Ex Parte Höfermann

Patent Trial and Appeal Board

Mar 30, 2018

13615921 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/615,921 09/14/2012
44012 7590 04/03/2018
WRB-IPLLP
801 N. Pitt Sreet, Suite 123
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Volker Hofermann
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.
000004-097US2 4645
EXAMINER
RAMOS, NICOLE N
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
HARRY@WRB-IP.COM
angie@wrb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER HOFERMANN
Appeal2016-000367
Application 13/615,921
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Volker Hofennann (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 30-40, 42--48, and 50-53. Claim
1-29, 41, and 49 have been canceled. 1 An Oral Hearing in accordance with
37 C.F.R. § 41.47 was held on October 19, 2017. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 See Amendments to the Claims (dated Mar. 25, 2014).
Appeal 2016-000367
Application 13/615,921
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "cutting tools and inserts having
fluid flow channels." Spec. 1:3--4,2 Fig. IA. Claims 30, 32, 35, 37, 39, 40,
and 48 are independent.
Claims 30, 39, and 40 are illustrative of the claimed subject matter
and recite:
30. A cutting insert for use with a tool holder, wherein the
cutting insert is fastenable to the tool holder in a first orientation,
and wherein the cutting insert comprises:
at least one cutting edge, wherein the at least one cutting
edge comprises a first cutting edge portion that is positioned to
cut a workpiece when the cutting insert is in the first orientation;
at least one fastener bore adapted to accept a fastener for
removably fastening the cutting insert to the tool holder; and
at least one coolant flow recess in the fastener bore adapted
to direct a coolant through the coolant flow recess and toward the
at least one cutting edge portion when the cutting insert is
fastened to a tool holder by a fastener,
wherein the at least one coolant flow recess comprises a
first coolant flow recess adapted to direct the coolant toward the
first cutting edge portion, and
wherein the coolant flow recess is configured so that it is
adapted to be arranged in combination with the toolholder so that
only the first coolant flow recess receives coolant when the
cutting insert is in the first orientation.
39. A cutting tool, comprising:
a tool holder comprising a coolant source and a coolant
port in fluid communication with the coolant source;
a fastener;
a cutting insert comprising:
a plurality of cutting edges, wherein the plurality of cutting
edges comprises an active cutting edge; and
2 Specification (hereinafter "Spec.") (filed Sept. 14, 2012).
2
Appeal 2016-000367
Application 13/615,921
a fastener bore adapted to receive the fastener to secure the
cutting insert to the tool holder, wherein the cutting insert is
fastenable to the tool holder in a position;
a plurality of channels defined between the fastener and
the cutting insert, wherein the plurality of channels comprises an
active channel, and wherein only the active channel of the
plurality of channels is in fluid communication with the coolant
port and adapted to direct a coolant from the coolant port toward
the active cutting edge when the cutting insert is secured to the
tool holder in the position.
40. A fastener adapted to secure a cutting insert to a tool
holder, the fastener comprising a head portion, comprising:
a tapered sealing surface; and
a recess defined into the head portion from the tapered
sealing surface and adapted to direct a coolant fluid toward a
cutting edge of a cutting insert secured to a tool holder by the
fastener.
REJECTIONS
I. Claims 35 and 36 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of written description.
II. Claims 40, 42--48, and 50-53 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Nishikawa (JP 2006055916 A,
published Mar. 2, 2006) (hereinafter "JP '916").
III. Claims 40 and 44--46 stand rejected under 35 U.S.C. § 102(b) as
anticipated by JP '916.
IV. Claims 30-35 and 37-39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Prichard (US 2008/0175678 Al, published
3
Appeal 2016-000367
Application 13/615,921
July 24, 2008) and Falger (EP 000599393 Al, published June 1,
1994) (hereinafter "EP '393"). 3
V. Claim 36 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Prichard, EP '393, and Jonsson (US 2008/0193231 Al,
published Aug. 14, 2008).
ANALYSIS
Rejection I - Written Description
Claim 35
To satisfy the written description requirement, an applicant must
describe the invention in such a way as to convey to one skilled in the art
that the applicant possessed the invention when the application was filed.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane). The Specification must provide sufficient written description to
support the full scope of the claims. See Reiffin v. Microsoft Corp., 214 F .3d
1342, 1345 (Fed. Cir. 2000) (The purpose of the written description
requirement "is to ensure the scope of the right to exclude, as set forth in the
3 Other than the Abstract, we do not find an English language translation of
this document in the electronic record of this application. The Manual of
Patent Examining Procedure (MPEP) instructs examiners that "[i]f a
document being relied upon by the examiner in support of a rejection is in a
language other than English, a translation must be obtained so that the record
is clear as to the precise facts the examiner is rely upon in support of the
rejection." MPEP § 1207.02 (discussing the contents required in an
Examiner's Answer). Because we have no English language translation of
this reference, except for the Abstract, our review is constrained to the English
translation of the Abstract and the subject matter that we can discern depicted
in the figures. We do not attempt to review the German text of the document
in this appeal.
4
Appeal 2016-000367
Application 13/615,921
claims, does not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification.").
Claim 35 recites, "a plurality of through cavities positioned adjacent
to along the fastener bore; wherein each one of the plurality of through
cavities extends from a top face of the cutting insert to a bottom face of the
cutting insert." Appeal Br. 21, Claims App. 4 The Examiner determines that
"[t]here is no support in the specification or drawings as originally filed for
these limitations." See Final Act. 2. 5 In particular, the Examiner determines
that "the limitations of the plurality of cavities extending from a top face to
a bottom face of the cutting insert" lack support. See id. at 2, 9--10.
In response, Appellant contends that "[i]t is known to provide plural
channels for introduction of fluid." Appeal Br. 7 (citing Spec. 1:7-9); see
also id. at 3 (citing Spec. 1:7-9, 2:19--20). Appellant further contends that
[ w ]hile the application does not illustrate a plurality of through
cavities, it discloses that it is known to provide a plurality of
channels in Para. [0002]. The word "channel" is not used
elsewhere in the specification in a manner that would necessarily
exclude structures such as the hole 35 that would otherwise be
understood by persons skilled in the art to constitute a channel.
Appeal Br. 8; see also Reply Br. 2 ("[P]ersons skilled in the art would have
understood from the disclosure of knowledge of the use of a plurality of
through cavities in the art and the lack of any disclosure excluding such
structures in the invention that the invention could include a plurality of
through cavities.").
4 Appeal Brief (hereinafter "Appeal Br.") (filed May 5, 2015).
5 Final Office Action (hereinafter "Final Act.") (dated Aug. 1, 2014).
5
Appeal 2016-000367
Application 13/615,921
As an initial matter, the Examiner correctly points out that paragraph
2 of US Patent Publication 2013/00170246 "corresponds to lines 5-14 of
[page 1 of] the specification as originally filed." Final Act. 10.
The Specification describes that:
Some cutting inserts include channels formed in the inserts that
are in flow communication with and facilitate introduction of
fluid from channels provided in the toolholder body. The
provision of these fluid flow channels in the cutting inserts tends
to substantially complicate manufacture of the inserts, and the
channels can weaken the insert. It is desirable to provide a
cutting tool and cutting insert that facilitate introduction of fluid
to the cutting edges of the insert that minimizes manufacturing
complexity. It is also desirable to provide a cutting tool and
cutting insert that facilitate introduction of fluid to the cutting
edge without substantially interfering with the strength of the
insert.
Spec. 1 :7-14 (emphasis added). Additionally, we note that the Specification
does not include the term "cavity" or "cavities" but describes "[a] hole 35
[that] extends through the insert 23 from the bottom surface 2 7 to the
clamping surface 29." Spec. 2:19-20 (emphasis added); see also Appeal Br.
3.
In this case, the Specification does not describe an embodiment of the
invention that includes a "plurality of through cavities/channels" extending
from a top face to a bottom face of the cutting insert. Instead, the
Specification only describes an embodiment having a single through
cavity/hole 35 extending from top face 25 to bottom face 27 of cutting insert
23. See Spec. 2: 19-20, Figs. 2B, 2C. Further, the Specification states that it
is "known" to provide a plurality of through channels in the cutting insert,
6 Hofermann (US 2013/0017024 Al, published Jan. 17, 2013).
6
Appeal 2016-000367
Application 13/615,921
but such a configuration is disadvantageous because "[the plurality of
through channels] tend[] to substantially complicate manufacture of the
inserts, and the channels can weaken the insert." Id. at 1:7-11; see also
Appeal Br. 8; Reply Br. 2; 7 Ans. 10-11.8
This case is similar to Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir.
1998). Tronzo concerned artificial hip sockets with cup implants to be
inserted into a hip bone. Id. at 1156. All of the described cup-implant
embodiments were conical in shape, and the specification only mentioned
differently shaped cups to criticize them. Id. at 1159. The Court held that
the specification at issue "disclose[ d] only conical shaped cups and nothing
broader," and thus did not support claims that were not limited to conical-
shaped cups. Id. (emphasis in original).
