Ex Parte Duggan

Patent Trial and Appeal Board

Apr 21, 2017

12211381 (P.T.A.B. Apr. 21, 2017)

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.
12/211,381 09/16/2008 Paul Edward Duggan AMK-5498-17 8333
23117 7590 04/25/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL EDWARD DUGGAN1
Appeal 2015-004758
Application 12/211,381
Technology Center 3700
Before: GEORGE R. HOSKINS, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 4, 5, 19, 20, 22, 23, 31, 32, 46, 47, and 49—52.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies C4 Carbides Limited as the real party in interest
(Appeal Br. 3).
2 Claims 2, 3, 6—18, 21, 24—30, 33—45, and 48 are cancelled (App. Br. 17—
19).
Appeal 2015-004758
Application 12/211,381
CLAIMED SUBJECT MATTER
The claims are directed to a blade, such as a band saw blade. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter.
1. A linear blade comprising:
a strip having a length measured in a cutting direction, a
width perpendicular to the length, and a thickness perpendicular
to the width, wherein the length is greater than the width, and the
width is greater than the thickness, the strip having a main body
portion and an edge portion running lengthwise along the main
body portion, wherein the length of the strip forms a length of
the linear blade, the strip having a cross-section in a plane
defined by the width and the thickness that is the same at all
positions along the length of the blade, and
cutting medium secured to the strip along the edge portion,
wherein the edge portion has an edge face and side flanks
extending from the edge face to the main body portion, the face
and flanks being planar surfaces meeting at right angles at edges,
the edges extending along the strip and spaced from the main
body portion, and
wherein the edge portion is thinner than the main body
portion at substantially all positions along the blade, and
wherein the edge portion meets the main body portion at a
step on at least one face of the strip, and
wherein the cutting medium is a grit of suitable material
other than diamond secured to the strip by cascading onto the
edge portion after braze material has been applied to the edge
portion, and prior to heating the strip to secure the cutting
medium by brazing, and
wherein the braze material is in the form of a paste,
containing a braze medium in particle form, suspended in an
adhesive component.
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Appeal 2015-004758
Application 12/211,381
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Catlin
Dion
Igarashi
Matsuda ’7213
Matsuda ’ 165
Addison
US 3,630,699
US 7,373,857 B2
JP 10-202425 (A)
JP 62-193721 (A)
JP 61-197165 (A)
GB 2 217 243 A
Dec. 28, 1971
May 20, 2008
Aug. 4, 1998
Aug. 25, 1987
Sept. 1, 1986
Oct. 25, 1989
REJECTIONS
(I) Claims 1, 4, 5, 19, 22, 23, 31, 32, 46, 49, and 50 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Igarashi, Matsuda ’721, and
Catlin.
(II) Claims 20 and 47 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Igarashi, Matsuda ’721, Catlin, and Dion.
(III) Claim 51 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Igarashi, Matsuda ’721, Catlin, and Addison.
(IV) Claim 52 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Igarashi, Matsuda ’721, Catlin, and Matsuda ’165.
OPINION
Rejection (I)
Appellant argues for the patentability of claims 1, 4, 5, 19, 22, 23, 31,
32, 46, 49, and 50 as a group. Appeal Br. 11—15. We take independent
claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
3 Our citations to the text of Matsuda ’721 refer to the English translation of
this reference made of record on February 5, 2014.
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Appeal 2015-004758
Application 12/211,381
The Examiner finds that Igarashi discloses most of the features recited
in claim 1 except for the recited geometry of the edge portion and the details
regarding brazing material. Final Act. 2—5. Nonetheless, the Examiner finds
that Matsuda ’721 teaches the features relating to the recited edge portion
geometry, and Catlin teaches the claimed requirements relating to brazing
material. Final Act. 4—5. The Examiner reasons that it would have been
obvious to provide a step portion for the cutting medium on the cutting body
of Igarashi to create a thinner section of the cutting part without decreasing
the strength of the saw in order to increase the bond strength of the grit
material to the blade and increase the durability of the blade. Final Act. 5
(citing Matsuda ’721, 4,11. 7—19). As for the requirements relating to
brazing material, the Examiner concludes that it would have been obvious
“to apply the grit of Igarashi as modified by Matsuda on the saw blade via a
brazing technique as taught by Catlin to enhance the cutting action of the
tool and obtain a desired degree of hardness and ductility.” Final Act. 5
(citing Catlin, 1:70-72).
Appellant contends that the Examiner’s proposed modification to
Igarashi would defeat the intended purpose of Igarashi. See, e.g., Appeal Br.
11. In this regard, Appellant asserts that Matsuda ’721 teaches that the
inclusion of holes along the edge is “important to the success of his blade”
and Igarashi teaches “expressly that a continuous buffer layer is central to
the success of his blade.” Appeal Br. 12—13.
In response, the Examiner finds that there is no requirement to
incorporate holes in Igarashi when modifying Igarashi to include the details
of the thin edge taught by Matsuda ’721. Ans. 8—10.
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Application 12/211,381
In reply, Appellant argues that the incorporation of holes is critical to
the functionality of Matsuda ’721, and it is only via the use of improper
hindsight that the Examiner modifies Igarashi without incorporating such
holes. Reply Br. 1—2. In this regard, Appellant states “the holes are central
to the success of Matsuda [’721] and at the heart of its teaching.” Reply Br.
2. Appellant also states “the nature of the teachings in Igarashi and Matsuda
would not predictably lead those of ordinary skill in the art to the claimed
