Ex Parte Stout et al

Patent Trial and Appeal Board

Nov 26, 2013

11580184 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GREGORY L. STOUT,
MIGUEL MORFIN DIAZ,
and MAURO DE DONNO
__________

Appeal 2012-004516
Application 11/580,184
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, LORA M. GREEN, and
GEORGE C. BEST, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 22-40. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a method for forming a sharpened
cutting tool. Representative claims 22 and 40 are reproduced below from the
Claims Appendix of the Appeal Brief dated August 24, 2011 (“App. Br.”).1 The
limitations at issue are italicized.
22. A method for forming a sharpened cutting tool, the method
comprising:
grinding a cutting tip to form an intermediate cutting tool, the
cutting tip of the intermediate cutting tool comprising a planar face
and a sharpened cutting edge at a distal end of the planar face, the
cutting tip being relieved on a side and an end that cooperate with the
planar face to define the sharpened cutting edge;
masking the intermediate cutting tool such that a first
predetermined portion of the planar face is exposed and a second
predetermined portion of the planar face is not exposed, the exposed
portion of the planar face including the sharpened cutting edge and
including at least portions of the end and the side that cooperate to
define the cutting edge; and
depositing a wear-resistant material onto the exposed portion of
the planar face of the intermediate cutting tool to form the sharpened
tool.
40. A method for forming a sharpened cutting tool, the sharpened
cutting tool comprising a right parallelepiped body and a cutting tip,

1 Claim 31 is the other independent claim on appeal. The limitations at issue in
claim 31 include the same limitations at issue in claim 22. Therefore, claims 22
and 31 will be addressed together in this Decision on Appeal.
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the cutting tip having a sharpened cutting edge and a wear-resistant
coating deposited thereon, the method comprising; [sic, :]
grinding a worn cutting tip of a worn cutting tool to form an
intermediate cutting tool with a sharpened cutting edge that is defined
by a planar face, a side face and an end face;
masking the intermediate cutting tool such that a first
predetermined portion of the planar face is exposed and a second
predetermined portion of the planar face is not exposed, the second
predetermined portion of the planar face being spaced apart from the
sharpened cutting edge;
depositing a wear-resistant material onto the exposed portion of
the planar face of the intermediate cutting tool to form the sharpened
cutting tool such that the wear-resistant material is disposed between
the sharpened cutting edge and an unexposed portion of the planar
face, the wear-resistant material being selected from a group
consisting of titanium aluminum nitride, titanium nitride and
combinations thereof; and
repeating the grinding, masking and depositing steps at least
two times and wherein no portion of any cutting tip of any sharpened
cutting tool has had the wear-resistant material deposited onto it more
than twice, wherein the exposed portion has a length of about 1mm,
and wherein masking the intermediate cutting tool comprises securing
the intermediate cutting tool into a fixture with a plurality of other
intermediate cutting tools.
The claims stand rejected as follows:
(1) claims 22, 31, and 40 are rejected under 35 U.S.C. § 112, first
paragraph, based on the written description requirement;
(2) claims 22 and 28 are rejected under 35 U.S.C. § 102(b) as anticipated
by Gerber;2

2 U.S. 4,653,373 issued March 31, 1987.
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(3) claims 23-27, 29, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerber in view of Hoskin;3
(4) claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerber in view of Henderer;4
(5) claims 33-40 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gerber in view of Henderer and Hoskin.
B. DISCUSSION
1. Rejection under § 112, first paragraph
The Examiner finds the original disclosure does not provide written
description support for the phrase “being relieved” recited in claims 22 and 31.
Ans. 4.5
The term “relieved” is not defined in the Appellants’ original disclosure.
Nonetheless, words of a claim “are generally given their ordinary and customary
meaning,” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citing
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), which
is “the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” Id. at 1313.
The Examiner and the Appellants each provide definitions for the term
“relief.” The Examiner finds “the definition of relief [is] taken to be ‘a
combination of peeks [sic, peaks] and valleys’ or ‘variations in elevation.’” Ans.
4. The Examiner also finds:

