Ex parte Niebauer

Board of Patent Appeals and Interferences

Apr 15, 1998

08365906 (B.P.A.I. Apr. 15, 1998)

Application for patent filed December 29, 1994. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENNETH L. NIEBAUER

_____________
Appeal No. 97-0593
Application 08/365,9061
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-0593
Application 08/365,906
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
refusal to allow claims 1 through 5, 7, 8 and 10 through 16
as amended subsequent to the final rejection in a paper filed
March 25, 1996 (Paper No. 9). Claims 6 and 9 have been canceled.
Appellant's invention relates to a cutting insert for
cutting a workpiece by removing chips of material therefrom and,
more specifically, involves a cutting insert with a chipbreaker
that effectively breaks thin, foil-like chips that result from
fine cuts of the workpiece. As indicated on page 2 of the
specification, these thin, foil-like chips have a thickness that
may vary between .005 and .009 inches and are more difficult to
curl and embrittle to the extent necessary to cause them to
continuously break into small pieces. The invention is broadly
described in the paragraph bridging pages 3 and 4 of the
specification as follows:
[T]he cutting insert comprises an insert body
having a cutting edge defined by an inter-
section of top and side relief surfaces, and
a chipbreaker configuration including the
combination of an elongated groove disposed
on the top surface of the insert adjacent
Appeal No. 97-0593
Application 08/365,906
3
to the cutting edge, and a plurality of
discrete recesses axially spaced apart over
the groove. Both the groove and the
individual
recesses include a back or rear wall opposite
to the cutting edge that terminates at a
point higher on the top surface of the insert
than the edge for curling and work-hardening
the chips. Additionally, each of the
discrete recesses has a pair of opposing side
edges for engaging and corrugating the chips
as they flow from the cutting edge toward
the back and rear walls of the groove and
recesses. The combination of the corrugating
and curling forces applied by the recesses
and the groove effectively work-hardens the
thin foil-like chips generated during a fine-
cutting operation, thereby embrittling them
and causing them to continuously break into
small segments that are easily expelled from
the vicinity of the cutting operation.
Claims 1, 11 and 16 are representative of subject
matter on appeal and a copy of those claims may be found in
Appendix I to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Romagnolo 4,044,439 Aug. 30, 1977
Holma et al. (Holma) 4,215,957 Aug. 5, 1980
Warren 4,447,175 May 8, 1984
Stashko 4,880,338 Nov. 14, 1989
Appeal No. 97-0593
Application 08/365,906
4
Claims 1 through 5, 7, 10, 11 and 16 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Stashko in view
of Warren.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Stashko in view of Warren as applied above, and
further in view of Holma.
Claims 12 through 15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Stashko in view of Warren as
applied to claim 11 above, and further in view of Romagnolo.
Rather than reiterate the examiner's full explanation
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper No.
13, mailed July 1, 1996) for the examiner's reasoning in support
of the rejections, and to appellant's brief (Paper No. 12, filed
May 22, 1996) and reply brief (Paper No. 14, filed July 22, 1996)
for appellant's arguments thereagainst.
Appeal No. 97-0593
Application 08/365,906
5
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, to the declaration of Kenneth
L. Niebauer filed March 25, 1996 and to the respective positions
articulated by appellant and the examiner. As a consequence of
this review, we have made the determination that the examiner's
rejections under 35 U.S.C. § 103 will not be sustained. Our
reasons follow.
After careful review of the basic combination of
Stashko and Warren, we must agree with appellant that there is no
teaching, suggestion or incentive in the applied references which
would have led one of ordinary skill in the art to their
combination as posited by the examiner so as to arrive at the
particular form of cutting insert as claimed by appellant in
independent claims 1, 11 and 16 on appeal. While the examiner is
of the view that it would have been obvious to one of ordinary
skill in the art to modify the configuration of the spherical
recesses or depressions (36) of Stashko so as to have
Appeal No. 97-0593
Application 08/365,906
Like the examiner, we note that while the specification 2
in Stashko uses reference characters to refer to the various
elements of the cutting inserts described therein, the drawings
of Stashko have no reference numerals associated therewith.
6
substantially linear side edges that are aligned orthogonally
with respect to the cutting edges (16) of the cutting insert
