Tholin, Michael et al.

Patent Trials and Appeals Board

Jun 2, 2020

2018006970 (P.T.A.B. Jun. 2, 2020)

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.
14/233,932 03/27/2014 Michael Tholin HYNELL 54 US 8163
144190 7590 06/02/2020
Karceski IP Law, PLLC
1717 K. Street, NW
Suite 900
Washington, DC 20006
EXAMINER
CARLSON, MARC
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL THOLIN, FREDRIK WESTBERG,
STEFAN BERGH, and IDA JOHANSSON
Appeal 2018-006970
Application 14/233,932
Technology Center 3700
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, 13, 14, and 16–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Slipnaxos
Aktiebolag. Appeal Br. 4.
Appeal 2018-006970
Application 14/233,932
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CLAIMED SUBJECT MATTER
The claims are directed to “a grinding tool for grinding hard and/or
brittle materials such as tungsten carbide.” Spec. ¶ 1. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A grinding tool for machining hard and/or brittle
materials, comprising:
a core having a core composition; and
an abrasive rim having a rim composition differing from
the core composition,
wherein the abrasive rim comprises abrasive particles
embedded in a matrix,
wherein the matrix comprises a metallic bonding agent
comprising a sintered bronze alloy sintered together with a
polymeric bonding agent to form a connected network,
wherein the metallic bonding agent further comprises
silicon nitride,
wherein the polymeric bonding agent comprises up to 50%
by volume of the matrix,
wherein the metallic bonding agent comprises 50% -
100% by volume of the matrix,
wherein the silicon nitride comprises 0.02% - 3.0% by
volume of the metallic bonding agent, and
wherein the silicon nitride is present in the shape of grains
having a mean grain size in a range of 1μm – 10μm.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fischbacher
Andrews
Tanaka
Akaike
US 6,063,148
US 6,485,532 B2
JP 2003-094341A
JP 2009-241157A
May 16, 2000
Nov. 26, 2002
Apr. 3, 2003
Oct. 22, 2009

Appeal 2018-006970
Application 14/233,932
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REJECTIONS
Claims 1–8, 10, 11, 14, 16–18, 20, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Tanaka, Fischbacher, and
Andrews. Ans. 3.
Claims 9, 13, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanaka, Fischbacher, Andrews, and Akaike. Ans.
18–19.
OPINION
Obviousness
Appellant argues the claims as a group. Accordingly, we select
claim 1 as representative and all claims stand or fall with claim 1. We note
that although Appellant argues claims 9, 13, 19, and 21 under a separate
heading, Appellant merely states that Akaike “does not cure the deficiencies
noted above with respect to the other references applied against the claims,”
thus no separate argument is actually presented. Appeal Br. 24.
Appellant first argues “that the absence of any discussion of a
polymeric boding agent in the material described by Tanaka is fatal to the
rejections.” Appeal Br. 17. This argument essentially vitiates obviousness
as a valid basis for rejection because it would require a single reference to
teach all of the aspects of the claim to be valid. There is no requirement that
motivation or discussion of a missing element be contained within a
reference in order for an Examiner to combine a secondary reference to
supply that missing element. Here, the Examiner acknowledges that Tanaka
fails to teach the claimed polymeric bonding agent, but looks to Fischbacher
to supply that missing element. All that is required of the Examiner is to
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Application 14/233,932
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provide a reasonable basis with rational underpinnings for making the
combination.
Appellant also asserts that Tanaka teaches away from the silicon
nitride content because Tanaka allegedly “discourages the addition of less
than 5 vol. % of silicon nitride to avoid embrittlement of the abrasive
material.” Appeal Br. 18 (citing Tanaka ¶ 8). As the Examiner correctly
points out, however, Tanaka teaches only that a volumetric ratio of a hard
grain should not be below 5%, not specifically silicon nitride. Ans. 28
(citing Tanaka ¶ 9). The Examiner is correct that Tanaka teaches that the
hard grain may be a mixture of one, two, or three kinds of hard grains, of
which silicon nitride could be one. In a combination of two or three
different hard grains totaling 5%, Tanaka clearly allows for silicon nitride in
a percentage less than 5%.
Appellant next argues that Fischbacher is not combinable with Tanaka
because Fischbacher fails to teach the inclusion of silicon nitride as an
abrasive. Again, Appellant argues the references individually. Appellant
asserts “that there is nothing in either Tanaka or Fischbacher to suggest that
a resinoid bonding agent should be added to the combination of materials
described by Tanaka.” Appeal Br. 19. This is not the requirement for
obviousness. The Examiner’s rejection is based upon the finding that both
Tanaka and Fischbacher teach “similar superabrasive grinding wheels.”
Ans. 27. Tanaka teaches the claimed abrasive particles and Fischbacher
teaches the use of polymeric bonding for use in grinding wheels having
abrasive particles. Appellant points to no reason why silicon nitride in
particular would be incompatible with the polymeric bonding agent of
Fischbacher and nothing in Fischbacher limits the use of a polymeric
binding agent to any specific kind of abrasives. Fischbacher teaches the
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general knowledge that polymeric bonding provides superior performance
for holding abrasive particles when grinding brittle materials. Ans. 31.
Contrary to Appellant’s assertion, this is not hindsight reasoning, but
reasoning taken directly from Fischbacher itself.
Appellant also asserts that the claimed invention achieved unexpected
results that the Examiner has failed to address. Reply Br. 4. Appellant
suggests that the Examiner’s combination is invalid because Tanaka fails to
teach a polymeric bonding agent. Id. Appellant’s unexpected results,
however, deal only with the percentage of silicon nitride present, which the
Examiner has correctly noted is found in Tanaka. Appellant again argues
the references individually and fails to tie the unexpected results to the
presence of the bonding agent missing from Tanaka. As such, the
Examiner’s combination of Tanaka and Fischbacher is valid.
Lastly, Appellant argues that Andrews fails to support a rejection for
obviousness. Appeal Br. 22. Appellant repeats the same arguments that
Andrews, like Tanaka, fails to teach any polymeric bonding agent and that
Tanaka teaches away from the claimed percentages found in Andrews. Id.
We first note that the Examiner is correct that Andrews is not even needed
for this rejection to be valid. Ans. 38. Even so, the Examiner uses Andrews
to specifically disclose the claimed percentage of silicon nitride. As noted
above, Andrews need not teach the polymeric bonding agent, as Fischbacher
is used in the rejection for this element, and we already found Appellant’s
teaching away argument to be unpersuasive. Accordingly, we sustain the
Examiner’s rejection.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
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Application 14/233,932
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More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10, 11,
14, 16–18,
20, 22
103 Tanaka, Fischbacher,
Andrews
1–8, 10,
11, 14, 16–
18, 20, 22

9, 13, 19, 21 103 Tanaka, Fischbacher,
Andrews, Akaike
9, 13, 19,
21

Overall
Outcome:
1–11, 13,
14, 16–22

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED