12506782 (P.T.A.B. Aug. 29, 2016)

Ex Parte Brahmandam et al

Patent Trial and Appeal BoardAug 29, 2016

12506782 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/506,782 07/21/2009 27877 7590 08/31/2016 KENNAMETAL INC Intellectual Property Department P.O. BOX231 1600 TECHNOLOGY WAY LATROBE, PA 15650 FIRST NAMED INVENTOR Sudhir Brahmandam 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 ATTORNEY DOCKET NO. CONFIRMATION NO. K-2823USUS1 4707 EXAMINER YUSUF, MOHAMMAD I ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 08/31/2016 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): larry.meenan@kennametal.com k-corp. patents@kennametal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUDHIR BRAHMANDAM, DAVID R. SIDDLE, PETER R. LEICHT, and IRENE SPITSBERG Appeal2014--008181 Application 12/506,782 1 Technology Center 3700 Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Sudhir Brahmandam et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 from the Examiner's Final Rejection under 35 U.S.C. Â§ 103(a) of claims 1---6, 8-11, 14--20, 23, 24, and 27-31 as unpatentable over Pfaffmann (US 7,024,897 B2, iss. Apr. 11, 2006) and Honma (US 7,442,433 B2, iss. Oct. 28, 2008); and of claims 21 and 22 as unpatentable over Pfaffmann, Honma, and Sottke (US 7,326,461 B2, iss. Feb. 5, 2008). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 According to Appellants, the real party in interest is Kennametal, Inc. Appeal Br. 3. 2 Claims 7, 12, 13, 25, and 26 have been canceled. Id. at 10-13 (Claims App.). Appellants do not present arguments for the rejection under Appeal 2014-008181 Application 12/506,782 We AFFIRM. CLAIMED SUBJECT MATTER Claims 1, 9, 15, and 24 are independent. Claim 15 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 15. A method of coating a forming tool for use in thermo- mechanical loading applications, comprising: applying a coating on at least a portion of a forming tool, wherein the coating comprises a bottom coating layer and a top coating layer, wherein the top coating layer has a thickness from about 1 Âµm to about 12 Âµm and the coating has a thickness ratio of the bottom coating layer to the top coating layer from about 0.5 to about 5, wherein the forming tool is a warm forming tool or a hot forming tool. ANALYSIS Obviousness of claims 1-6, 8-11, 14-20, 23, 24, and 27-31 over Pfaffrnann and lfonma In initially contesting the Examiner's rejection of claims 1-6, 8-11, 14--20, 23, 24, and 27-31 over Pfaffmann and Honma, Appellants designate claims 15-20 as a separate group. See Appeal Br. 5-9. However, Appellants' arguments in the Reply Brief do not continue that distinction as claims 1---6, 8-11, 14--20, 23, 24, and 27-31 are all addressed under a single heading. See Reply Br. 2--4. For that reason, we select claim 15 as the representative claim and the remaining claims stand or fall with claim 15. See 37 C.F.R. Â§ 41.37(c)(l)(iv); In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002); see also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). 35 U.S.C. Â§ 103(a) of claims 21 and 22 as unpatentable over Pfaffmann, Honma, and Sottke. See generally Appeal Br. and Reply Br. 2 Appeal 2014-008181 Application 12/506,782 In rejecting claim 15, the Examiner finds that Pfaffinann discloses, inter alia, "a hot forming tool comprising a tool component ... with a cutting tool type coating." Final Act. 2 (citing Pfaffmann, col. 10, 11. 33- 35). While acknowledging that Pfaffmann "is silent with regard to the details of the cutting tool type coating," the Examiner finds that Honma discloses a method of coating [abstract] a cutting tool, comprising applying a coating on at least a portion of a tool ["hard coating layers" abstract], wherein the coating comprises a bottom coating layer [layer a; abstract] and a top coating layer [layer b; abstract], wherein the top coating layer has a thickness from about 1 micrometer to about 12 micrometer ... and the coating has a thickness ratio of the bottom coating layer to the top coating layer from about 0.5 to about 5. Id. at 2-3. Based on the foregoing, the Examiner reasons that "[i]t would have been obvious ... to provide the hot forming tool of Pfaffmann with the cutting tool coating of Honma in order to increase the durability of the die shell of Pfaffmann's forming tool as Pfaffmann himself suggests applying [a] cutting tool type coating." Id. at 3. Appellants first contend that "the method of claim 15 requires [that the] thickness of the bottom coating layer ... and thickness of the top coating layer ... be selected such that the coating demonstrates a thickness ratio ... of 0.5 to 5," because "Applicants 'have unexpectedly learned that controlling the thickness of the top coating layer and the thickness ratio of the coating significantly improves at least the tool life of forming tools used in warm and hot forming applications."' Appeal Br. 5---6 (citing Spec., para. 18) (emphasis added). 