Likewise, because the present Specification describes embodiments of
the invention as having a single through hole in the cutting insert, and
criticizes prior-art cutting inserts that include a plurality of through
cavities/channels in the cutting insert, the Specification does not adequately
support any claim that encompasses "a cutting insert with a plurality of
through cavities/channels." Accordingly, we sustain the Examiner's
rejection of independent claim 35 for lack of written description.
Claim 36
The Examiner determines that "at least two side extrusions on each of
the top face and bottom face of the cutting insert positioned adjacent to the
7 Reply Brief (hereinafter "Reply Br.") (filed Oct. 7, 2015).
8 Examiner's Answer (hereinafter "Ans.") (dated Sept. 1, 2015).
7
Appeal 2016-000367
Application I3/6I5,92I
plurality of through cavities" of claim 36 lacks "support in the specification
or drawings as originally filed." Final Act. 2; see also id. at IO-I I.
Appellant contends that:
Channels 37 are provided on the top surface 25 (and the bottom
surface 27 in a double-sided insert [Spec.] 6, lines 7-8) to direct
the coolant to the cutting edges 33. See, e.g., FIG. IA. The
channels are defined by two sides that can be referred to as
"protrusions". (See, e.g., FIGS. IC, 2A, 2C-2D)[.] Also,
chipbreakers 97 extend upwardly from the top surface 25 on
opposite sides of the channels 37. [Spec.] 5, lines 20-21.
Appeal Br. 8.
As an initial matter, we note that Appellant references "through
hole/cavity 35" for the "plurality of through cavities" for claim 35 and
"channels 3 7" for the "plurality of through cavities" for claim 3 6, which
depends from claim 35. See id. at 7-8. Appellant's Specification
differentiates between a "hole 35" and a "channel 37." See e.g., Spec. 2: I9-
20 ("A hole 35 extends through the insert 23 from the bottom surface 27 to
the clamping surface 29. A channel 37 extends from the clamping surface
29 to point proximate and inward of the cutting edge 33.") (emphasis
added).
We acknowledge that "additional channels [37] can be provided," that
"[t]he channels are defined by two sides that can be referred to as
'protrusions,"' and that "chip breakers 97 extend upwardly from the top
surface 25 on opposite sides of the channels 37." See Spec. 5:I3---6:6, Figs.
2A, 2C-2D; Appeal Br. 8. However, as discussed above, the Specification
differentiates between a "hole 35" and a "channel 37" and describes
embodiments of the invention having "a through cavity/channel" in the
cutting insert but does not adequately support embodiments having "a
8
Appeal 2016-000367
Application 13/615,921
plurality of through cavities/channels" in the cutting insert. Accordingly, we
sustain the Examiner's rejection of dependent claim 36 for lack of written
description.
Rejections II & III - Anticipation by JP '916
Claims 40 and 42-47
Appellant does not offer arguments in favor of dependent claims 42-
47 separate from those presented for independent claim 40. Appeal Br. 9;
see also Reply Br. 3. We select claim 40 as the representative claim, and
claims 42--47 stand or fall with claim 40. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 40 is directed to a fastener having "a tapered sealing surface."
Appeal Br. 23, Claims App. The Examiner finds that JP '916 discloses a
fastener 20D having a head portion with a tapered sealing surface 23D. See
Final Act. 3. The Examiner states that "the term 'tapered' is being
interpreted as per definition of taper: 'gradual diminution of thickness,
diameter, or width in an elongated object."' Id. (citing
merriam-webster.com).
Appellant contends that "[a]s seen in FIGS. 1 la-1 lc, the surface 23D
of JP916 is not tapered. As particularly seen in FIGS. I la and I le, surface
23D is a flat bottom surface of a straight-sided recess in an otherwise flat
pressing surface 2 ID ... The surfaces 23D and 23D do not meet the
definition of 'tapered' provided in the Official Action as being a 'gradual
diminution of thickness, diameter, or width in an elongated object."' Appeal
Br. 9; see also Reply Br. 3.
JP '916 discloses that "space area (23D) is arranged up so that it may
lead to the central mounting hole (lOa)" and "space area (23D) [is part] of
9
Appeal 2016-000367
Application 13/615,921
the cutting-fluid.flare portion (22D)." JP '916 i-fi-132, 33, respectively
(emphasis added). An ordinary and customary meaning of the term "flare"
is "a spreading outward; also : a place or part that spreads."9 A portion that
"spreads outward" is the opposite of a portion that "gradually diminishes."
Given that space area (23D) is part of "flare" portion (22D) and is "arranged
up" so that it may lead to the central mounting hole (lOa), we disagree with
the Examiner that space area 23D of JP '916 constitutes "a tapered sealing
surface," as called for in claim 40.