3 U.S. 6,605,160 B2 issued August 12, 2003.
4 U.S. 7,147,939 B2 issued December 12, 2006.
5 Examiner’s Answer dated November 29, 2011.
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[T]he plain language definition of relief is: moulding, carving,
stamping, etc., in which the design stands out from a plane surface so
as to have a natural and solid appearance. Also: work done in this
way; the part which so projects (“relief, n.3”. OED Online. September
2011. Oxford University Press. 14 November 2011).
Id. at 10.
The Appellants, on the other hand, direct us to the following definition of
“relief” in Machinery’s Handbook:6
Relief: The flanks below the side cutting edge and the end
cutting edge must be relieved to allow these cutting edges to penetrate
into the workpiece when taking a cut. If the flanks are not provided
with relief, the cutting edges will rub against the workpiece and be
unable to penetrate in order to form the chip. Relief is also provided
below the nose of the tool to allow it to penetrate into the workpiece.
The relief at the nose is usually a blend of the side relief and the end
relief.
See App. Br. 11-12; Reply Br. 2.7
Based on the record before us, we find the Appellants’ definition of “relief”
to be the “ordinary and customary meaning” of the term in claims 22 and 31.
Phillips, 415 F.3d at 1313. In this regard, we note the definitions provided by the
Examiner are merely general definitions with no specific application to the art of
cutting tools.
The Appellants’ original disclosure describes the cutting tool 10 as having a
cutting tip 20 which includes a cutting face 22, a first side 24, and a second side
26. The Appellants disclose “[t]he first and second sides 24, 26 terminate at a

6 Erik Oberg et al., MACHINERY’S HANDBOOK 684 (Robert E. Green, ed., Industrial
Press Inc. 24th ed. 1992).
7 Reply Brief dated January 27, 2012.
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rounded root cutting portion 28. The intersection of cutting face 22 and first side
24 forms a cutting edge 30 operable to remove material from the gear blank.”
Spec. ¶ [0020].8 Figure 1 depicts the cutting tip 20 as relieved on its side 24 and
on its end 28.
The Examiner contends that Figure 1 is not drawn to scale. Ans. 10.
However, regardless of the scale of Figure 1, we find the combination of paragraph
[0020] describing the cutting edge 30 in combination with Figure 1 conveys “with
reasonable clarity to those skilled in the art that, as of the [Appellants’] filing
date,” the Appellants were in possession of a cutting tip “being relieved on a side
and an end” as recited in claims 22 and 31. Carnegie Mellon Univ. v. Hoffmann-
La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). For this reason, the rejection
of claims 22 and 31 under § 112, first paragraph, is not sustained.
The Examiner also finds the Appellants’ original disclosure does not provide
written description support for a sharpened cutting tool comprising “a right
parallelepiped body” as recited in claim 40. The Examiner finds “[t]he only
description of the body of the sharpened cutting tool (what the spec calls the
gripping portion 12) is that it has a rectangular cross-section [0020].” Ans. 5.
The Appellants contend that “the description in paragraph [0019] in
conjunction with Figure 1 conveys with reasonable clarity a right parallelpiped

8 Reference numerals are emphasized in bold throughout this Decision on Appeal
regardless of whether they have been emphasized in bold in the original text.
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[sic, parallelepiped] body and shows appellant was in possession of the claimed
invention as of the filing date.”9 App. Br. 13.
The Appellants’ argument is supported by the record. According to the
Appellants’ original disclosure, “[the] cutting tool 10 is formed from an elongated
bar of tungsten carbide having a rectangular cross-section” and “includes a
gripping portion 12 having a width 14 and height 16.” The Appellants disclose the
“[g]ripping portion 12 maintains a substantially rectangular cross-section.” Spec. ¶
[0020]. We find this disclosure, in combination with the Appellants’ Figure 1,
provides written description support for a cutting tool comprising “a right
parallelepiped body” as recited in claim 40. Therefore, the § 112, first paragraph,
rejection of claim 40 is not sustained.
2. Rejections under § 102(b) and § 103(a)
a. Claims 22-39
Claims 22 and 31 recite, in relevant part, that the cutting tip comprises “a
planar face and a sharpened cutting edge at a distal end of the planar face, the
cutting tip being relieved on a side and an end that cooperate with the planar face
to define the sharpened cutting edge.” App. Br., Claims App’x.
The Examiner finds Gerber discloses a knife blade 10 which corresponds to
the claimed “cutting tool.” Ans. 5. The Appellants argue the knife blade 10 “does
not have a cutting tip with a planar surface that is relieved on a side and an end that
cooperate with the planar face to define the sharpened cutting edge.” App. Br. 13-
14; App. Br. 15.