therein merely because Warren shows a cutting insert having
recesses (18) with linear side edges that are so oriented, we
find such a position to be untenable.2
Like appellant, we find the disclosure of the Stashko
patent to be inconsistent and generally ambiguous with regard to
the width dimension of recesses or depressions (36) therein
relative to the width dimension of the groove defined by surfaces
(20, 24) of the cutting insert. All of the top plan views of the
inserts in Stashko (i.e., Figures 1A, 6 and 7) show the width
dimension of recesses or depressions (36) to be smaller than the
width dimension of the groove adjacent the cutting edges of the
inserts. However, sectional views seen in Figures 2 and 5 of
the patent inexplicably appear to show the width dimension of a
recess or depression (36) as being larger than the width
dimension of the groove. In light of these inconsistencies, it
Appeal No. 97-0593
Application 08/365,906
7
would seem to be rather speculative to say that Stashko fairly
teaches the width relationship between the recesses and the
groove as set forth in appellant's claims on appeal.
In addition, we observe that all of the drawings in
Stashko show the recesses (36) as being substantially entirely
located in the inclined surface (24) of the groove that is spaced
away from the cutting edge and adjacent the raised seating sur-
face of the insert. By contrast, the small recesses (18) in the
cutting insert of Warren are shown and expressly described as
being formed and spaced along the length of the cutting edge "in
the uppermost portion of said planar descending wall" (20) of the
cutting insert. See particularly, Figures 1-5, 7 and 8 of Warren
and column 1, lines 60-67.
Considering (1) the distinct differences between the
cutting inserts of Stashko and Warren, both structurally and
operationally, (2) the declaration filed by appellant on
March 25, 1996, and (3) the arguments made by appellant in both
the brief and the reply brief, it is our opinion that the
examiner's combination of Stashko and Warren is based on
Appeal No. 97-0593
Application 08/365,906
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impermis-sible hindsight derived from appellant's own teachings
and not from the prior art references themselves as the teachings
thereof would have been understood by one of ordinary skill in
the art at the time of appellant's invention. Like appellant, we
view the examiner's position regarding the combination of Stashko
and Warren as being an improper "obvious to try" approach.
Having also reviewed the patents to Holma and Romagnolo
applied by the examiner against certain of the dependent claims
on appeal, we find nothing therein which would overcome or
provide for the deficiencies noted above in the teachings or
suggestions of the basic combination of Stashko and Warren.
Lacking any reasonable teachings in the prior art
itself which would appear to have fairly suggested the claimed
subject matter as a whole to a person of ordinary skill in the
art, or any viable line of reasoning as to why such artisan would
have otherwise found the claimed subject matter to have been
obvious in light of the teachings of the applied references, we
Appeal No. 97-0593
Application 08/365,906
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must refuse to sustain the examiner's rejections of claims 1
through 5, 7, 8 and 10 through 16 under 35 U.S.C. § 103.
We note the examiner's citation in the answer
(Pages 7-8) of several prior art patents which purportedly show
recesses or depressions in cutting inserts wherein the recesses
have linear opposing side edges oriented as in appellant’s
cutting insert, and the examiner's assertions that such recesses
are "extremely well known in the chip breaker art and are used
successfully in many different cutting inserts." However, these
patents have not been set forth in the statement of any of the
§ 103 rejections before us on appeal and therefore form no part
of the rejections at issue that are before us for review. As
pointed out by the Court in In re Hoch, 428 F.2d 1341, 1342 n.3,
166 USPQ 406, 407 n.3 (CCPA 1970), where a reference is relied
upon to support a rejection, whether or not in a minor capacity,
there would appear to be no excuse for not positively including
the reference in the statement of the rejection. However, in
passing, we observe that, like the recesses in Warren, the
recesses in both Lundgren (e.g., 19 of Fig. 6) and van Barneveld
are located in an inclined wall of the cutting insert closely
Appeal No. 97-0593
Application 08/365,906
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adjacent the cutting edge of the insert and not in the manner
shown in Stashko.
In light of the foregoing, the decision of the examiner
is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-0593
Application 08/365,906
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James G. Procelli
Kennametal Inc.
P.O. Box 231
Latrobe, PA 15650