The Examiner takes an alternate position in the Answer. Specifically,
the Examiner finds that:
[T]he term "tapered surface" is broad enough to encompass any
taper or diminishing in thickness that might be present in the
head portion such as the tapers indicated by the direction arrows
in [the Examiner's] annotated "zoomed" versions of Figure 11 a
and 11 b of JP '916 . . . . As such the term "tapered sealing
surface" as claimed, does not preclude [the E]xaminer's
interpretation of what constitutes a tapered sealing surface.
Ans. 12; see also id. (The Examiner's annotated version of Figures I la and
11 b of JP '916). Under the broadest reasonable interpretation consistent
with the Specification, the Examiner's finding are sound and supported by a
preponderance of the evidence. 10 Appellant does not apprise us of error in
these findings of the Examiner. See Reply Br., generally.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 40 as anticipated by JP
9 See https://www.merriam-webster.com/dictionary/flare (last visited Mar. 21,
2018).
10 Although Appellant states that Figure IA of the subject invention illustrates
"fastener 31 compris[ing] a head portion 47 comprising a tapered ... sealing
surface 49" (see Appeal Br. 5), a head portion including "a tapered sealing
10
Appeal 2016-000367
Application 13/615,921
'916. Accordingly, we sustain the Examiner's rejection of claim 40 as
anticipated by JP '916. We further sustain the Examiner's rejection of
claims 42--47, which fall with claim 40.
Claims 48 and 50-53
Claim 48 is directed to a cutting tool including a fastener with a head
portion having "a tapered second mating surface structured to securely abut a
portion of the first mating surface of the fastening bore." Appeal Br. 24--25,
Claims App. The Examiner finds that "in Figure I lb [of JP '916] the outer
peripheral surface of projection 26D is tapered (or dimi[ni]shed in thickness)
in relation to the outer peripheral surface of the fastener or clamp 20D which
is elongated." Ans. 13; see also Final Act. 4. The Examiner also states that:
The term "tapered surface" is broad enough to encompass
any taper or diminishing in thickness that might be present in the
head portion such as indicated by the direction arrows in [the
Examiner's] annotated "zoomed" versions ofFigure I la and I lb
of JP '916 ... , as such the term "tapered second mating surface"
as claimed, does not preclude [the E]xaminer's interpretation of
what constitutes a tapered mating surface.
Ans. 13-14; see also id. (The Examiner's annotated version of Figures I la
and llbofJP '916).
When a reference does not disclose that the drawings are to scale and
is silent as to dimensions, the drawing features are of little value in
establishing measurements. See MPEP § 2125; Hockerson-Halberstadt, Inc.
v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) ("[I]t is well
established that patent drawings do not define the precise proportions of the
surface" is not discussed in Appellant's Specification. See Spec., generally.
11
Appeal 2016-000367
Application 13/615,921
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.").
Here, JP '916 is silent regarding the dimensions (e.g., thickness) of
the outer peripheral surface of projection 26D and the outer peripheral
surface of fastener/clamp 20D and such dimensions are not sufficiently clear
from the drawings. Consequently, the Examiner's finding that Figure 11 b of
JP '916 discloses that "the outer peripheral surface of projection 26D is
tapered (or dimi[ ni]shed in thickness) in relation to the outer peripheral
surface of the fastener or clamp 20D" is based on speculation and not
supported by a preponderance of the evidence. Although projection 26D is
tapered (see JP '916, Fig. 11 b ), the mating surface of projection 26D (i.e.,
comer area between 26D and 21D) is "not tapered." See JP '916, Figs. I Ob,
I la, 12b; see also Reply Br. 4--5.
Accordingly, we do not sustain the Examiner's rejection of claims 48
and 50-53 as anticipated by JP '916.
Claims 40 and 44-46
The Examiner finds that JP '916 discloses a fastener including a head
portion having "a tapered sealing surface 22a." Final Act. 5 (citing JP '916,
Figs. 7a, 7b). JP '916 describes "22A" as a cutting-fluid "flare" portion.
See JP '916 i-f 24, Figs. 7a, 7b. As discussed above, a portion that "spreads
outward" (i.e., a flared portion) is the opposite of a portion that "gradually
diminishes" (i.e., a tapered portion). As such, we disagree with the
12
Appeal 2016-000367
Application 13/615,921
Examiner that cutting-fluid "flare" portion 22A of JP '916 constitutes "a
tapered sealing surface," as called for in claim 40.
Accordingly, we do not sustain the Examiner's rejection of claims 40
and 44--46 as anticipated by the embodiment of Figures 7a, 7b of JP '916.