9 The Appellants appear to be referring to paragraph [0020] of the original
disclosure. See Reply Br. 3.

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In response, the Examiner finds:
Gerber teaches a cutting tool in Fig. 2 with cutting edge 40 (claimed
“cutting tip”) and beveled cutting faces 36, 25, and the surfaces of
strengthening portion 26 (claimed “planar surfaces”). Cutting faces
36, 25 are relieved because they are beveled and cooperate with the
planar face on strengthening portion 26 to define the cutting edge 40.
Ans. 11 (emphasis added).
Claims 22 and 31 require the cutting tip, not the cutting faces, to be relieved.
The Examiner has failed to show that the cutting tip of Gerber’s cutting tool is
relieved on a side and an end as recited in claims 22 and 31.10 See Reply Br. 4.
Therefore, the § 102(b) rejection of claim 22 and dependent claim 28 is not
sustained. The Examiner does not rely on Henderer or Hoskin to cure this
deficiency in Gerber. Therefore, the § 103(a) rejections of claims 23-27 and 29-39
are not sustained.
b. Claim 40
Claim 40 recites a method for forming a sharpened cutting tool wherein the
sharpened cutting tool comprises a body and a cutting tip. The method includes
the following steps:
grinding a worn cutting tip of a worn cutting tool to form an
intermediate cutting tool with a sharpened cutting edge that is defined
by a planar face, a side face and an end face; [and]

10 The Examiner appears to find that Gerber’s cutting edge 40 corresponds to both
the claimed cutting tip and the claimed cutting edge. However, “when an applicant
uses different terms in a claim it is permissible to infer that he intended his choice
of different terms to reflect a differentiation in the meaning of those terms.”
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119
(Fed. Cir. 2004).
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masking the intermediate cutting tool such that a first
predetermined portion of the planar face is exposed and a second
predetermined portion of the planar face is not exposed, the second
predetermined portion of the planar face being spaced apart from the
sharpened cutting edge.
App. Br., Claims App’x (emphasis added).
Gerber discloses that cutting portion 24 is formed by masking the face 36,
coating the unmasked surface of the base, and then removing the mask. Gerber,
col. 5, ll. 4-7. However, the Examiner finds Gerber “fail[s] to teach that the mask
is disposed apart from the sharpened cutting edge.” Ans. 7.
The Examiner finds Henderer discloses a method for manufacturing a
cutting tool wherein a blank is ground several times to form cutting edges and then
coated with a wear resistant coating. The Examiner finds the coating is selectively
deposited using a mask and all areas of the cutting tool are coated except for shank
46. Id. at 7-8. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to exclude the coating material from the strengthening
portion 26 of Gerber “for the predictable result of preventing interference when
gripping the strengthening portion.” Id. at 8.
The Appellants argue Henderer discloses coating the entire working end of
the tap 10. Therefore, according to the Appellants, Henderer does not teach or
suggest that a portion of a planar face of a cutting tip should be masked as recited
in claim 40. App. Br. 16; see also App. Br. 17. That is, “covering the shank
(46) . . . . does not constitute covering the planar face of the cutting tip” as recited
in the claims on appeal. Reply Br. 7.
The Appellants’ argument is supported by the record. Therefore, the
§ 103(a) rejection of claim 40 is not sustained.
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C. DECISION
The decision of the Examiner is reversed.

REVERSED

cdc