Ex Parte Herbon

Board of Patent Appeals and Interferences

Jun 18, 2009

11543239 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY R. HERBON
____________

Appeal 2008-006349
Application 11/543,239
Technology Center 3700
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Decided:1 June 18, 2009
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-006349
Application 11/543,239

2
Jeffrey R. Herbon (Appellant) filed a Renewed Request for Rehearing
(hereinafter “Request”) under 37 C.F.R. § 41.52 of the Decision dated
February 20, 2009 (hereinafter “Decision”). The appeal involves an
application for reissue of US 5,477,754. In the Decision, we affirmed the
rejections of claims 1, 5-7, and 9 under 35 U.S.C. § 102(b) as being
anticipated by Mori (JP H1-183304, published July 21, 1989, as translated);
claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over Mori and
Appellant’s admitted prior art (AAPA, Specification 1:29-42); and claim 8
under 35 U.S.C. § 103(a) as being unpatentable over Mori.
Appellant alleges that in reaching our decision we misapprehended
the disclosure of Mori, particularly with respect to Mori’s expressed concern
with “parallelism.” Request 2-3. Despite this allegation, Appellant’s
Request goes on to proffer an explanation of the term “parallelism” that
corresponds quite closely to our findings (FF14) with respect to that term on
page 7 of the Decision. Specifically, Appellant contends that the term likely
refers to “plane parallelity,” which “is a measure of the parallelity of
surfaces on opposing surfaces of a component, typically a cutting insert.”
Request 3. Consequently, Appellant has not demonstrated that we in any
way misapprehended the disclosure of Mori.
Rather, Appellant appears to take issue with our ultimate finding
(FF15) that Mori’s grinding operation involves “thickness” grinding.
Request 3. Appellant argues that “[w]hether surfaces are plane parallel is a
substantially different issue from whether the surfaces are a desired distance
apart.” Request 3. We do not agree. As explicitly set forth in our findings
(FF14), we found that “a person of ordinary skill in the art would understand
‘parallelism’ to be a measure of the degree of parallelism of the top and
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bottom surfaces of the cutting chip, measured in terms of the difference in
thickness (distance between the top and bottom surfaces) from one end of
the chip to the other.” On this basis, we found that Mori’s grinding
operation is a “thickness” grinding (FF15). In order to achieve a desired
parallelity, the grinding operation must grind the insert to a particular
thickness on one end of the insert to match the thickness on the other end of
the insert. In that sense, the parallelity grinding is a “thickness grinding” as
one of ordinary skill would understand “thickness grinding” (see FF6).
Appellant further argues that in relying on Mori’s disclosure of
grinding for “parallelism” to show that Mori’s grinding is a “thickness”
grinding as called for in the claims, we set forth grounds of rejection that so
differ from the grounds advanced by the Examiner that they must be
considered new grounds. Request 5. Once again, we do not agree with
Appellant. In rejecting the claims, the Examiner found that the grinding step
of Mori is a “thickness grinding” because Mori’s grinding step reduces the
thickness of the coated supporting surface by grinding away at least the
coating. Final Rejection 2, 4; Ans. 4. In affirming the rejections, we
likewise found that Mori’s grinding step is a “thickness grinding.” See
Decision 7 (FF15) and 8. Thus, in affirming the rejections we did not
change the basic thrust of the rejections. The English language translation of
Mori, on which our findings, and those of the Examiner, were based, was
available to Appellant at least as early as October 5, 2006, the date on which
Appellant submitted a copy thereof to the USPTO in an Information
Disclosure Statement. Thus, Appellant had ample opportunity to fully
consider the teachings contained in that translation (a relatively short
document including less than 5 pages of written disclosure) in responding to
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the Examiner’s finding that Mori’s grinding step is a thickness grinding.
That Appellant elected to focus solely on the terms “surface roughness” and
“flatness” in having an expert declaration prepared to rebut the Examiner’s
findings, and declined to address the very next word “parallelism” in the
written disclosure on page 2, column 1 of the Mori translation, does not
detract from the fact that Appellant had an opportunity to do so. We thus
conclude that Appellant had a fair opportunity to respond to the thrust of
these rejections. In re Kronig, 539 F.2d 1300, 1302-1303 (CCPA 1976).
Accordingly, we deny Appellant’s request that we denominate our
affirmance to be new grounds of rejection.
Finally, Appellant argues that in the Decision we failed to identify
facts relied upon in finding (FF11) that in describing the grinding operation
alluded to in findings FF7 through FF10, “Appellant’s Specification does
not distinguish between the portion of the body beneath the coating and the
coated body and, further, does not specify whether any portion of the body
beneath the coating is removed.” Request 6. This is not accurate. The
Decision sets forth our findings (FF8) as to Appellant’s patent’s description
(Spec. 3:33-66) of the insert body forming, coating, and grinding operations.
In describing the coating operation, Appellant’s Specification refers to an
uncoated insert body 110' having first and second main faces 112' and 114',
with second main face 114' comprising a supporting surface 122'UG, and a
coated body 108I presenting first and second main faces 112 and 114, with
second main face 114 forming a supporting surface 122. See FF8. In other
words, in describing the coating operation, the Specification distinguishes
between the uncoated insert body and the coated insert body. However, in
describing the grinding operation, the Specification simply discusses
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subjecting the coated body (intermediate element) 108I to a grinding step to
grind smooth the second main face of the body. Specification 3:58-60. This
description does not explicitly specify whether “second main face of the
body” refers to the second main face 114' of the uncoated insert body 110' or
to the second main face 114 of the coated insert body 108I.
Appellant points to the disclosure at column 2, lines 23-27 of the
Specification as describing removal of both the coating and some portion of
the insert body beneath the coating during the grinding step. Request 8.
This is a mischaracterization of that disclosure. Pre-grinding the uncoated
insert body prior to the coating step is a different matter than grinding, and
removing, portions of the insert body beneath the coating in the grinding
step that follows the coating step. The portion of the Specification alluded
to by Appellant merely describes a possible embodiment in which the
supporting surface of the uncoated insert body is pre-ground prior to the
coating step, and the supporting surface2 would again be ground during the
coating-removal grinding step (col. 2, ll. 23-27). Like the portions of the
Specification referred to above (see FF8 in the Decision), this disclosure
does not specify that any portion of the insert body beneath the coating is
removed in the grinding step that removes the coating.
Appellant’s argument, on page 8 of the Request, that the
Specification’s description (col. 4, ll. 4-13) of the heat conduction benefits

