching a “tip comprising a surface hardened region (18) extending inwardly from the coating (17).” Ans. 12. Taguchi is cited by the Examiner as teaching “a tooth body that is a casting . . . [or] forging.” Ans. 12 (citing Taguchi col 1, l. 18). Wodrich is cited by the Examiner as teaching “induction hardening select surfaces.” Ans. 13 (citing Wodrich, paras. 14, 114). Teaching away The Appellants and the Examiner agree on the content of Lukavich’s disclosure. They disagree as to how one skilled in the art would interpret it. Lukavich undoubtedly considers his contribution to the art an improvement over coatings that coat the entire bottom surface of bucket teeth. App. Br. 6–9; Lukavich, col. 4, l. 65–col. 5, l. 2. Appellants contend that Lukavich’s disparaging remarks that “[i]t is not economical or practical to apply hard material to the entire top, bottom, and/or side surfaces of the tooth” would lead one skilled in the art away from coating the “entire bottom surface” of bucket teeth as required by claims 1, 13, and 15, or “side surfaces” as required by claims 6 and 22. Id. at 9–11, 12. Appeal 2012-004345 Application 11/522,395 7 Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Although our reviewing court has required the presence of disparaging or criticizing statements to find a teaching away (In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)), contrary to Appellants’ assertion (App. Br. 10), we are unaware of any precedent where our reviewing court has held, in a mechanical fashion, that the mere presence of a single disparaging remark concludes the inquiry and necessitates a finding that the prior art would have led one skilled in the art away from the claimed invention. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Our reviewing court has consistently held that prior art references must be considered as a whole. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). Considering a reference as a whole includes consideration of the reasons why a particular combination is discouraged. Where those reasons might not be a concern to those skilled in the art, a reference will not lead one skilled in the art away from a particular combination. See, e.g., In re Nehrenberg, 280 F.2d 161, 164 (CCPA 1960): [The prior art] has considered the use of the amount of carbon set forth in appellant’s claims, but regards it as undesirable for his particular purpose of making a steel of high toughness . . . . [The prior art still] suggest[s] to those skilled in the art [the] carbon content [according to the claims] . . . if extreme toughness were not desired . . . . A disclosure of a composition of matter in a reference may be anticipatory even though the reference indicates that such composition is not preferred or even that it is unsatisfactory for the intended purpose. see also In re Heck, 699 F.2d 1331, 1332–33, (Fed. Cir. 1983) (Even though the prior art hardened cam edges, those edges were less hard than the center Appeal 2012-004345 Application 11/522,395 8 and this would not have led one skilled in the art away from unhardened edges if a differential in wearing-away was desired); In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007) (looking to the context in which the prior art taught away from using single-action springs). The reasons Lukavich discourages coating entire surfaces are that it is not “economical or practical.” It is not clear exactly what “practical” refers to, but Lukavich’s predominant concern with coating entire surfaces appears to be cost. Lukavich and Revankar clearly demonstrate that one skilled in the art would expect hardfaced surfaces to wear less quickly. The additional expense of time or money associated with the coating of entire surfaces would not discourage one of ordinary skill in the art from seeking the wear characteristics expected therefrom. “That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility. Only the latter fact would be relevant.” See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). It is true that the Examiner’s proposed combination omits the teachings which Lukavich regarded as his contribution to the art, along with such advantages as it might provide. App. Br. 11. However, the combination is clearly obvious in view of the prior art and in that the Revankar coating will operate therein on the same principles as before to reduce the wear of any coated surfaces. See, e.g., In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969). Considering the prior art as a whole, we find that Lukavich’s endorsement of strategic coating over more complete coating would not have taught one skilled in the art away from coating an entire product or entire surfaces. Lukavich presents an alternative to a well- entrenched coating technique, which, of course, he considers better and Appeal 2012-004345 Application 11/522,395 9 urges as a replacement. An inventor’s recommendation of a new technique, however, would not necessarily have led skilled artisans to abandon all other older, more traditional, methods. See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992). Official Notice that bucket tooth adapters and fasteners are well-known and the determination that the phrase “secured . . . in a conventional manner” teaches “fasteners.” In rejecting claim 13 in the Non-Final Office Action of October 4, 2010 (p. 6), the Examiner took Official Notice that “it is old and well known to include a bucket tooth adapter configured to be attached to a cutting edge of a bucket and to a bucket tooth with at least one fastener, each fastener adapted to fasten a bucket tooth to a bucket tooth adapter.” See also Ans. 7. Appellants appear to contest this Official Notice for the first time in their Appeal Brief. App. Br. 12–13. The Examiner asserts Appellants’ arguments in this regard are untimely because Appellants did not follow the procedure set forth in the Manual of Patent Examining Procedure (MPEP) § 2144.03. Appellants assert that the Examiner also failed to follow the proper procedure outlined in that section of the MPEP. Reply Br. 4–6. In rejecting claim 14, the Examiner interpreted Fellner’s statement (at col. 2, ll. 8–9) that “[c]utting teeth 12 are secured to the bucket in a conventional manner” as a disclosure of the recited “fasteners.” Ans. 11. Appellants contend that a conventional manner may include welding or brazing, as opposed to a pin or bolt, which are described as fasteners in Appellants’ Specification. App. Br. 15; Spec. p. 4, para. 20. The Examiner contends that such welding