Ex Parte Craig

Patent Trial and Appeal Board

Mar 28, 2018

13870256 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/870,256 04/25/2013
27877 7590 03/30/2018
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
FIRST NAMED INVENTOR
Karen Anne Craig
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-04318-US-NP[2] 5644
EXAMINER
ADDISU, SARA
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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 KAREN ANNE CRAIG 1
Appeal2017-007920
Application 13/870,256
Technology Center 3700
Before: KEVIN F. TURNER, DANIELS. SONG, and
ANTHONY KNIGHT, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner's Final
rejection2 of claims 1-8 and 26 in the present application. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We REVERSE.
1 Referred to as "Appellant" hereinafter. Appellant identifies Kennametal,
Inc. as the real party in interest (Appeal Brief (hereinafter "App. Br.") 3).
2 Hereinafter "Final Act."
Appeal2017-007920
Application 13/870,256
The claimed invention is directed to a cutting insert for metalworking
operations (Abstract). The sole independent claim reads as follows (App.
Br. 13, Claims App.):
1. A cutting insert, comprising:
a body having a head disposed at an end of the body and a
stem disposed at an opposite end of the body, wherein the stem
extends along a longitudinal axis;
a cutting edge at the head of the body; and
a locking recess on the stem of the body,
wherein a bottom face of the head has a hemispherical
shape, and
wherein top faces of the head and stem are substantially
planar.
REJECTIONS
1. The Examiner rejects claims 1-3 under 3 5 U.S. C. § 102 (b) as
anticipated by Kakai et al. (US 2003/0210963 Al; pub. Nov. 13,
2003) (hereinafter "Kakai").
2. The Examiner rejects claims 1, 2, 4, 5, 8, and 26 under
35 U.S.C. § 102(b) as anticipated by Tsujimura et al. (US 4,898,499;
iss. Feb. 6, 1990) (hereinafter "Tsujimura").
3. The Examiner rejects claims 6 and 7 as unpatentable under
35 U.S.C. § 103 as obvious over the Tsujimura.
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Application 13/870,256
Rejection 1
ANALYSIS
The Examiner rejects claims 1-3 as anticipated by Kakai (Final Act
2). The Examiner finds that Kakai discloses "a cutting insert (5),
comprising: a body having a head (21) disposed at an end of the body and a
stem (3) disposes at an opposite end of the body (please note: the body is
defined by the Examiner as 3 and 5 as a unit since they assemble together as
shown [in] figure 5)." (Id.). The Examiner also refers to an annotated and
enlarged version of Figure 1 of Kakai, and finds that a bottom face along [BJ
of the head
has a hemispherical shape and wherein the top faces of the head
and steam [sic, stem] (A & A': see below) are substantially
planar (please note: the claim does not say 'the entire' top faces
of the head and stem, therefore A & A' being substantially
planar surfaces reads on the claim[)].
(Id. at 3).
The Appellant argues that Kakai fails to anticipate claim 1 because:
Kakai explicitly teaches that the cutting insert is
designated as element 5, and the holder for the cutting
insert is designated as element 3. Appellant asserts that
the cutting insert 5 and the holder 3 are two separate and
distinct components, and therefore [cannot] be considered
"as a unit" as in the claimed invention. Rather, in Kakai,
the cutting insert 5 has a conical pin 20 and a head 21.
The holder 3 has a conical recess 14 that is adapted to
receive the pin 20 to securely hold the cutting insert 5 in
the holder 3. Thus, the cutting part 5 and the holder 3 of
Kakai perform two separate and distinct functions and
should not be considered "as a unit" as asserted by the
Examiner.
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Application 13/870,256
(App. Br. 9).
The Examiner disagrees and explains that upon assembly, the
components "become one integral unitary part," and that recitation of "a
body" does not require the body to be a single, one piece body (Ans. 6).
We generally agree with the Appellant. While we do not disagree
with the Examiner that the recited body need not be a single, one piece body,
the Examiner ignores the fact that the claim is directed to a "cutting insert."
As such, the recited "body" must be part of the "cutting insert." As the
Appellant points out (App. Br. 9), Kakai discloses "cutting part 5" and "a
holder 3." (Kakai i-f 20). Thus, while cutting part 5 of Kakai is a cutting
insert, holder 3 is not.
