Ex Parte Schwägerl et al

Patent Trial and Appeal Board

Oct 24, 2017

13255752 (P.T.A.B. Oct. 24, 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.
13/255,752 09/09/2011 Jurgen Schwagerl K-02742-US-PCT 8900
27877 7590 10/26/2017
KFNNAMFTAT TNC EXAMINER
Intellectual Property Department
P.O. BOX 231
SNYDER, ALAN W
1600 TECHNOLOGY WAY
LATROBE, PA 15650
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
larry.meenan@kennametal.com
k-corp.patents @kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN SCHWAGERL and
HERBERT RUDOLF KAUPER
Appeal 2016-003892
Application 13/255,752
Technology Center 3700
Before: LYNNE H. BROWNE, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3—12 under 35 U.S.C. § 103(a) as being unpatentable over
Frejd (US 2005/0249562 Al, pub. Nov. 10, 2005) and Hiyama (US
4,963,059, iss. Oct. 16, 1990). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-003892
Application 13/255,752
CLAIMED SUBJECT MATTER
The claims are directed to a drill tip. Claim 1, reproduced below, is
the sole independent claim and is illustrative of the claimed subject matter:
1. A drill tip comprising:
a body provided with chip flutes and extending in the axial
direction along an axis of rotation and at the front outside end of
which there is provided a chisel edge which crosses the axis of
rotation and transitions into at least two main cutting edges that
each run outwards in the radial direction to a respective cutting
comer disposed at a level with respect to the axis of rotation,
wherein the body, as viewed in a cross-section, has an
asymmetrical configuration at the level of the cutting comers
relative to a rotation about the axis of rotation,
wherein at a distance from the cutting comers in the axial
direction, the body has a symmetrical configuration, and
wherein secondary cutting edges extending in the axial
direction begin at the respective cutting comers, and wherein the
respective cutting comers are not uniformly distributed around
the periphery and, at a distance from the cutting comers in the
axial direction, the secondary cutting edges are disposed with a
uniform distribution.
OPINION
The Examiner finds that Frejd teaches a drill tip with the features of
claim 1, minus “the cutting comers being disposed asymmetrically about the
axis of rotation.” Final Act. 2. The Examiner finds that “Hiyama discloses
rotary cutting tools with unequal and asymmetrical geometries to reduce
vibrations during cutting operations.” Id. The Examiner determines that it
would have been obvious to modify Frejd based on the teachings of Hiyama
“to both retain rigidity of the tool, and to dampen or eliminate vibrations in
the tool from machining operations.” Id. at 3.
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Appeal 2016-003892
Application 13/255,752
Appellants argue that Frejd and Hiyama teach away from one another.
Br. 10-13. In particular, Appellants observe that the drill tip in Frejd “ha[s]
an overall symmetrical configuration” and that the “particular design” has
certain benefits. Id. at 10—11. Appellants then point out that “Hiyama
discloses a [cutting] tool 10 that is not symmetrical” and that the structure of
the tool has certain benefits. Id. at 11. Appellants assert that the “different
purposes/objectives/results” of the references is a clear teaching away. Id. at
12.
However, teachings of preferred embodiments do not amount to a
teaching away. Appellants have not identified any disclosures that criticize,
discredit, or otherwise discourage the solution claimed. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). For this reason, we are not informed
of error in the Examiner’s rejection.
Appellants also argue that “any attempt at modifying Frejd with the
teachings of Hiyama to obtain the invention recited in independent claim 1
. . . would . . . render it inoperable for its intended purpose.” Br. 12. This is
because the modified “Frejd would not operate in the same way as originally
intended” because of the differences in teachings discussed previously. Id.
However, changing features of Frejd’s drill tip, based on Hiyama’s
cutting tool, as outlined by the Examiner does not render it inoperable for its
intended purpose. The Examiner previously found that “[t]he intended
function of Frejd is to drill a hole; in no way would the altering of spacing of
the cutting edges to reduce or eliminate vibrations affect the ability of Frejd
to drill a hole.” Final Act. 5; see also Ans. 5. Appellants do not address this
finding. Rather, Appellants attempt to narrowly define the intended purpose
of Frejd to the design of a specific embodiment. Our reviewing Court has
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Appeal 2016-003892
Application 13/255,752
instructed that “[i]f when combined, the references ‘would produce a
seemingly inoperative device,’ then they teach away from their
combination.” Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F. 3d 1353,
1360 (Fed. Cir. 1999) (citing In re Sponnoble, 405 F.2d 578, 587, (1969)).
As the changes to Frejd proposed by the Examiner would not be result in an
inoperable device, we are not persuaded by Appellants’ argument.
Appellants also argue “that the suggested combination of references
would require a substantial reconstruction and redesign of the elements
shown in the primary reference Frejd and are, therefore, not combinable to
render the claimsprima facie obvious.” Br. 13. Though Appellants describe
the changes that would be required in the redesign (see id.), Appellants do
not assert or offer evidence that such a change is beyond the skill of one of
skill in the art. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
see also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
For these reasons we are not informed of error in the Examiner’s
rejection.
DECISION
The Examiner’s rejection of claims 1 and 3—12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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