Karl Bernt-Ola. Sandstrom

Patent Trials and Appeals Board

Jul 25, 2019

14901284 - (D) (P.T.A.B. Jul. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/901,284 12/28/2015 Karl Bernt-Ola Sandstrom PF1256-USw-0 (34900-35) 6499
76656 7590 07/25/2019
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KARL BERNT-OLA SANDSTROM
________________

Appeal 2019-002971
Application 14/901,284
Technology Center 1700
________________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3–5, and 24 under 35 U.S.C. § 103 as unpatentable
based on at least the combined prior art of Hillert et al. (US 4,766,040,
issued Aug. 23, 1988 (hereinafter “Hillert”)), Dennis (US 5,524,719, issued
June 11, 1996), and Yoshida et al. (US 6,342,301 B1, issued Jan. 29, 2002
(hereinafter “Yoshida”).). The Examiner also rejected claims 6, 8, and 10–
14 and 16–19 based solely on Hillert and Yoshida. The rejection of claims
20 and 22, which each depends from claim 18, includes additional prior art

1 Appellant is the applicant, Element Six Limited, which, according to the
Appeal Brief, assigned its rights to Element Six, AB, the identified real party
in interest (see Appeal Br. 4).
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(e.g., Ans. 17). A discussion of this rejection is unnecessary in the
disposition of this appeal
We have jurisdiction under 35 U.S.C. § 6(b).

Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key limitation in dispute):
1. A construction comprising:
a sintered polycrystalline super-hard layer having a mean
thickness of 0.5 to 3 mm, and comprising mutually opposite
reinforced boundaries, each of which is bonded to a respective
reinforcement structure having a thickness of at least 0.5 mm;
wherein the super-hard layer comprises polycrystalline
diamond (PCD) material or polycrystalline cubic boron nitride
(PCBN) material;
the construction configured such that an equivalent circle
diameter of each reinforced boundary is at least ten times a
mean thickness of the super-hard layer between them; and
the reinforcement structures being substantially free of
material with a melting point of less than 2,000 degrees Celsius,
at least adjacent the reinforced boundaries; and
at least one of the reinforcement structures comprises any
of molybdenum (Mo), niobium (Nb), tantalum (Ta), tungsten
(W) and rhenium (Re) in any of elemental metallic form, alloy
form, intermetallic material or a chemical compound.

Claim 6 is directed to “A method of making the construction as
claimed in claim 1”. Claim 6 therefore includes all of the limitations of such
a construction, including the disputed thickness limitation. The Examiner did
not apply Dennis (upon which the Examiner relies for this thickness
limitation) to claim 6 (e.g., Ans. 10). In any event, we interpret claim 6 as
requiring this limitation of each reinforcement layer having a minimum
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thickness of at least 0.5 mm2, as does Appellant (Appeal Br. 7 (Appellant
states it is assumed the Examiner meant to include Dennis in this rejection)).

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need to address only independent claim 1, which recites a
construction having each “reinforcement structure having a minimum
thickness of at least 0.5 mm.”
The Examiner relies upon Hillert’s layers 21, 22, and 23 as
reinforcement layers/structures, but admits that Hillert does not explicitly
teach or suggest the recited minimum thickness; and relies upon the use of

2 Dependent claim 14 recites a thickness range of “0.05 to 5 millimeters”
that is inconsistent with the minimum thickness set forth for each
reinforcement of 0.5 mm in claim 1. We shall assume that 0.5 was intended
not 0.05. Appellant needs to correct this.
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the reinforcement member of Dennis to exemplify the use of a reinforcement
member having a thickness of from 0.1 to 2 mm thickness (Ans. 5).
Appellant argues that Hillert explicitly states that layers 21, 22, 23 are to be
no thicker than 300 µm and are for the purpose of preventing metal diffusion
between the super-hard diamond layers 11, 12, and 13, and that Hillert
provides yet another layer 14 as the support/reinforcement material (Appeal
Br. 9, 10)3. Appellant further argues that there is no reason one would have
modified the express teachings of Hillert so as to arrive at a minimum
thickness which is “80% thicker than the absolute maximum thickness
disclosed in Hillert” for layers 21, 22, and 23 (Appeal Br. 9)4. Appellant
also contends that there is no reason to look to Dennis which provides a
reinforcement member located within the hard material of the tool to modify
the thickness of the metal diffusion prevention layers of Hillert that
sandwich the super-hard layers of the tool (Appeal Br. 4; Reply Br. 2).
Appellant also contends that the Examiner has not adequately explained why
the metal diffusion prevention layers of Hillert would be capable of
functioning as reinforcement structures as required by claim 1 (Reply Br.
generally).
A preponderance of the evidence supports Appellant’s position that
the Examiner has not pointed to any evidence to adequately establish that the
applied prior art teaches or suggests the required thickness of each
reinforcement structure/layer that effectively sandwich the “super-hard

3 It is noted Hillert also teaches that there may be “no support disc [at] all”
(col. 5, ll. 62–65).
4 It is noted that 500 µm is 67% thicker than 300 µm, not 80% thicker.
However, it is also noted that 500 µm is 333% thicker than Hillert’s
preferred maximum of 150 µm (Hillert, col. 5, ll. 1–3).
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layer” as recited in claim 1. The Examiner’s position that the thickness
recited in claim 1 would have been achieved through routine optimization
because Hillert teaches its layers 21, 22, 23 can be as thick as 300 µm is not
well founded (e.g., Ans. 23). As pointed out by Appellant, the Examiner has
not provided adequate evidence that one of ordinary skill in the art would
have considered a thickness as great as 500 µm (0.5 mm) to be suitable for
Hillert’s purpose, which teaches a maximum thickness of 300 µm and
prefers a maximum thickness of 3–150 µm. See In re Sebek, 465 F.2d 904,
907 (CCPA 1972) (where the prior art indicates that an optimum should be
sought within a range, the determination of optimum values outside that
range may not be obvious).
In light of these circumstances, the Examiner has not shown that each
and every limitation of the claim is either described or suggested by the prior
art or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art.”).
It also appears that the proposed modification of Hillert based on
Dennis would be based on improper hindsight reconstruction. The fact
finder must be aware “of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421
(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
“temptation to read into the prior art the teachings of the invention in
issue”)).
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The Examiner does not rely upon any of the other references to cure
these deficiencies. Accordingly, we reverse the § 103 rejections on appeal.

ORDER
It is ordered that the Examiner’s decision is reversed.
REVERSED