invention.” Reply Br. 2.
We do not agree with Appellant’s assertions regarding the importance
of the holes. Matsuda ’721 teaches the benefits of the thin edge as follows.
Firstly, due to the sectional thickness of the cutting part
forming portion being made thinner than the sectional thickness
of the band-shaped sheet, it enables a thinner section cutting part
to be formed and thus the cutting width to be decreased, without
making the overall sectional thickness of the band-shaped sheet
thinner — i.e., without causing the strength of the band-shaped
sheet to decrease.
Secondly, due to a stepped portion being formed as a result
of the sectional thickness of the cutting part forming portion
being made thinner than the sectional thickness of the band­
shaped sheet, there is an increased bonding surface area for the
fine grains of diamond that are to be bonded to the cutting part
forming portion, and therefore their bonding strength can be
increased.
Thirdly, because the stress acting during use on the fine
grains of diamond in at least the vicinity of the above-mentioned
stepped portion is received by the stepped portion as well,
durability can be improved.
Matsuda ’721, 4,11. 6—19. Thus, Matsuda ’721 describes certain benefits of
the shape of the edge without requiring any holes in the blade. These
benefits support the Examiner’s rationale for modifying Igarashi as
proposed. Accordingly, we do not agree with Appellant that the Examiner’s
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Appeal 2015-004758
Application 12/211,381
proposed modification would also require the addition of the holes of
Matsuda ’721 to the blade of Igarashi. Rather, the above-noted benefits
would be provided even without such holes.
Appellant argues that the Examiner’s proposed combination of
Igarashi, Matsuda ’721, and Catlin would require a person of skill in the art,
“[wjithout using hindsight, identify Catlin as a technique to be used[, and i]n
making this choice, ignore the fact that neither Igarashi nor Matsuda
discusses brazing, and also ignore the unattractiveness of the necessary and
partial combination of Igarashi and Matsuda.” Appeal Br. 14. Appellant
also argues that the process of modifying Igarashi to provide all the elements
recited in claim 1 “is so complex and uncertain, and requires so much
hindsight, that it must be considered in its totality to be an inventive step,
and cannot be considered an obvious step.” Appeal Br. 14.
In response, the Examiner finds,
Appellant admits brazing allows hard material to cut hard
materials quickly and reliably with less wear (Page 14, lines 29-
30 and Page 15, lines 1-2). Therefore, per Appellant’s
admission, one would have been motivated [to] use the brazing
technique as disclosed by Catlin to apply a cutting grit. Again,
this is not hindsight, because there was a pre-existing motivation
to employ brazing, for the purpose of cutting harder materials.
Ans. 10-11 (emphasis added).
In reply, Appellant argues that no such admission was made, and
“[t]he advantages discovered by the Appellant and also referenced in the
present specification are also improperly used as motivation for the
purported modifications of the prior art in the Examiner’s comments on page
11 of the Examiner’s Answer.” Reply Br. 3.
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Application 12/211,381
The portion of Catlin cited by the Examiner for the use of brazing
material as recited in claim 1 states: “The strip is next fed through a
tempering furnace for tempering the base metal to a desired degree of
hardness and ductility.” Catlin, 1:70-72; see Final Act. 5. The text cited by
the Examiner, read in context, does not relate to the benefits of using brazing
material and instead relates to the benefits and properties provided by heat
treatment. See Catlin, 1:57—72.
Although the above-noted portion of Catlin does not disclose the
particular benefits of brazing to which the Examiner refers, i.e., obtaining “a
desired degree of hardness and ductility” (see Final Act. 5), Catlin teaches
that brazing allows alloying or interdiffusion of a blade’s base metal and a
coating layer (see, e.g., Catlin, 1:9-26). It would have been obvious to a
person ordinary skill in the art to implement brazing in the coating of
Igarashi to obtain these benefits. Further, a person of ordinary skill in the art
could have substituted the brazing taught by Catlin for the electrodeposition
process performed on the blade of Igarashi (see Igarashi, machine translation
3 4) with a reasonable expectation of success inasmuch as both
references apply an abrasive coating to a metal blade (see Igarashi, machine
translation 111; Catlin, Abstract). Additionally, this known technique
would have provided predictable results as taught by Catlin. See Catlin,
1:9-26, 4:68—5:5, 6:40-52. Accordingly, we determine that this simple
substitution of one element for another (replacing the electrodeposition
taught by Iragashi with brazing) would have been obvious to a person of
ordinary skill in the art.
We have reviewed all of Appellant’s arguments for the patentability
of claim 1, but we do not agree with them. Accordingly, we affirm the
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Application 12/211,381
Examiner’s rejection of claims 1, 4, 5, 19, 22, 23, 31, 32, 46, 49, and 50. As
our reasoning differs from that relied upon by the Examiner, we designate
our affirmance a NEW GROUND of rejection.
Rejections (II)—(IV)
Appellant relies only on the arguments discussed above to contest
Rejections (II)—(IV). See Appeal Br. 15—16. Accordingly, for the reasons
discussed above, we affirm Rejections (II)—(IV), and we designate our
affirmance a NEW GROUND of rejection.
DECISION
The Examiner’s decision to reject claims 1, 4, 5, 19, 20, 22, 23, 31,
32, 46, 47, and 49—52 is affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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Appeal 2015-004758
Application 12/211,381
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
AFFIRMED
37 C.F.R, $ 41.50(b)
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