As noted, the Examiner takes the position that because holder 3 and
cutting part 5 are assembled together as shown in Figure 5 of Kakai, the
assembly constitutes the body of the cutting insert (Final Act. 2). However,
this implicitly interprets "cutting insert" in an unreasonably broad manner.
The PTO is obligated to give claims their broadest reasonable interpretation,
"any such construction [must] be 'consistent with the specification, ... and .
. . claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art."' In re Suitco Swface, Inc.,
603 F.3d 1255, 1259---60 (Fed. Cir. 2010) (quoting In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990). "[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant's written description." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The Appellant's Specification is replete with disclosure establishing
that a "cutting insert" is different from a "holder," starting from the Title of
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Application 13/870,256
the application which is "A Cutting Insert, a Cutting Insert Holder, a System
Including the Cutting Insert and Cutting Insert Holder, and a Method of
Manufacturing Thereof." (See Spec. i-fi-f l---6, 32, 39, 42-52, 54, 55, 58-58,
60, 61; and Figs. 9-22). We also discern no basis to conclude that a person
of ordinary skill in the metalworking art would have understood the term
"cutting insert" to encompass a "holder," which, like "insert," appears to be
a term of art.
Accordingly, the Examiner's position that holder 3 of Kakai can be
part of the recited "body" of the claimed "cutting insert" is based on an
unreasonably broad interpretation that ignores the interpretive guidance
afforded by the Specification as understood by one of ordinary skill in the art
of metalworking. Therefore, we reverse Rejection 1.
We further observe that in contrast to the Examiner's assertion (Final
Act. 3), the cutting insert 5 of Kakai is not hemispherical in shape (Kakai,
Figs. 4, 5). We also disagree with the Examiner's assertion (Final Act. 3)
that the small key recess 24 and planar surface 23 of Kakai satisfy the
recitation that the top faces of the head and stem are substantially planar.
Rejection 2
The Examiner rejects claims 1, 2, 4, 5, 8, and 26 as anticipated by
Tsujimura (Final Act. 3). The Examiner refers to an annotated Figure 5 of
Tsujimura, and finds that Tsujimura discloses a cutting insert having a body
with the recited head and stem (Final Act. 4). The Examiner's position is
that when insert 16 is assembled with cylindrical end mill body 10, "the
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Application 13/870,256
separate parts become one integral unitary part," and that the recited "body"
is not limited to "a single one piece body." (Ans. 7).
The Appellant argues that like in Rejection 1, "the Examiner has
incorrectly interpreted the entire body 10 of the ball end mill of Tsujimura as
the cutting insert of the claimed invention." (App. Br. 11).
The Appellant is correct that the error addressed relative to Rejection
1 is present in Rejection 2 as well in that Tsujimura specifically discloses
"insert 16," which is received and releasably secured to (i.e., held by) end
mill body 10 (Tsujimura, col. 4, 11. 58---60; Figs. 4, 5; see also id. at col. 1, 11.
10-15; Figs. 1-3). As in Rejection 1, the Examiner's position that end mill
body 10 of Tsujimura is part of the recited "body" of the claimed "cutting
insert" is based on an unreasonably broad interpretation that ignores the
interpretive guidance afforded by the Specification as understood by one of
ordinary skill in the art of metalworking. Therefore, we also reverse
Rejection 2.
Rejection 3
The Examiner rejects claims 6 and 7 as being obvious over the
Tsujimura (Final Act. 5). The Examiner finds that "Tsujimura discloses the
claimed invention except for the locking surface forming 60-90 degree
angle with the longitudinal axis," but concludes that it would have been
obvious "to making the locking surface of any inclination desired depending
on the type of bolt/set screw the recess is designed to receive." (Final Act.
5). Thus, this obviousness rejection relies on the same findings based on the
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unreasonably broad interpretation of claim 1 as discussed above with respect
to Rejection 2. Accordingly, Rejection 3 is also reversed.
CONCLUSION
Rejections of claims 1-8 and 26 are reversed.
REVERSED
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