Kennametal Inc.Download PDFPatent Trials and Appeals BoardMar 9, 20212020003306 (P.T.A.B. Mar. 9, 2021) Copy Citation 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. Appeal 2020-003306 Application 15/905,047 2 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. Appeal 2020-003306 Application 15/905,047 3 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. Appeal 2020-003306 Application 15/905,047 4 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 Appeal 2020-003306 Application 15/905,047 5 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 Appeal 2020-003306 Application 15/905,047 6 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: Appeal 2020-003306 Application 15/905,047 7 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 Appeal 2020-003306 Application 15/905,047 8 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). Appeal 2020-003306 Application 15/905,047 9 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 Copy with citationCopy as parenthetical citation