Rejection IV- Obviousness over Prichard and EP '393
Claims 3 0 and 31
Appellant does not offer arguments in favor of dependent claim 31
separate from those presented for independent claim 30. Appeal Br. 11-12;
see also Reply Br. 5-7. We select claim 30 as the representative claim, and
claim 31 stands or falls with claim 30. 37 C.F.R. § 41.37(c)(l)(iv).
Independent claim 3 0 is directed to a cutting insert including "at least
one coolant flow recess in [a] fastener bore" "wherein the coolant flow
recess is configured so that it is adapted to be arranged in combination with
the toolholder so that only [a] first coolant flow recess receives coolant when
the cutting insert is in the first orientation." Appeal Br. 19, Claims App.
The Examiner finds that Prichard discloses a "cutting insert 10 [that] has at
least one fastener bore 11" and "a plurality of channels (grooves in the top
surface of the insert 10)." See Final Act. 6-7; see also id. at 8 (The
Examiner's annotated version of Prichard's figure 4). The Examiner finds
that Prichard fails to specifically disclose that the coolant flow recess is in
the fastener bore. See id. at 8. The Examiner finds that EP '393 discloses:
A plurality of unconnected coolant flow recesses/unconnected
through cavities 6 (that extend from the top surface of the cutting
insert to a bottom surface of the cutting insert) in the fastener
bore are adapted to direct coolant toward the head portion of the
fastener when the cutting insert is fastened to the tool holder by
the fastener. As shown in Figure 1, the tool holder has at least
13
Appeal 2016-000367
Application 13/615,921
one coolant bore 9 adapted to direct the coolant from the tool
holder to the coolant flow recess/unconnected through cavities 6.
Final Act. 8-9. The Examiner concludes that it would have been obvious
to provide Prichard's cutting insert with recesses in the fastener
bore extending from the top surface to the bottom surface of the
cutting insert as taught by EP '393 in order to improve coolant
flow from the tool holder towards the cutting tool and use less
coolant and therefore generate less waste while efficiently
machining a work piece.
Id. at 9.
Appellant contends that:
[P]ersons skilled in the art would not have considered the insert
of [Prichard] to be capable of being configured so that it is
adapted to be arranged in combination with a toolholder so that
only a first coolant flow recess receives coolant when the cutting
insert is in the first orientation. The insert of [Prichard] is
intended to function so that fluid comes out of all of the recesses
when the frustoconical piece 18 seats against the top of the insert
and there is no disclosure of how the insert could be reconfigured
to permit only one of the coolant flow recesses to receive coolant.
It is respectfully submitted that it would not have been obvious
to do so except based on impermissible hindsight in view of the
present invention.
Appeal Br. 12.
As an initial matter, the Examiner correctly notes that "there is
nothing in Prichard's disclosure that indicates that Prichard's insert is
intended to function so that fluid comes out of all of the recesses when the
frustoconical piece 18 seats against the top of the insert as indicated by the
Appellant." Ans. 16. In addition, the Examiner clarifies in the Answer that
"Prichard's reference is not being modified such that the insert could be
14
Appeal 2016-000367
Application 13/615,921
reconfigured to permit only one of the coolant flow recesses to receive
coolant." Ans. 16. In particular, the Examiner takes the position that
Prichard was relied upon since it explicitly discloses an insert
capable of being configured so that it is adapted to be arranged,
in combination with a toolholder, to permit only one of the
coolant flow recesses to receive coolant. Prichard explicitly
discloses in lines 17-20 on paragraph [0022] and Figure 5 that
when the top piece 18 is seated in the insert depression 15 the
rake face cooling channel 21 seals (i.e. giving broadest
reasonable interpretation as: a tight and perfect closure (as
against the passage of fluid)) against the insert depression 15 to
create f! coolant path 27 to cutting edge 16. Since as previously
mentioned, the top piece 18 only has a single recessed area or
channel 21, Prichard' s insert is capable of being configured so
that it is adapted to be arranged, in combination with a
toolholder, to permit coolant flow via a single coolant channel.
Id. at 16-17.
Appellant counters that Prichard "does not explicitly disclose that
[the] insert is configured or configurable so that only the one coolant flow
recess in the fastener bore is adapted to direct a coolant through the coolant
flow recess and toward the at least one cutting edge portion." Reply Br. 6.
However, the Examiner relies on the combined teachings of Prichard
and EP '393 for the "at least one coolant flow recess in the fastener bore."
