Endres, William J. et al.

Patent Trials and Appeals Board

Oct 2, 2019

12350181 - (R) (P.T.A.B. Oct. 2, 2019)

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.
12/350,181 01/07/2009 William J. Endres 62859/R177 6419
23363 7590 10/02/2019
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
pair_cph@firsttofile.com
pto@lrrc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM J. ENDRES, DOUGLAS J. WOODRUFF,
JOHN W. LOOSEMORE, and THIMMAIAH G. KUMBERA
____________

Appeal 2018-007479
Application 12/350,181
Technology Center 3700
____________

Before LINDA E. HORNER, DANIEL S. SONG, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
William J. Endres et al. (“Appellants”)1 filed a Request for Rehearing
under 37 C.F.R. § 41.52(a) (“Request”), dated September 6, 2019, of our
Decision dated July 8, 2019 (“Decision”). In the Decision, we affirmed the
Examiner’s rejections of claims 1, 13, 14, 50–58, and 61–77.
The Request is DENIED.

1 According to Appellants, the real party in interest is Rotary
Technologies Corporation. Appeal Br. 1.
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OPINION
An appellant’s request for rehearing is limited in scope to points,
stated with particularity, believed to have been misapprehended or
overlooked by the Board in rendering its original decision. See 37 C.F.R.
§ 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010)
(precedential) (quoting MPEP § 1214.03). The request may not rehash
arguments originally made in the Brief that have been specifically addressed
by the Board, nor is it an opportunity to merely express disagreement with a
decision. It may not raise new arguments or present new evidence, except as
permitted by paragraphs (a)(2) and (a)(3).2 Id. The proper course of action
for an appellant dissatisfied with a Board decision is to seek judicial review,
not to file a request for rehearing to reiterate issues that have already been
decided. See 35 U.S.C. §§ 141, 145.
Appellants’ stated basis for seeking rehearing is an assertion that “the
Board misapprehended [Appellants’] argument relating to lack of motivation
to combine” the references applied in the rejection. Request 1; see id.
at 1–3. In particular, Appellants reproduce a section of their Appeal Brief
emphasizing differences in operation between Falger’s arrangement (where
the insert remains stationary with respect to the rest of the tool) and
Briese ’184’s arrangement (where the insert itself rotates). See id. at 1–2
(quoting Appeal Br. 5). Appellants contend that such a difference in

2 Paragraph (a)(2) allows for new arguments based upon a recent
relevant decision of either the Board or a Federal Court upon showing of
good cause, and paragraph (a)(3) allows for new arguments responding to a
new ground of rejection made by the Board. 37 C.F.R. § 41.52. Neither of
these exceptions applies in this case.
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function indicates an absence of a reason to combine the teachings. This
contention was addressed in our Decision and remains unpersuasive.
More specifically, Appellants urge that “[i]f the grooves taught by
Falger were incorporated into the insert of Briese ’184, the grooves would
rotate with the insert, and would not be stationary thus not allowing, or
making difficult, the delivery of coolant to the inlet end of each groove, and
the passing of the coolant through each of the grooves for cooling purposes.”
Request 2. But, as we stated in the Decision, this urging “is premised on
bodily incorporation of the entirety of Falger’s cutting insert into the tool
assembly of Briese ’184, which is neither the standard for an obviousness
determination, nor an accurate characterization of the rejection presented.”
Decision 5 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellants “argued in the Appeal Brief that one skilled in the art
would not be motivated to include grooves of Falger that must be stationary
for receiving and transferring coolant for cooling purposes in the insert of
Briese ’184 in which the grooves would have to rotate.” Request 3. Here,
again, we pointed out that “the Examiner’s rejection applied the relevant
teaching from Falger—namely, providing the inner central axial opening
surface with a plurality of circumferentially spaced apart peaks and
valleys—to the inner surface of the central axial opening in Briese ’184 to
yield the structure claimed.” Decision 5 (citing Final Act. 6). In other
words, the rejection did not incorporate any details from Falger’s central
coolant source (which Appellants urge would only be effective with a
stationary cutter), but instead “simply incorporate[ed] the scalloped
arrangement of the inner surface of the central opening in Falger’s insert to
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the inner surface of the central bushing opening in Briese ’184’s insert to
enhance cooling.” Decision 5–6 (citing Ans. 13).
Appellants assert that “the Examiner did not provide any evidence that
showed that rotating grooves would be able to receive sufficient coolant and
allow coolant to flow there through the same way as stationary grooves are
able to receive coolant and allow the coolant to flow through such grooves
for cooling.” Request 3 (emphasis added). However, the Examiner’s
rejection did not involve incorporating the central coolant source from
Falger, such that whether the structure of the modified insert would
necessarily receive sufficient coolant in “the same way” is not critical to the
rejection presented.
As we stated in the Decision, the Examiner explained that “one of
ordinary skill in the art would have recognized a benefit in providing cooling
channels (the scalloped arrangement defined by the plurality of
circumferentially spaced apart peaks and valleys) that would be ‘applicable
to both a stationary cutting tool (as disclosed by Falger, in which the insert is
stationary and the cutting body of the tool is in rotation) and a rotary cutting
tool (as taught by Briese [’184], in which the cutting insert is rotating).’”
Decision 5 (quoting Ans. 13). For example, it cannot be reasonably disputed
by one of skill in the art that adding the structure of Falger’s grooves to the
insert of Briese ’184 (to create a scalloped arrangement) would increase the
amount of surface area of the insert’s central axial opening, which would
ordinarily be exposed to some cooling fluid during use (e.g., even ambient
air or a cooling spray commonly applied while cutting). Whether such
cooling fluid is specifically a liquid supplied to stationary grooves, as in
Falger, does not change this fundamental characteristic, which would
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provide some benefit to the structure of Briese ’184’s insert as the Examiner
stated.3 Accordingly, the Examiner’s reasoning is sufficient to combine the
prior art teachings applied in the rejection.
For the above reasons, Appellants’ Request does not persuade us that
we misapprehended the argument relative to an asserted lack of motivation
to combine the teachings from Briese ’184 and Falger. Appellants do not
identify any other point as allegedly being misapprehended or overlooked by
the Board. As noted supra, a request for rehearing is not the proper forum
for requesting reconsideration.

DECISION
We have considered the arguments pertaining to points allegedly
misapprehended or overlooked with respect to our affirmance of the
rejection of claims 1, 13, 14, 50–58, and 61–77, and we deny the Request to
make any modification to the Decision. The Examiner’s rejections remain
affirmed.

3 We note that Appellants’ claims recite, in relevant part, the structural
detail of the insert body’s inner surface having a scalloped arrangement
defined by a plurality of circumferentially spaced apart peaks and valleys,
without reciting any necessary function provided by such arrangement (e.g.,
cooling if the resulting spaces are open, or insulating if they are closed), or
reciting further structure that might constrain any such function; thus, any
particular function to the scalloped arrangement is beyond the scope of the
claims. As explained herein, the Examiner has set forth adequate reasoning
to combine the prior art teachings relied upon to yield the structure of a
scalloped arrangement of the inner surface as recited.
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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).

DENIED