2 Consistent with the nomenclature used in Appellant’s Specification (see
FF8), the “supporting surface” is the exposed surface of the insert body at
any point in the process. For example, the uncoated insert body has a
supporting surface 122'UG, the coated insert body has a supporting surface
122 prior to grinding to remove the coating, and the final cutting insert 108
presents a supporting surface 122'G subsequent to the grinding (FF8).
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of a smoothly ground supporting surface must mean that the more
conductive underlying tungsten carbide material of the body were ground
smooth is not well founded. We find nothing in that description to imply
anything more than that the coating material is fully removed, leaving a
smooth surface devoid of coating, like that of Mori (see FF12), thereby
exposing the thermally conductive tungsten carbide material.
Finally, Appellant’s urging that Appellant’s Specification does not
limit the disclosure of Appellant’s invention to grinding only the coating
implies that Appellant has misapprehended or misconstrued our findings. In
the Decision, we did not find that Appellant’s Specification explicitly
limited the grinding to only the coating. Rather, we found that Appellant’s
Specification “does not specify whether any portion of the body beneath the
coating is removed” (FF11). Therefore, Appellant’s Specification does not
dictate a narrower construction of claim 1 than set forth on page 9 of the
Decision.

CONCLUSION
Appellant’s Request fails to persuade us that we erred either in
affirming the rejections or in not denominating that affirmance as new
grounds of rejection.

DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.
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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) (2007).
DENIED

mls

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