Ex Parte Kohl

Patent Trial and Appeal Board

Feb 26, 2014

11818753 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RUSSELL THOMAS KOHL
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Appeal 2012-003470
Application 11/818,753
Technology Center 3700
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Before MICHAEL W. KIM, BART A. GERSTENBLITH, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Russell Thomas Khol (“Appellant”) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 2, 4-8, and 10. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 5 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A carbide cutting tooth for a circular saw blade
comprising:
a pair of spaced-apart primary side faces;
a cutting face having a cutting edge with a top bevel
angle within the range of at least 25 degrees to about 50
degrees, and having two side edges located on each side of the
cutting face, respectively; and
at least two secondary side faces, each secondary side
face extending between the cutting face and a respective one of
the pair of primary side faces, the secondary side faces each
having a relief angle relative to the immediately adjoining
primary side face, and wherein the two secondary side faces
have an extending length corresponding generally to the
extending length of the two side edges of the cutting face,
respectively.
Br. 16, Claims App’x.
References
The Examiner relies upon the following prior art references:
Segal US 3,309,756 Mar. 21, 1967
Ohlsson US 3,651,841 Mar. 28, 1972
Terada US 2005/0028664 A1 Feb. 10, 2005

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The Examiner also relies upon a publication, which appears to be a
catalogue disclosing Freud’s LU85R industrial saw blade, for which the
Examiner indicates a publication date of October 2006 (“Freud”).
Rejections
Appellant seeks review of the following rejections:
I. Claims 1, 2, and 4-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Freud, Segal, and Ohlsson; and
II. Claims 1, 2, 4-8, and 10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Freud, Segal, Ohlsson, and Terada.
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I
The Examiner concluded that the combination of Freud, Segal, and
Ohlsson would have rendered the subject matter of claims 1, 2, and 4-8
obvious to one of ordinary skill in the art at the time of invention. Ans. 4-5.
The Examiner found that Freud discloses the elements of the claims except a
top bevel angle between 25-50 degrees. Id. at 4. The Examiner found that
Segal teaches that the bevel angle is a known result-effective variable
because Segal teaches the use of higher angles for “fibrous or soft material”
and lower angles for “homogenous or harder materials.” Id. at 4-5. The
Examiner further found that Ohlsson teaches that an angle between 27 and
60 degrees produces good results for certain materials. Id. at 5. The
Examiner concluded that it would have been obvious to one of ordinary skill
in the art at the time of invention “to have modified [Freud] by making the
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top bevel angle be 30°-40°, as is well known and taught by Segal and
Ohlsson, in order to better cut fibrous or softer materials, or to cut faster, or
to create better chips.” Id.
Appellant raises several arguments in response to this rejection.1
First, Appellant contends that “the cited prior art only evidences the use of
these features separately in different saw blades without any teaching,
suggestion or motivation to combine the features as in the present
invention.” Br. 10. Appellant further asserts that “the only apparent
motivation for combining these references is hindsight with the benefit of
the disclosure of the present application.” Id. at 12.
We disagree. That none of the references individually disclose a pair
of primary, a pair of secondary side faces, and a top bevel angle between 25
and 50 degrees is not evidence of non-obviousness in and of itself. See,
e.g., In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”). The Examiner
identified a reason as to why one of ordinary skill in the art would have been
prompted to apply the teachings of Segal and Ohlsson to the blade of
Freud— to “better cut fibrous or softer materials, or to cut faster, or to create
better chips.” Ans. 4-5. Further, the Examiner explicitly relies on Ohlsson
and Segal as supporting this finding. Ans. 5-6 (citing Ohlsson, col. 1,
ll. 34-40; Segal, col. 4, ll. 73-75).

