Kennametal Inc.

Patent Trials and Appeals Board

Mar 9, 2021

2020003306 (P.T.A.B. Mar. 9, 2021)

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.
15/905,047 02/26/2018 Jurgen Schwagerl K-02935-US-CNT 2328
27877 7590 03/09/2021
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX 231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
EXAMINER
SU, CHWEN-WEI
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
03/09/2021 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):
k-corp.patents@kennametal.com
larry.meenan@kennametal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JURGEN SCHWAGERL

Appeal 2020-003306
Application 15/905,047
Technology Center 3700
____________

Before JUSTIN BUSCH, AMEE A. SHAH, and ROBERT J. SILVERMAN,
Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 14, 15, and 17–27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Kennametal Inc. Appeal Br. 3.
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ILLUSTRATIVE CLAIM
14. A drilling tool comprising:
at least two chip flutes; and
a chisel edge, with a thinned region being disposed on
either side of the chisel edge; and
a pair of opposing major flanks disposed on opposite
sides of the chisel edge,
wherein the thinned region:
is of helical shape on either side of the chisel edge;
comprises a portion of each of the at least two chip
flutes and forms an end of each of the at least two chip
flutes in the region of the chisel edge, and
merges continuously, without any discontinuities,
without any kinks, and without any ridges, into a
remainder of each of the chip flutes in such a way that
the thinned region forms the end of the respective chip
flute in the region of the chisel edge;
wherein each of the chip flutes is fully concave toward a
central axis of the drilling tool, when viewed in transverse
cross-section at one or more axial points along the chip flute;
wherein a core diameter is defined between the at least
two chip flutes;
the core diameter reducing from a normal core diameter,
at a predetermined axial point along the drilling tool, to a
reduced core diameter of the thinned region;
wherein the normal core diameter does not increase
between the predetermined axial point along the drilling tool
and a region of run-out of the chip flutes.
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REJECTIONS
I. Claims 14, 15, 17–19, 21, 22, and 24–27 are rejected under
35 U.S.C. § 103(a) as unpatentable over Imanaga et al. (JP 62-213910 A,
pub. Sept. 19, 1987, hereinafter “Imanaga”) and Krenzer
(DE 10 2007 040 178 A1, pub. Feb. 26, 2009).2
II. Claims 20 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imanaga, Krenzer, and Jindai et al. (WO 2009/054400 A1,
pub. Apr. 30, 2009, hereinafter “Jindai”).3
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellant argues that the combination of Imanaga with Krenzer
fails to teach or suggest independent claim 14’s “thinned region,” being “of
helical shape on either side of the chisel edge,” that “merges continuously,
without any discontinuities, without any kinks, and without any ridges, into
a remainder of each of the chip flutes in such a way that the thinned region
forms the end of the respective chip flute in the region of the chisel edge.”
Appeal Br. 9–10.