See Final Act. 6-9. In fact, the Examiner clarifies in the Answer that
"Prichard's insert was modified with EP '393 to include coolant flow
recesses in the fastener bore to improve coolant flow from the toolholder
towards the cutting tool and use less coolant." Ans. 17. Appellant does not
apprise us of error in the Examiner's reliance on the combined teachings of
Prichard and EP '393. See Appeal Br. 11-12; see also Reply Br. 5-7. In
particular, Appellant does not apprise us how the Examiner's proposed
15
Appeal 2016-000367
Application 13/615,921
modification of the "plurality of channels (grooves in the top surface of the
insert 10)" of Prichard in view of the teachings of EP '393 is in error. See
Final Act. 6-9; see also id. at 8 (The Examiner's annotated version of
Prichard's figure 4).
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 30 as unpatentable over
Prichard and EP '393. Accordingly, we sustain the Examiner's rejection of
claim 30 as unpatentable over Prichard and EP '393. We further sustain the
Examiner's rejection of claim 31, which falls with claim 30.
Claims 32-34
Claim 32 is directed to a cutting tool including a tool holder and a
cutting insert having "at least one fastener bore," "a plurality of unconnected
coolant flow recesses in the fastener bore" and "at least one coolant bore
adapted to direct the coolant from the tool holder to only one coolant flow
recess of the plurality of unconnected coolant flow recesses at a time."
Appeal Br. 19-20, Claims App. The Examiner finds that Figure 1 of
Prichard discloses "a plurality of unconnected coolant flow recesses
(grooves in the insert surface, paragraph [0022])." Final Act. 6; see also id.
at 7 ("As shown in Figure 4 [of Prichard], a plurality of channels (grooves in
the top surface of the insert 10."); id. at 8 (The Examiner's annotated version
of Prichard's figure 4). The Examiner further finds that "[a]s shown in
Figure 1, the tool holder 1 [of Prichard] has at least one coolant bore 2
capable of directing the coolant from the tool holder to the coolant flow
recess." Final Act. 6; see also id. at 7 ("As shown in Figure 1 [of Prichard],
the tool holder has at least one coolant bore 2 capable of directing coolant
16
Appeal 2016-000367
Application 13/615,921
from the tool holder 1 to the plurality of cavities (grooves in top surface of
insert 10) of the cutting insert when the cutting insert is fastened to the tool
holder."). The Examiner relies on EP '393 "to modify Prichard since it
teaches that it is known in the art of machining to provide cutting inserts
with coolant flow recesses/unconnected coolant flow recesses in the
fastener bore." Ans. 18; see also id. at 17, 19; Final Act. 8-9. The
Examiner concludes that:
Prichard's insert as modified by the teachings of EP '393 will
now include coolant flow recesses/unconnected coolant flow
recesses in the fastener bore by which the at least one coolant
bore (of Prichard) will now be adapted to direct coolant from the
toolholder (1 of Prichard) to only one coolant flow recess of the
plurality of unconnected coolant flow recesses (as modified by
EP '393) at a time.
Ans. 18, 19; see also Final Act. 6-9.
As an initial matter, the "fastener bore" and the "coolant bore"
constitute two separate elements. See Appeal Br. 19-20, Claims App.
Further, the Examiner distinguishes fastener bore 11 and coolant bore 2 of
Prichard. See Final Act 6 ("The cutting insert 10 has at least one fastener
bore 11" and "[a ]s shown in Figure 1, the tool holder 1 [of Prichard] has at
least one coolant bore 2 capable of directing the coolant from the tool holder
to the coolant flow recess."). Given that the fastener bore and the coolant
bore constitute two separate elements, the Examiner fails to provide
sufficient evidence or technical reasoning to adequately explain how
Prichard's at least one coolant bore 2, in view ofEP '393's teachings, would
"now be adapted to direct coolant from the toolholder (1 of Prichard) to only
one coolant flow recess of the plurality of unconnected coolant flow recesses
17
Appeal 2016-000367
Application 13/615,921
(as modified by EP '393) at a time." See Ans. 17-19; Final Act. 6-9;
Appeal Br. 13-14; Reply Br. 7-8.
Accordingly, we do not sustain the Examiner's rejection of claims 32-
34 as unpatentable over Prichard and EP '393.
Claim 35
Claim 3 5 is directed to a cutting insert "wherein the cutting insert is
adapted to be clamped so that only one through cavity of the plurality of
through cavities is configured to receive the coolant at a time." Appeal Br.
21, Claims App. The Examiner states that Prichard "was relied upon since it
discloses a cutting insert 10 adapted to be clamped so that only one channel
of the plurality of channels is configured to receive coolant at a time." See
Ans. 21. We understand the Examiner's position to be that "fastener bore 11
[of Prichard] is adapted to direct coolant fluid through the cutting insert 10
and towards the at least one cutting edge 16 when the cutting insert 10 is
fastened to a tool holder 1 by a fastener." Id. at 20. However, we fail to see,
and the Examiner fails to adequately explain, how this arrangement is
indicative of cutting insert 10 of Prichard being "adapted to be clamped so
that only one channel is configured to receive the coolant at a time." See id.
at 20-21; see also Final Act. 7; Appeal Br. 15; Reply Br. 9.
Accordingly, we do not sustain the Examiner's rejection of claim 35
as unpatentable over Prichard and EP '393.
Claims 37 and 38
Appellant does not offer arguments in favor of dependent claim 3 8
separate from those presented for independent claim 3 7. Appeal Br. 16-1 7;
18
Appeal 2016-000367
Application 13/615,921
see also Reply Br. 10-11. We select claim 37 as the representative claim,
and claim 38 stands or falls with claim 37. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 3 7 is directed to a cutting tool including a cutting insert, a
fastener, "a plurality of discrete through cavities adapted to direct a coolant
through the cutting insert and toward a head portion of the fastener when the
cutting insert is fastened to the tool holder by the fastener" and a tool holder
including "a coolant bore adapted to direct the coolant from the tool holder
exclusively to a single discrete through cavity of the plurality of discrete
through cavities of the cutting insert when the cutting insert is fastened to the
tool holder." Appeal Br. 21-22, Claims App.
Appellant contends that:
If the embodiment of [Prichard] that would involve channels 21
in the depression 15 of the insert is considered to correspond to a
plurality of discrete through cavities then, when a frustoconical
top part 18 seals against the depression, the result cannot be
directing the coolant from the tool holder exclusively to a single
discrete through cavity of the plurality of discrete through
cavities of the cutting insert -- there will inherently be a channel
at each comer of the insert through which coolant is directed.
Reply Br. 11; see also Appeal Br. 16-17.
Appellant's argument is not persuasive because it does not address the
rejection proposed by the Examiner. In this case, the Examiner finds
Prichard discloses "[a] plurality of unconnected through cavities (grooves in
top surface of insert 10) [that] are capable of directing coolant through the
cutting insert [10] and toward the head portion of the fastener [18] when the
cutting insert [10] is fastened to the tool holder [1] by the fastener [18]." See
Final Act. 7; see also id. at 6 ("The cutting insert 10 has at least one fastener
bore 11 and at least one coolant flow recess (refer to annotated Figure 4
19
Appeal 2016-000367
Application 13/615,921
below)"); id. at 8 (The Examiner's annotated version of Prichard's figure 4).
Appellant does not apprise us of error in these findings of the Examiner.
Additionally, we disagree with Appellant that "there will inherently be
a channel at each comer of the insert [of Prichard] through which coolant is
directed." Reply Br. 11. Prichard discloses that "[a] primary discharge slot
27 is formed at the end of the rake face cooling channel 21 nearest the
cutting edge 16 or cutting comer 17." Prichard i-f 23 (emphasis added), Figs.
4, 5; see also Final Act. 6 (Prichard "discloses that a primary discharge slot
27 is formed at the end of the rake face cooling channel 21 and annotated
Figure 4 of Prichard."); id. at 8 (The Examiner's annotated version of
Prichard's figure 4); Ans. 24--25. In other words, Pritchard discloses a
single channel/slot at 27 through which coolant is directed. See Pritchard
i-f 28 ("[S]tream of coolant ... exits the primary discharge slot 27.").
Based on our understanding, the Examiner's position is that Prichard
discloses a plurality of discrete through cavities (i.e., grooves in top surface
of cutting insert 10) adapted to direct a coolant through the cutting insert 10
and toward a head portion of the fastener 18 when the cutting insert 10 is
fastened to the tool holder 1 by the fastener 18 and a coolant bore 2 adapted
to direct the coolant from the tool holder 1 exclusively to a single discrete
through cavity (i.e., at 27) of the plurality of discrete through cavities of the
cutting insert (i.e., grooves in top surface of cutting insert 10) when the
cutting insert 10 is fastened to the tool holder 1. See Final Act. 5-8; see also
id. at 8 (The Examiner's annotated version of Prichard's figure 4); Ans. 24--
25. Appellant does not apprise us of error in these findings of the Examiner.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 37 as unpatentable over
20
Appeal 2016-000367
Application 13/615,921
Prichard and EP '393. Accordingly, we sustain the Examiner's rejection of
claim 37 as unpatentable over Prichard and EP '393. We further sustain the
Examiner's rejection of claim 38, which falls with claim 37.
Claim 39
Claim 39 is directed to a cutting tool including "a plurality of channels
defined between the fastener and the cutting insert" and "wherein the
plurality of channels comprises an active channel, and wherein only the
active channel of the plurality of channels is in fluid communication with the
coolant port." Appeal Br. 22-23, Claims App.
Appellant contends that Prichard "only discloses one embodiment in
which there might be a plurality of channels between a fastener and a cutting
insert -- the embodiment in which the channels 21 are provided in the insert
depression 15 described at Para. [0022]" and that "[t]he embodiment in
which the channel 21 [of Pritchard] is provided in the insert side 19 of the
top part 18 will only provide a single channel between the fastener and the
cutting insert." Reply Br. 12; see also Appeal Br. 18.
Appellant's argument is not persuasive because it does not address the
rejection proposed by the Examiner. In this case, the Examiner finds that
"[a ]s shown in Figure 4 [of Prichard], a plurality of channels (grooves in the
top surface of the insert 10) defined between the fastener and the cutting
insert can be seen." Final Act. 7; see also id. at 8 (The Examiner's
annotated version of Prichard's figure 4). Appellant does not apprise us of
error in these findings of the Examiner. See Appeal Br. 18; see also Reply
Br. 12.
21
Appeal 2016-000367
Application 13/615,921
The Examiner appears to take an alternate approach in the Answer.
Specifically, the Examiner "points out that depressions 15 in the rake face of
Prichard are the ones being interpreted by the Examiner to be the plurality of
channels as recited and not the channel 21 as indicated by the Appellant."
Ans. 26. According to the Examiner, Prichard discloses "a plurality of
channels (15) defined between the fastener 18 and the cutting insert 10." Id.
Appellant does not apprise us of error in these findings of the Examiner. See
Reply Br. 11-12.
Appellant further contends that neither Pritchard nor EP '393
"discloses a tool wherein only an active channel of a plurality of channels is
in fluid communication with the coolant source and adapted to direct a
coolant from the coolant port toward the active cutting edge when the
cutting insert is secured to the tool holder in the position." Appeal Br. 18.
In response to Appellant's contention, the Examiner
points out that Prichard discloses a single active channel 27 being
defined between the fastener 18 and the cutting insert 10 when
fastener 18 seals depression 15 and channel 21. As explicitly
disclosed in Figure 5 of Prichard, active channel 27 (when
depression 15 and channel 21 are sealed with fastener 18) is in
fluid communication (i.e. fluid in the sense that there is no
blockage between the coolant source and the active channel 27)
with the coolant source in holder 1 and therefore is adapted to
direct coolant from the coolant port 2 toward the active cutting
edge 16 when the cutting insert is secured to the tool holder 1.
As such, the structure of the plurality of channels being in fluid
communication with the coolant source as recited in claim 39,
does not preclude Examiner's interpretation.
Ans. 26-27. Appellant does not apprise us of error in these findings of the
Examiner. See Reply Br. 11-12.
22
Appeal 2016-000367
Application 13/615,921
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 39 as unpatentable over
Prichard and EP '393. Accordingly, we sustain the Examiner's rejection of
claim 39 as unpatentable over Prichard and EP '393.
Rejection V- Obviousness over Prichard, EP '393, and Jonsson
Claim 36
Claim 36 depends from claim 35. See Appeal Br. 21, Claims App.
The Examiner's rejection of claim 36 as unpatentable over Prichard, EP
'3 93, and Jonsson is based on the same unsupported findings discussed
above with respect to claim 35. See Final Act. 9. The Examiner does not
rely on Jonsson to remedy the deficiencies of Prichard. Accordingly, for
reasons similar to those discussed above for claim 35, we do not sustain the
Examiner's rejection of claim 36 as unpatentable over Prichard, EP '393,
and Jonsson.
DECISION
We AFFIRM the Examiner's decision to reject claims 35 and 36 for
lack of written description.
We AFFIRM the Examiner's decision to reject claims 40 and 42--47
as anticipated by JP '916.
We REVERSE the Examiner's decision to reject claims 48 and 50-53
as anticipated by JP '916.
We REVERSE the Examiner's decision to reject claims 40 and 44--46
as anticipated by the embodiment of Figures 7a and 7b of JP '916.
23
Appeal 2016-000367
Application 13/615,921
We AFFIRM the Examiner's decision to reject claims 30, 31, and 37-
39 as unpatentable over Prichard and EP '393.
We REVERSE the Examiner's decision to reject claims 32-35 as
unpatentable over Prichard and EP '393.
We REVERSE the Examiner's decision to reject claim 36 as
unpatentable over Prichard, EP '393, and Jonsson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
24