3 Appeal 2014-008181 Application 12/506,782 We are instructed by the Court of Appeals for the Federal Circuit that "[a] greater than expected result is an evidentiary factor pertinent to the legal conclusion of ... obviousness [of the claimed subject matter]." In re Corkill, 771F.2d1496, 1501 (Fed. Cir. 1985) (citing United States v. Adams, 383 U.S. 39, 51-52 (1966)). Furthermore, in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, it has consistently been held that "the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Here we find the record before us is devoid of any factual support that the coating recited by claim 15 significantly improves the tool life of any forming tools, when compared to the prior art cited by the Examiner. Arguments relying on factually unsupported assumptions to rebut a prima facie case of obviousness can hardly be considered factual evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments and conclusions unsupported by factual evidence carry no evidentiary weight). Appellants contend that "Example 2 of the present [S]pecification evidences the criticality of a T 8 :T T ratio of 0.5 to 5 in conjunction with thickness of the top coating layer of 1-12 Âµm," by stating there to be "a 270- 430% increase [in punches] over comparative carbide punches having an alumina-zirconia coating outside the claimed T 8 :T T range," and that "[s]uch a dramatic increase is unexpected. " Appeal Br. 6 (emphasis added). Yet Example 2 contains no such comparative data, but merely includes an 4 Appeal 2014-008181 Application 12/506,782 observation that "similar components with a commercially available coating of alumina-zirconia have [a shorter] average tool life." See Spec., para. 27. Thus, Appellants have not demonstrated unexpected results as compared with the closest prior art, as required. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.")." Appellants also argue that "[t ]he criticality of the claimed T 8 :T T range of 0.5-5 in conjunction with thickness of the top coating layer is further illustrated in the Affidavit of Dr. Sudhir Brahmandam." Appeal Br. 6-7. However, the Brahmandam Affidavit is not part of the record before us, having first been submitted on November 22, 2013, after the Notice of Appeal was filed on August 22, 2013. 3 See 37 C.F.R. Â§ 41.33(d). Based on the foregoing, Appellants have not provided sufficient factual support to demonstrate that the claimed thickness ratio of the coatings significantly improves the tool life of forming tools used in warm and hot forming applications, when compared to the prior art. 3 37 C.F.R. Â§ 41.33(d)(l) states that an affidavit filed afterthe date of filing an appeal may be admitted provided the Examiner (a) determines that the affidavit overcomes all rejections on appeal and (b) there is a showing of good cause as to why the affidavit was not presented earlier. There is no indication in this Affidavit that would support a finding by the Examiner that either has been achieved. 3 7 C.F .R. Â§ 41.3 3 ( d)(2) states that all other affidavits filed after the date of filing an appeal will not be admitted except where indicated. Here, the Affidavit was submitted after the filing of the notice of appeal and as such, we see no error in the Examiner not addressing this late-filed affidavit. 5 Appeal 2014-008181 Application 12/506,782 Appellants continue by contending that "[Pfaffinann] fails to provide any specific structural detail of the ceramic coating other than it can be 'a hard cutting tool type' ceramic." Appeal Br. 7 (citing Pfaffmann, col. 10, 11. 33-35). However, we find Appellants' contention to be unavailing. Claim 15 merely recites a "coating," without specifying that it be any particular ceramic coating or any other specific material. 