2 The Examiner states: “an equivalent later US patent document,
US 2011/0103909 [A1], will be used for describing [Krenzer’s] teaching.”
Final Act. 2. Citations to Krenzer, herein, refer to this identified US patent
document.
3 The Examiner states: “an equivalent later US patent document,
US 8,545,141 [B2], will be used for describing [Jindai’s] teaching.” Final
Act. 7.
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In regard to the limitation “merges continuously, without any
discontinuities, without any kinks, and without any ridges,” the Examiner
relies upon Krenzer’s disclosure of an “arcuate transition” between
flattening 23' and face 11' of the embodiment shown in Figures 3, 3a, and
3b. Final Act. 3 (citing Krenzer ¶ 43, Figs. 3, 3a, 3b). The Appellant
(Appeal Br. 9) and the Examiner (Answer 8) both indicate that the Final
Office Action mistakenly identifies Krenzer’s bending line 36' (see Krenzer
¶ 43) as an “arcuate transition.” As the Appellant points out, Krenzer’s
bending line 36' “represents precisely the type of ‘discontinuity’, ‘kink’ or
‘ridge’ over which original Claim 14 deigns to distinguish.” Appeal Br. 9.
Despite acknowledging the Examiner’s position — i.e., that the
Examiner is not relying upon Krenzer’s bending line 36' for teaching the
claim limitation at issue — the Appellant contends that “the reader [of the
Krenzer reference] is left to speculate considerably as to how an ‘arcuate
transition’ could or should be embodied.” Appeal Br. 10. Further, the
Appellant contends that the presence of Krenzer’s “flattenings” would
negate claim 14’s “thinned region” having a “helical shape,” as recited. Id.
at 10–12. According to the Appellant:
[O]ne of ordinary skill in the art would be at a loss in deigning
to combine the references to include the “arcuate transition”
while maintaining a helical shape on either side of a chisel edge
(as claimed by Claim 14), thereby requiring a “logical leap”
that transcends any reasonable standard of “obviousness”. . . .
. . . No “articulated reasoning” or reasonable guidance
can be gleaned, from the teachings of the references or
otherwise, as to how this would be accomplished. For instance,
a resulting structure may well be entailed that is considerably
more complex than that of including an “arcuate transition” in a
“flattening”, e.g., such a transition would likely need to be
embodied over an internally curved surface. Structural
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complications would thus be involved in effecting such a
feature, resulting in a more complex grinding process than
might otherwise be necessitated. Thus, Applicants submit that
any inherent value of including such an “arcuate transition”
along the interior of a helical surface would not at all be evident
to one of ordinary skill in the art.
Appeal Br. 11–12.
In response, the Examiner states that Krenzer articulates particular
reasons for implementing an arcuate transition (i.e., claim 14’s
“continuous[ ]” “merg[ing]” “without any discontinuities,” “kinks,” and
“ridges”). Answer 8–10. Indeed, Krenzer addresses the problem of the
accumulation of chips of material cut by a drill, wherein “chips removed by
the cutting edges may be compacted and may not flow off freely” — a
circumstance that reduces drilling performance and may damage the drill.
Krenzer ¶ 3. The Examiner points out that, according to Krenzer:
In a preferred exemplary embodiment of the drill [disclosed in
Krenzer], there is provision for the inner face of the center
cutting edge to merge into the outer face of the major cutting
edge via a bend or via an arc. The chip run-off can thereby be
influenced in a wide range.
Answer 8–9 (quoting Krenzer ¶ 7) (emphasis added). The Examiner further
explains that Imanaga is relied upon for teaching claim 14’s recited “thinned
region . . . of helical shape on either side of the chisel edge.” Id. at 9 (citing
Imanaga Figs. 1–3). In the Examiner’s analysis, modifying Imanaga, in
view of Krenzer’s teaching of the arcuate transition, “does not change”
Imanaga’s “helical shape” of its “thinned region.” Id. at 9–10. Accordingly,
“Imanaga in view of Krenzer teaches that it is obvious to modify the
intersection of the thinned region and the remainder of the chip flute of
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Imanaga to have an arcuate transition to provide free flowing of the chip.”
Id. at 9.
Further, the Appellant does not persuade us that the Examiner’s
combination of Imanaga and Krenzer would involve “[s]tructural
complications” that might preclude obviousness. Appeal Br. 12. The
Appellant speculates that the structure resulting from the combination “may
well be” “considerably more complex” than the Examiner contemplates and
“would likely need to be embodied over an internally curved surface,”
“resulting in a more complex grinding process than might otherwise be
necessitated.” Id. (emphasis added). In addition to the degree of uncertainty
manifest in the Appellant’s assertions, these assertions lack reliable support.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”)
In view of the foregoing, we are not persuaded of error in the rejection
of independent claim 14.
The Appellant argues that “[o]ther claims, properly dependent from
Claim 14, recite further features which are believed to distinguish even more
fully over the applied art.” Appeal Br. 12. However, the Appeal Brief
separately argues only claims 15 and 27. See id. at 12–13.
Dependent claim 15 recites:
15. The drilling tool of Claim 14 wherein:
the at least two chip flutes comprise helical chip flutes;
and
on either side of the chisel edge, the helical thinned
region has a twist corresponding to a helical shape of a
corresponding one of the helical chip flutes.
With respect to claim 15, the Appellant argues the following:
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The “flattenings” of Krenzer are certainly very far afield from
such structure and, consistent with what is discussed [in the
Appeal Brief regarding claim 14], Applicants submit that any
viable combination with Imanaga would fail to make up for
such shortcomings. Accordingly, it is submitted that Claim 15
fully distinguishes over the applied art, especially in the context
of the features of Claim 14.
Appeal Br. 12.
The Appellant’s argument is inapposite. As the Examiner points out,
the Examiner relies upon Imanaga — not Krenzer — for the limitations
added in claim 15. See Final Act. 4; Answer 10. Therefore, the Appellant
does not persuade us of error in the rejection of claim 15.
Dependent claim 27 recites: “The drilling tool of Claim 14, wherein
each of the chip flutes has a structure resulting from formation in a single
grinding operation, in which a grinding tool makes contact with a drill blank
only once.”
The Appellant contends that the cited prior art references do not teach
or suggest the formation of “[t]he drilling tool of Claim 14” “in a single
grinding operation,” in the manner recited in claim 27. Appeal Br. 12–13.
However, the Examiner points out that the limitation at issue, in
regard to claim 27, is a product-by-process limitation, whereby establishing
a prima facie case that the claimed product is the same or similar to a prior
art product (albeit created by a different process), shifts the burden to the
Appellant to come forward with evidence demonstrating otherwise. Final
Act. 6–7 (citing In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983)); Answer
10–11 (citing Marosi).
We agree with the Examiner’s determination that the limitation in
question is a product-by-process limitation, and we further agree that the
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Appellant has not made the requisite showing needed to overcome the
rejection. See Appeal Br. 12–13; Reply Br. 5. The Federal Circuit has
emphasized that, “[i]f the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006)
(quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Once the Office
has made out a prima facie case that a claimed product and a prior art
product reasonably appear to be the same, the burden shifts to the applicant
to prove otherwise. Thorpe, 777 F.2d at 697. Here, the Appellant has not
done so.
The Reply Brief (pages 4–5) raises a new argument, regarding
claim 26, which had not been addressed in the Appeal Brief. We do not
address this argument. “Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner’s answer . . . will not be considered by the Board for purposes
of the present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2).
Therefore, we are not persuaded of error in the rejection of claim 26.
The Appellant presents no separate argument for any of dependent
claims 17–25. We regard these claims as grouped with independent
claim 14, per 37 C.F.R. § 41.37(c)(1)(iv).
In view of the foregoing, we sustain the rejection of independent
claim 14 and dependent claims 15 and 17–27 under 35 U.S.C. § 103(a).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 15, 17–
19, 21, 22,
24–27
103(a) Imanaga, Krenzer 14, 15, 17–
19, 21, 22,
24–27

20, 23 103(a) Imanaga, Krenzer,
Jindai
20, 23
Overall
Outcome
14, 15,
17–27

TIME PERIOD FOR RESPONSE
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