Ex Parte Piper

Patent Trial and Appeal Board

Jul 18, 2017

12822941 (P.T.A.B. Jul. 18, 2017)

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.
12/822,941 06/24/2010 Arthur A. Piper TII01-014-US 6823
86067 7590 07/20/2017
Klintworth & Rozenblat IP LLC
19 North Green Street
Chicago, IL 60607
EXAMINER
GATES, ERIC ANDREW
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
07/20/2017 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):
docketing @ kandrip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR A. PIPER
Appeal 2015-0081761
Application 12/822,9412
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 4—8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Specification (“Spec.,” filed June 24,
2010), Appeal Brief (“Appeal Br.,” filed Apr. 21, 2015), and Reply Brief
(“Reply Br.,” filed Sept. 14, 2015), as well as the Final Office Action (“Final
Action,” mailed Feb. 4, 2015) and Examiner’s Answer (“Answer,” mailed
July 27,2015).
2 According to Appellant, “[t]he real party in interest is Textron Innovations
Inc.” Appeal Br. 3.
Appeal 2015-008176
Application 12/822,941
According to Appellant, the “invention relates to auger bits for
forming bores in materials, such as wood and the like.” Spec. 1,11. 8—9.
Claim 4 is the only independent claim on appeal. Appeal Br., Claims App.
We reproduce claim 4, below, as illustrative of the appealed claims.
4. A method of manufacturing an auger bit
comprising:
machining a tool-engaging portion on a first end of an
axially-elongated shank and a work-entering head portion on a
second end of the shank, the work-entering head portion
comprising a cutting face;
neutral heat treating the machined shank, the tool-
engaging portion and the work-entering head portion; and
after neutrally heat treating the machined shank, the tool-
engaging portion and the work-entering head portion, locally
heat treating the cutting face by induction.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 4 and 6—8 under 35 U.S.C. § 103(a) as
unpatentable over Kronwall (US 2,627,292, iss. Feb. 3, 1953) and Gunzner
(US 5,265,500, iss. Nov. 30, 1993).
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Kronwall, Gunzner, and Kopras (US 5,323,823, iss.
June 28, 1994).
ANALYSIS
Based on our review of the record, including the Examiner’s Final
Office Action and Answer, and Appellant’s Appeal Brief and Reply Brief,
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Appeal 2015-008176
Application 12/822,941
we do not find error in the Examiner’s rejections of claims 4—8. Thus, for
the reasons set forth in detail below, we sustain the rejections.
Appellant argues that the rejection is in error because
both Kronwall and Gunzner discloses a single welding step and
then a single heat treating step. Both of Kronwall and Gunzner
are contrary to the present invention which claims one material
(the shank having the machined surfaces) and two different heat
treating steps (the neutral heat treating and the local heat treating
on that same material).
Appeal Br. 7; see also Reply Br. 2. Thus, Appellant further argues,
[tjhere is no suggestion in either Kronwall or Gunzner that the
step of Kronwall can first be performed and then the step of
Gunzner can be performed. The only way that this combination
could be made is with the impermissible use of hindsight after
reading [Appellant’s] disclosure. [Appellant] is not aware of any
prior art which performs two different heat treating steps on the
same surface, namely neutral heat treating and the local heat
treating on that same surface, nor has the Examiner cited any
prior art or combination of prior art references which teaches or
suggests the claimed two different heat treating steps on the same
surface. .. .
The Examiner’s assertion that the combination would “provide
protection to the working portion of the auger bit so that is has a
longer service life” is unfounded. The single heat treating step
of Kronwall hardens the screw point 14 to provide a longer
service life. Likewise, the single heat treating step of Gunzner
hardens the cutting tips 10 to provide a longer service life. There
is no suggestion in either Kronwall or Gunzner that an
insufficient service life is achieved. There is no suggestion in
either Kronwall or Gunzner that an additional heating treating
step on these already once heat treated surfaces would provide
any further benefit.
Appeal Br. 8; see also Reply Br. 3.
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Appeal 2015-008176
Application 12/822,941
We are not persuaded of error by Appellant, however. The Examiner
determines that it would have been obvious to combine the heat treating step
of Kronwall with the heat treating step of Gunzner, because
Kronwall may be relied upon to teach the first heat treating step
to provide a desired hardness to the entire tool. Gunzner was
then applied to modify Kronwall in order to teach a second,
precisely located heat treatment, as Gunzner teaches that it is
desirable to provide a desired hardness to the cutting faces of the
tool by providing a heat treatment to only the cutting faces of a
tool, such as a drill bit (see column 1, lines 11—13). This is done
for the purpose of leaving the portions of the tool body not used
to cut a workpiece more ductile than the cutting faces, thereby
making those portions of the tool resistant to shock-induced
stress and resultant cracking (see column 5, lines 10—14) while
providing a desired hardness to the cutting faces to extend the
service life of the tool.
Answer 5. Restated, the Examiner determines that it would have been
obvious to use two different heat treatments on different portions of a tool
for two different reasons, and the Examiner’s determination is not
unreasonable. Appellant’s argument are not sufficient to persuade us
otherwise. See Reply Br. 2—3. Therefore, we sustain the obviousness
rejections of claims 4—8.
DECISION
We AFFIRM the Examiner’s obviousness rejections of claims 4—8.
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Appeal 2015-008176
Application 12/822,941
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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