Ex Parte Simmons et al

Patent Trials and Appeals Board

Sep 22, 2014

11522395 - (D) (P.T.A.B. Sep. 22, 2014)

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
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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:

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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.
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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
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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.
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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
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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.
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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
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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
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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.
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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
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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
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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.
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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:
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(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)

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