4 See Appeal Br. 11-12 (Claims App.). As we are instructed by our reviewing court, "limitations are not to be read into the claims from the [S]pecification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Appellants also assert that "Honma fails to provide any teaching, technical solution or rationale why one of skill in the art would employ a coating having the claimed T B:T T ratio on a warm or hot forming tool." Appeal Br. 7. In repeating this assertion in the Reply Brief, Appellants also contend that "[i]n the absence of technical evidence, one of skill in the art does not merely decide to apply a ceramic coating of a high speed cutting tool to a warm/hot forming tool on the off chance it may enhance the lifetime of the forming tool." Reply Br. 3. However, as pointed out previously, claim 15 merely recites a "coating," without specifying that it be any particular ceramic coating or any other specific material. Again, "limitations are not to be read into the claims from the [S]pecification." See Van Geuns, 988 F.2d at 1184. 4 We note that the scope of claim 15, as drafted, would include applying a coating where the top and bottom coating layers are formed of the same material, because the claim is not limited to any specific material for either coating layer. 6 Appeal 2014-008181 Application 12/506,782 Appellants also argue that "[t]he broad thickness ranges recited by Honma for the bottom layer and top layer provide countless values for the ratio ofTB:TT over an exceedingly wide range of0.2 to 20." Appeal Br. 7. Appellants then conclude that "the Examiner has failed to establish a prima facie case of obviousness." Id. at 9. However, because "[t]he claim recites 'a thickness ratio of the bottom coating layer to the top coating layer from about 0.5 to about 5,"' the "Examiner is giving the limitation 'about' the broadest reasonable interpretation," finding that "Honma's thickness ratio of the bottom coating layer to the top coating layer is in the range of 0.2 to 20 which is about 0.5 to about 5 as claimed," so that "the ratio range of Honma fully encompasses the claimed range ratio." Ans. 5-6. Furthermore, the Examiner determines that "[i]t does not appear at this small range (micrometer) of thickness ratio, that the claimed ratio offers any performance difference from Honma's ratio." Id. at 6. Thus, upon reviewing the Examiner's stated rationale, we are not persuaded the Examiner failed to produce sufficient evidence and findings (supported by citation to the references) to support a prima facie case of obviousness based on broadest reasonable interpretation of the recited range. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). 5 Appellants conclude by arguing that without knowledge of [Appellants'] patent [S]pecification, there is nothing in Honma that enables one of skill in the art to discern whether a T B:T T ratio of 20 offers any performance 5 "[A ]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] Â§ 132." Jung, 637 F.3d at 1363. 7 Appeal 2014-008181 Application 12/506,782 difference from a T 8 :T T ratio of 1. Consistent with this lack of disclosure, the Examiner has failed to advance any reason why or how one of skill in the art would derive a T B:T T ratio of 0.5 to 5 for a coated warm or hot forming tool from a reference that fails to address warm/hot forming tools. Appeal Br. 8. In the Reply Brief, Appellants further argue that "[k ]now ledge of the [Appellants'] disclosure must be put aside when reaching a determination of obviousness ... impermissible hindsight must be avoided and the legal conclusion of obviousness must be reached on the basis of facts gleaned from the prior art. [MPEP Â§ 2142]." Reply Br. 2. However, we do not agree that the Examiner's rejection is based on impermissible hindsight as it does not include knowledge gleaned only from the Appellants' disclosure, but rather takes into account the teachings of Pfaffmann and Honma, i.e., knowledge which was within the level of ordinary skill at the time the claimed invention was made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As the Examiner explains, "one having ordinary skill in the art at the time the invention [was made] would be inspired by Pfaffmann's disclosure to use a cutting tool type coating such as Honma's coating in Pfaffmann's hot forming tool to increase Pfaffmann's tool life span." Ans. 7. Accordingly, and based on the record presented, we sustain the Examiner's rejection of claims 1---6, 8-11, 14--20, 23, 24, and 27-31 as obvious over Pfaffmann and Honma. Obviousness of claims 21 and 22 over Pfaffmann, Honma, and Sottke. 8 Appeal 2014-008181 Application 12/506,782 Appellants do not separately argue the rejection of claims 21 and 22. See generally Appeal Br. and Reply Br. Therefore, for the reasons above, we sustain the rejection of these claims. DECISION The Examiner's rejections of claims 1---6, 8-11, 14--24, and 27-31 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a) (l)(iv). AFFIRMED 9