14390094 (P.T.A.B. Mar. 7, 2018)

Ex Parte Lau et al

Patent Trial and Appeal BoardMar 7, 2018

14390094 (P.T.A.B. Mar. 7, 2018)

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. 14/390,094 10/02/2014 Edward S. Lau 066042-8480-US01 5716 60840 7590 03/09/2018 MICHAEL, BEST & FRIEDRICH LLP (MT) 100 EAST WISCONSIN AVENUE SUITE 3300 MILWAUKEE, WI 53202 EXAMINER SINGH, SUNIL K ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 03/09/2018 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): MKEIPDOCKET@MICHAELBEST.COM milwaukeeip@milwaukeetool.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD S. LAU, DOUGLAS W. ALLEN, MARC S. D’ANTUONO, COURTNEY MCCOOL, and SMITH C. THEILER Appeal 2017-006565 Application 14/390,0941 Technology Center 3700 Before MICHAEL C. ASTORINO, BEVERLY M. BUNTING, and KENNETH G. SCHOPFER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the Examiner’s decision rejecting claims 1—9, 11, and 13—21. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, “[t]he real party in interest is Milwaukee Electric Tool Corporation.” Appeal Br. 2. Appeal 2017-006565 Application 14/390,094 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A drill bit configured for use with a rotary power tool including a chuck, the drill bit comprising: a shank including a first end and a second end, the first end configured to be received in the chuck of the rotatory power tool; and a paddle that extends from the second end of the shank, the paddle including, a first face including a concave portion, a second face opposite the first face and the second face including a convex portion opposite the concave portion, a cutting surface, a cutting edge located at an end of the cutting surface, a relief angle defined by the cutting surface, and an angled rake face adjacent the cutting surface that defines a rake angle that is between 5 degrees and 45 degrees, a spur adjacent the cutting surface, an inset surface disposed on the spur, a first side generally normal to the first face, a second side generally normal to the first face and opposite the first side, and wherein the first side includes a semi-circular recess between the second end of the shank and the cutting surface to reduce drag during a cutting operation. Rejections Claims 1, 2, 4—9, 11, 14, and 16—21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dost et al. (US 2009/0116918 Al, published May 7, 2009) (“Dost”), Haughton et al. (US 6,227,774 Bl, issued May 8, 2 Appeal 2017-006565 Application 14/390,094 2001) (“Haughton”), and Wiker et al. (US 7,267,513 B2, issued Sept. 11, 2007) (“Wiker”).2 Claims 3 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dost, Haughton, Wiker, and Stone et al. (US 5,697,738, issued Dec. 16, 1997) (“Stone”). ANALYSIS The Appellants argue that Examiner’s rejection of independent claims 1 and 13, which relies on a combination of teachings from Dost, Haughton, and Wiker, is improper. See Appeal Br. 6—8, 10-11; Reply Br. 2-4. For the rejection of claims 1 and 13, the Examiner finds that Dost discloses “an angled rake face adjacent the cutting surface 34/38 that defines a rake angle,” but “does not explicitly disclose[] a rake angle that is between 5 degrees and 45 degrees,” as claimed. Final Act. 3, 5, 6 (citing Dost, Figs. 6—8). To remedy this deficiency, the Examiner turns to Haughton and finds that Haughton “teach[es] a rake angle 63 of between 4 and 15 degrees for balancing cutting efficiency with stability.” Id. at 3 (citing Haughton, col. 5,11. 27—33). The Examiner determines that “it would have been obvious to one having ordinary skill in the art to modify the tool of Dost 2 Although the Examiner sets forth separate statements for the rejection of claims 1, 2, and 4—12 (Final Act. 2) and claims 13, 14, and 16—22 (id. at 5), we consolidate these statements into a single ground of rejection because they are based upon the same combination of references. Additionally, we note that claims 10, 12, and 22 have been cancelled. See Response and Amendment, filed May 10, 2016. As such, claims 1, 2, 4—9, 11, 14, and 16— 21 are the rejected claims under this ground. 3 Appeal 2017-006565 Application 14/390,094 with the rake angle of Haughton in order to provide an overall more efficient tool of varying size.” Id. The Examiner does not rely on Wiker to teach the claimed rake angle. See id. The Appellants point out that “[t]he amount of rake angle 63 for the leading shoulder edge 30 of Haughton is created by the twist 54.” Appeal Br. 8 (citing Haughton, col. 5,11. 27—29). Indeed, Haughton discloses “[t]he positive rake angle 63 is the angle that the leading face portion 26 of the face 24 is swept backwardly from the vertical along the shoulder leading edge 30 and is formed by the twist 54 of the drill bit 10.” Haughton, col. 5,11. 14—17. The Appellants contend that applying Haughton’s teachings to Dost’s drill bit would remove many of the features of Dost’s drill bit, such as “be[ing] concave/convex” and having “[cutting] edge portions 36, 40 that would not lie in the same plane PI.” Appeal Br. 8. Here, the Appellants challenge whether a skilled artisan would apply Haughton’s teachings to Dost’s drill bit to meet the claimed subject matter. See id. at 7—8, 10-11; Reply Br. 2-4. In response, the Examiner determines that applying Haughton’s teachings to Dost’s drill bit would result in “cutting edges [that] would continue to lie within the same plane” and “[c]utting faces [that] would not include a twist.” Ans. 10 (emphasis omitted). Also, the Examiner determines that “the concave/convex shape [of the drill bit] would be maintained.” Id. (emphasis omitted). In reaching this determination, it appears that the Examiner relies on a broader teaching of Haughton. See, e.g., Final Act. 3, 6; Ans. 10. The Examiner links this determination to a supporting example where Dost’s drill bit is further modified to include “chip curling crevices adjacent to cutting edges and located on the rake faces.” Ans. 9. The Examiner bolsters this example by referencing 4 Appeal 2017-006565 Application 14/390,094 Thompson, a prior art reference not applied in the rejection of claims 1 and 13.3 See id. at 9—10; Final Act. 8—9. The Appellants argue that the Examiner’s supporting example merely “add[s] additional features to Dost in order to arrive at the Applicant’s invention based on impermissible hindsight.” Reply Br. 4. The Appellants contend that there is no reason to add chip curling crevices to Dost’s drill bit because doing so only duplicates a function of the concave face of Dost’s drill bit. Id. This argument is persuasive. In this case, the Examiner’s rejection lacks rational underpinning because the Examiner fails to adequately explain and support how one would apply Haughton’s teachings to Dost’s drill bit to result in the claimed subject matter. Thus, we do not sustain the Examiner’s rejection of independent claims 1 and 13, and their respective dependent claims, as unpatentable over Dost, Haughton, and Wiker. The remaining rejection based on Dost, Haughton, and Wiker in combination with Stone relies on the Examiner’s rejection of independent claims 1 and 13. Final Act. 7—8. The Examiner’s rejection is not cured by the additional findings and/or reasoning of the remaining rejection. As such, we do not sustain the rejection of claims 3 and 15 as unpatentable over Dost, Haughton, Wiker, and Stone. 3 Thompson (US 1,557,900, issued Oct. 20, 1925). 5 Appeal 2017-006565 Application 14/390,094 DECISION We REVERSE the Examiner’s decision rejecting claims 1—9, 11, and 13-21. REVERSED 6