1 Appellant does not separately argue claims 1, 2, and 4-8. See Br. 10-14.
We select claim 1 as representative. Accordingly, claims 2 and 4-8 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re
Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
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Segal and Ohlsson explain the advantages of a variety of different top
bevel angles on the blade teeth of circular saw blades, including angles
within the claimed range of 25-50 degrees. Segal, which is directed to a
circular saw, explains that “[v]ariation of the angle of the tip bevel 26 on the
tips of the finishing teeth can provide for control of penetration needed for
any particular materials.” Segal, col. 4, ll. 73-75. Segal also discloses that
the bevel angle “can be as much as 25 degrees, or even more, depending
upon the material to be cut.” Id. at col. 4, l. 75 – col. 5, l. 2 (emphasis
added).
Ohlsson is directed to a saw tooth and explains that a bevel angle
between 27 and 60 degrees allows a saw blade to:
cut cleanly, like a knife, which means that a saw tooth designed
in accordance with the invention gives a longer, and in the case
of cellulose digesting processes, fiberboard manufacturing
processes etc., a more useful chip besides leaving a smoother
cut surface on the sawn wood. In addition to the two
aforementioned advantages, saws provided with teeth designed
according to the invention have also been found to possess a
greater cutting ability than teeth used hitherto, which has
enabled the feed to be increased by 50 percent with unchanged
overhang; i.e., the angle at which the blade meets the wood.
Furthermore, the risk of misfunction due to heat is less,
operation quieter and the power consumption lower.
Ohlsson, col. 1, ll. 31-43 (emphases added). Thus, the disclosures of Segal
and Ohlsson support the Examiner’s rationale as to why it would have been
obvious to one of ordinary skill in the art at the time of invention to have
modified the top bevel angle of Freud to an angle in the claimed range of 25
to 50 degrees.
Further, “[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
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account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is
proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As
reflected in the discussion above, the Examiner’s articulated reasoning has a
rational underpinning and supports the legal conclusion of obviousness. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly,
Appellant’s argument is not persuasive.
Second, Appellant contends that Segal discloses “‘lead teeth 17’ in
Figure 4A and 7A hav[ing] a cutting face 22 with no bevel and with side
faces 21, 23.” Br. 11. Appellant asserts that “Segal specifically teaches that
the cutting edge 22 is to be ‘a square cutting edge’ whereby Segal teaches
away from any modification to form the cutting edge 22 with a bevel angle.”
Id. at 12. Thus, Appellant contends that Segal “specifically teaches away
from utilizing a beveled cutting face in combination with both primary and
secondary side faces.” Id.
We disagree. First, Appellant acknowledges that Segal’s teeth 18, 19
have a beveled cutting face. Id. (“other teeth 18, 19, in Segal have only a
beveled cutting face flanked on each side”). Second, it is these teeth that the
Examiner relied upon as disclosing bevel angles. See Ans. 6 (referring to
bevel 26). Bevel 26 is shown in Segal’s Figures 4b and 4c, whereas Figures
4a and 7a show edge 22 to which Appellant’s argument is directed. Thus,
Appellant’s assertion that cutting edge 22 is to be “a square cutting edge” is
unresponsive to the Examiner’s rejection as it fails to explain why the
embodiment relied upon by the Examiner, which includes bevel 26, would
teach away from the Examiner’s proposed combination. Further, Appellant
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has not pointed to any portion of Segal that would have discouraged one of
ordinary skill in the art from using a beveled cutting face in combination
with primary and secondary side faces. That Segal does not disclose such a
combination does not, in and of itself, mean that Segal discourages such
combination. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001)
(“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, . . . would be led in a direction divergent from
the path that was taken by the applicant.” (quoting Tec Air, Inc. v. Denso
Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999))). Accordingly,
Appellant’s argument is not persuasive.
Third, Appellant asserts that the Examiner erred by relying upon
optimizing a result-effective variable because Appellant “is combining two
variables in a way not previously present in combination in the prior art.”
Br. 12-13. In other words, Appellant contends that even if the top bevel
angle is a result-effective variable, such analysis is only applicable “as to a
change in a single given variable with other variables remaining
unchanged.” Id. at 13. Appellant asserts, however, that the claimed
invention “combin[es] two variables in a way not previously present in
combination in the prior art,” and thus it is “not possible to predict the
performance results when changing multiple variables in combination with
one another.” Id. (relying on “varying a tooth’s top bevel angle while also
employing both primary and secondary side faces in combination”).
The Examiner’s rejection, however, relied upon the top bevel angle as
the result-effective variable, not the primary and secondary side faces. See
Ans. 4. In other words, the Examiner’s analysis relies upon changing only
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one variable—the top bevel angle—not two variables. Accordingly,
Appellant’s argument is not persuasive.
Fourth, Appellant asserts that the claimed invention “produces a
substantially unexpected result.” Br. 11. Appellant contends that “[s]ince
the prior art blades are all adapted only for cross-cutting operations, it would
be expected that a blade combining these features would likewise be adapted
only for cross-cutting operations, but unexpectedly the blade of the present
invention performs well for rip-cutting operations as well as cross-cutting.”
Id. Appellant thus asserts that “the unexpected results achieved by the
present invention are objective evidence that performance results are
unpredictable when multiple variables are involved.” Id. at 13.
While the Examiner does not challenge whether Appellant’s identified
results are truly unexpected (see Ans. 8), the Examiner identified several
expected advantages of using a top bevel angle in the claimed range (see id.
at 6). The Examiner ultimately concluded that the Appellant’s unexpected
result did not outweigh the Examiner’s identified expected results, and we
agree that the Examiner’s conclusion was reasonable. Id. at 8.
The only evidence of record, of which we are aware, supporting
Appellant’s position that the claimed tooth geometry produces enhanced
results are self-serving statements contained within Appellant’s
Specification. See Spec., paras. [0005], [0024]. Paragraph [0024] provides,
in relevant part, that:
this combination of features facilitates use of the saw blade in
connection with accomplishing cuts across a wide range of
different materials having a thickness ranging from about 1.3
cm (0.5 inches) to about 5.7 cm (2.25 inches). The ability to
accomplish cuts, and particularly ripcuts, in thicker workpieces
is an advantage that neither the high top bevel angle in the tooth
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geometry or the primary and secondary side faces in the tooth
geometry has been known to be capable of accomplishing when
implemented in the tooth geometry in isolation.
See id. at para. [0024]. These statements, however, are not supported by
objective evidence, such as test results, see In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements
. . . [do] not suffice.”) (quoting In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984)), and without such evidence that Appellant performed any
specific comparison, let alone a comparison we can factually evaluate, of the
claimed invention to the closest prior art of record, we are not persuaded of
Examiner error. 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”), cited in Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1370 (Fed. Cir. 2007). While we have fully considered Appellant’s
evidence of unexpected results, in light of the relative weakness of
Appellant’s evidence as compared to the relative strength of the evidence of
obviousness, we agree with the Examiner that the evidence of obviousness,
on balance, outweighs Appellant’s evidence of non-obviousness.
Accordingly, we sustain Rejection I.
Rejection II
The Examiner concluded that the combination of Freud, Segal,
Ohlsson, and Terada would have rendered obvious the subject matter of
claims 1, 2, 4-8, and 10. Ans. 5.
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Appellant does not separately address this rejection except to state that
Terada “contains no teaching, disclosure or suggestion which would
overcome the fundamental deficiencies in the primary and secondary cited
references.” Br. 13.
As reflected in our discussion of Rejection I, we do not agree with
Appellant that there are deficiencies with the references relied upon by the
Examiner therein. Accordingly, for the reasons we explained in the context
of Rejection I, we sustain Rejection II.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4-8, and
10.

AFFIRMED

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