or brazing still results in a structure reasonably interpreted as a “fastener.” Ans. 17–18. Appeal 2012-004345 Application 11/522,395 10 In light of the extensive record before us, there does not appear to be a need to delve into the procedural aspects of Official Notice, or to explore the expansiveness of the term “fastener.” Materkowski, cited in each of the Examiner’s rejections, clearly discloses tooth support 14 coupling bucket (12) lip 10 to excavator tooth 16 using bolts or pins 20. Materkowski, Fig. 1; col. 4, ll. 57–65. This is exactly the same arrangement for a “bucket tooth adapter,” disclosed in Appellants’ Specification. See Fig. 7; Spec. 4, para. 20. Lukavich also teaches that pins (not shown) are received in openings 18 to secure teeth 10 in a well-known manner. Col. 2, ll. 56–60. These teachings of Materkowski and Lukavich make it clear that the subject matter of claims 13 and 14 relating to tooth attachment were well- known in the art. It therefore follows from this conclusion that it would have been obvious to hardface known bucket teeth. As such, it would have been obvious to hardface the type of bucket teeth described in claims 13 and 14. We will therefore affirm the rejection of claims 13 and 14. However, as we have supplemented the Examiner’s rejection by relying on additional facts in the record not previously relied on, we designate our affirmance of the rejections of claims 13 and 14 as being based on a “new ground” pursuant to 37 C.F.R. 41.50(b) so as to afford Appellants a full and fair opportunity to respond. Concave, convex, and planar. In rejecting claims 4, 5, 20, and 21 the Examiner interprets the terms “bottom surface is substantially planar” and “bottom surface is convex” to include surfaces that have both Lukavich’s concave portion 30 and Fellner’s planar portion 23 or convex portion 24. Appellants correctly point out that the Examiner relies on an unreasonably broad claim construction in rejecting Appeal 2012-004345 Application 11/522,395 11 these claims. Reply Br. 6–7. The claims describe the geometry of the bottom surface not merely a portion thereof. Thus, the claims, do not allow for only portions of the bottom surface to be convex or planar as is the case in Fellner’s arrangement or the Examiner’s proposed combination. Accordingly, we must reverse the rejection of claims 4, 5, 20, and 21 as being based on an unreasonably broad claim construction. Appellants’ remaining arguments. In addition to arguing that Stoody does not cure the perceived deficiencies of Lukavich, Appellants contend Stoody “fails to disclose a wear resistant coating at all.” The conclusion Appellants draw from this is that Stoody “does not teach or suggest applying a wear resistant coating to the sides of a bucket tooth.” App. Br. 16. It is not clear how this argument relates to claim 8 or any of the Examiner’s findings or conclusions based on Stoody. The basis for Appellants’ assertion that Stoody does not disclose a coating is also unclear. We are not apprised of any reason one skilled in the art would not understand the outer layer of hard facing 17 deposited, for example, by welding, as a wear resistant coating, and the material in groove 16 as a surfaced hardened region of the tip extending inwardly therefrom. Stoody, p. 2, col. 1, l. 71–col. 2, l. 8. While Stoody’s hardening arrangement differs from that described in Appellants’ Specification (p. 9, paras. 39–41), limitations from the Specification are not read into the claims. We cannot agree with Appellants’ argument that because Taguchi is concerned with ripper teeth, one skilled in the art would not regard Taguchi’s teachings regarding casting or forging as relevant to the problem of manufacturing wear resistant bucket teeth. See App. Br. 17–18. While the wear patterns may be different, ultimately resulting in teeth having Appeal 2012-004345 Application 11/522,395 12 somewhat different structures, we see no reason one skilled in the art would segregate the manufacturing techniques used to make those teeth. Lukavich, for example, expressly considers ripper tooth designs when concerned with bucket tooth fabrication. Col. 1, l. 40. One skilled in the art would recognize that familiar techniques, such as forging or casting, have applicability beyond fabricating the specific products expressly described in the prior art references. See In re ICON Health and Fitness, Inc., 496 F.3d at 1381. Similarly, when confronted with the problem of wear, we can see no reason why one skilled in the art would not consider references such as Wodrich because they deal with reducing wear in items other than bucket teeth. Contra App. Br. 18–19. References dealing with hardening materials other than bucket teeth to reduce wear logically would have commended themselves to an inventor’s attention in considering the problem of bucket tooth wear. Induction hardening to reduce wear is a common technique with wide applicability. The need to tailor the technique to a specific application does not mean one skilled in the art would regard that technique as inapplicable. See In re ICON Health and Fitness, Inc., 496 F.3d at 1381–82. DECISION The Examiner’s rejection of claims 1–3, 6, 7, 10, 13, 15–19, 22–23, and 26 as being unpatentable over Lukavich, Revankar, Brown, and Materkowski is affirmed. We designate our affirmance of claim 13 as a “new ground of rejection” pursuant to 37 C.F.R. § 41.50(b). To the extent that the Examiner intended to include claim 8 in this ground of rejection, that rejection is summarily reversed as failing to comply with 35 U.S.C. § 132. Appeal 2012-004345 Application 11/522,395 13 The Examiner’s rejection of claims 4, 5, 20, and 21 under 35 U.S.C. § 103(a) as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Fellner is reversed. The Examiner’s rejection of claim 14 as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Fellner is affirmed but is designated as a “new ground of rejection” pursuant to 37 C.F.R. § 41.50(b). The Examiner’s rejection of claim 8 as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Stoody is affirmed. The Examiner’s rejection of claims 10 and 11 as being unpatentable over Lukavich, Revankar, Brown, Materkowski, and Taguchi is affirmed. The Examiner’s rejection of claim 9, 12, 24, and 25 as being unpatentable over Lukavich, Revankar, Brown, Materkowski, Stoody, and Wodrich is affirmed. FINALITY OF DECISION Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2012-004345 Application 11/522,395 14 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation