Ex Parte 7942616 et al

Patent Trial and Appeal Board

Sep 25, 2015

90012666 (P.T.A.B. Sep. 25, 2015)

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.
90/012,666 09/15/2012 7942616 Karma-RE616 7803
21324 7590 04/18/2016
HAHN LOESER & PARKS, LLP
One GOJO Plaza
Suite 300
AKRON, OH 44311-1076
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/18/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALLIED MACHINE & ENGINEERING CORP.
Appellant, Patent Owner
____________________

Appeal 2015-004283
Reexamination Control 90/012,666
Patent No. US 7,942,616 B2
Technology Center 3900
____________________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Patent Owner requests reconsideration (hereinafter "Request for
Rehearing" or "Reh'g Req.") under 37 C.F.R. § 41.52 of our Decision mailed
September 25, 2015 (hereinafter "Original Decision" or "Orig. Dec.")
affirming the Examiner's Final rejections of the appealed claims. The Patent
Owner asserts that in the Original Decision, we misapprehended or
overlooked the secondary considerations evidence, and requests the
modification of the Original Decision based thereon (Reh'g Req. 1).
We grant the Request to the extent that we consider the Requester's
arguments infra, but DENY the request to modify our Original Decision.
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ANALYSIS
In requesting a rehearing, the Patent Owner asserts that "[n]either the
Examiner nor the Board gave any weight to [the] Appellant's evidence of
secondary considerations of nonobviousness," and "did not take into account
statements and knowledge attested to in the declarations" of Messrs.
Conklin, Mielke, Brown and Rosenberger (Reh'g Req. 1–2). The Patent
Owner asserts that the Board must have misapprehended the disclosure in
Exhibit A of the Conklin and Mielke declarations, and requests this
rehearing based on clearer copies of these documents in Exhibit ZZ
submitted with the Request for Rehearing. We deny the request for the
reasons discussed below.
In response to the Patent Owner's Appeal Brief, the Examiner
maintained that the required nexus between the proffered evidence of
commercial success and the merits of the claimed invention has not been
established (Ans. 45). The Examiner's Answer also stated that:
the examiner remains unpersuaded as to any significant
probative value being accordable to any of the noted
declarations such that the evidence which establishes the
outstanding prima facie cases of obviousness could be
outweighed.
(Answer 45–46).
Moreover, as to Exhibit A of the Constable, Rosenberger and Brown
declarations that shows an illustration of AccuPort 432 (similar to those in
Exhibit A of the Conklin and Mielke declarations and in Exhibit ZZ
submitted with the Request), the Examiner explained that:
the "AccuPort 432" forms the basis for all of the conclusions
made in the declarations, but that product is insufficiently
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defined in those declarations. . . . [T]he depicted tool does not
include a second insert having four edges consistent with claims
1, 17 and 21–26 of Nuzzi. In particular, the edges of that tool
which would correspond either to the claimed fourth
"transverse" cutting edge (clms. 1, 21–26) or to the claimed
fourth "chamfer" cutting edge (cl. 17), appears to be fully
seated within the socket and therefore would not be exposed for
performing a cutting function. Comparatively, the respective
fourth transverse/chamfer edges as depicted in Hall and Nuzzi
are clearly exposed relative to the seat/socket for performing a
cutting function. Consequently, to the extent the November
2013 form of Exhibit A[1] may be relied upon in the Brief, it is
unclear how that exhibit is consistent with the claim language
at bar.
(Answer 47–48, emphasis added; see also Orig. Dec. 34).

Thus, the Examiner sufficiently explained to the Patent Owner that the
submitted illustrations of the AccuPort 432 tool, and the statements in the
declarations related thereto, were inadequate to establish that the AccuPort
432 tool is the invention recited in the claims so that the requisite nexus has
not been established with respect to the asserted evidence of secondary
considerations.
In its Reply Brief, the Patent Owner acknowledged the Examiner's
position, but disagreed that "the 'AccuPort 432' as identified by Exhibit A is
not consistent with the claim language at bar and fails to support the
appropriate nexus, respectively." (Reply Br. 35). The Patent Owner argued

1 Exhibit A in the various declarations submitted by the Patent Owner was a
blank sheet with the heading "EXHIBIT A." Subsequently Rosenberger
Declaration filed November 12, 2013 included Exhibit A with an image of a
drilling tool thereon (see Ans. 47).
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"Rosenberger and Brown Declarations' 'Exhibit A' illustrate the
commercialized AccuPort 432, which is clearly covered by the ’616 patent
claims." (Reply Br. 35). The Patent Owner then referred to, and reproduced
portions of, the advertisement for AccuPort 432 submitted in Exhibit A of
the Mielke and Conklin Declarations, and Exhibit C of the Kucklick
Declaration (Reply Br. 35–37). The Patent Owner also asserted that
statements of customers demonstrate that they relied upon the claimed
features to attain an excellent surface finish (Reply Br. 34, 36).
In the Original Decision, the Board generally agreed with the
Examiner stating:
While the Patent Owner asserts that the commercial product
AccuPort 432 embodies the invention claimed in the ’616
patent (see App. Br. 89–91 and noted declarations therein),
such assertion is made without objective evidence and analysis
demonstrating that the AccuPort 432 tool includes all of the
limitations recited in a claim of the ’285 patent so as to
establish that AccuPort 432 tool is covered by a claim of the
’616 patent. Indeed, the declarations noted by the Patent Owner
including those of Constable, Rosenberger, Brown and Kuzler,
merely assert that AccuPort 432 tool is covered by the claims of
the ’616 patent (App. Br. 89–91), but such general assertions
are of little probative value.
(Orig. Dec. 35).
Indeed, contrary to the Patent Owner's assertion, pages 33 to 41 of the
Original Decision specifically addressed the submitted evidence, including
the declarations of Mr. Rosenberger with its Exhibit A (Orig. Dec. 35–36)
and Mr. Constable with its Exhibits A and B (Orig. Dec. 37). The Original
Decision also noted generally similar declarative statements and evidence in
the declarations of Messrs. Brown, Mielke, Conklin, Kucklick, and various
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exhibits appended thereto (Orig. Dec. 38). The Original Decision further
noted that "while we have considered the entire record before us including
the numerous declarations of record, we refer only to specific portions of the
record necessary to decide the present appeal." (Orig. Dec. 19–20). Thus,
the Board did not overlook the evidence of record in the Original Decision.
In its Request for Rehearing, the Patent Owner now specifically refers
to Exhibit A of the Conklin and Mielke declarations as demonstrating the
"most complete compilation of views of an actual AccuPort 432 tool."
(Reh'g Req. 2). The Patent Owner asserts that the Board must have
misapprehended the disclosure in Exhibit A of these declarations because
the scanned illustrations of the AccuPort 432 tool are "perhaps not as clear
as the originals of such materials," and thus, it now submits clearer color
copies of these documents in Exhibit ZZ of the Request, asserting that such
copies do not represent new evidence prohibited by 37 C.F.R. § 41.52(a)(1)
(Reh'g Req. 2–3).2 However, it is troubling that the Patent Owner faults the
Board when it relied on the very evidenitary material that the Patent Owner
submitted and itself relied upon in its Reply Brief. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010 (precedential))(explaining that the Board
relies on the appellant's briefs to focus the issues and decides on those issues
based on facts and arguments presented). The Patent Owner chose to argue

2 The Patent Owner also notes the concurrent filing of a Contingent Petition
for Waiver of the Rules Pursuant to 37 C.F.R. § 41.3 to waive 37 C.F.R.
§ 41.52(a)(1) for acceptance of the submitted clearer color copies (Reh'g
Req. 3). However, as discussed herein, the newly submitted evidence does
not impact our decision on the Request for Rehearing.
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its case based on other exhibits of record (Reply Br. 36, 37) instead of those
now relied upon in its Request for Rehearing.
In addition, regardless of whether the clearer color copies is new
evidence, they still do not address the fundamental inadequacy of the
evidence and the arguments submitted in the Patent Owner's Appeal Brief
and Reply Brief. The subject matter claimed is directed to a tool with, inter
alia, a holder and a second drilling insert, the insert having multiple cutting
and non-cutting edges oriented in a particular manner relative to the tool,
and further being seated to mate the non-cutting edges with various register
surfaces of the tool. For example, claim 1, which is illustrative of the
claimed subject matter reads as follows:
1. A drilling tool for producing a hydraulic port seal hole
comprising:
a tool holder having a first end, a second end, and an
intermediate portion between the first end and the second end,
and a rotational axis therethrough, the second end comprising a
shank portion, and the intermediate portion comprises at least
one insert attachment seat portion;
at least one first drilling member provided at the first end
of the holder;
at least one second drilling insert attached to the at least
one insert seat attachment portion of the intermediate portion of
the holder, the second drilling insert comprising a first cutting
edge generally parallel to the rotational axis of the tool for
forming the inner diameter of a counterbore, a second cutting
edge generally perpendicular to the first cutting edge for
forming a bottom surface or spotface of the counterbore, a third
cutting edge formed transverse to the rotational axis of the
cutting tool for forming a seal angle for the hydraulic port seal
hole, and a fourth cutting edge formed transverse to the
rotational axis of the cutting tool for forming a chamfer, and the
seat attachment portion having first, second and third register
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surfaces that mate with corresponding non-cutting register
surfaces and the back of the at least one second drilling insert;
and
wherein the at least one second insert is replaceable and
non-indexable.

Thus, it is evident that the claims at issue recite limitations that are
structurally detailed. Importantly, the point of novelty over the prior art of
record applied in the rejections resided in these detailed limitations (see
generally Orig. Dec. 11–33). Correspondingly, evidence that would be
persuasive to establish that a particular commercialized device includes all
of these limitations would be of sufficient quality and detail to allow for
factually determining the presence of these limitations in the commercialized
device so that it can be established that "the thing (product or method) that is
commercially successful is the invention disclosed and claimed in the
patent." Demaco Corp. v. F. Von Langsdoff Licensing Ltd., 851 F.2d 1387,
1392 (Fed. Cir. 1988).
It is not apparent that such limitations are present in Exhibit A of the
Mielke and Conklin declarations, or in Exhibit ZZ, that are clearer pictures
of the AccuPort 432 product. As stated in the Original Decision:
Specifically, the assertion of the Patent Owner that the
AccuPort 432 too [sic, tool] is covered by a claim of the ’616
patent is based on general visual similarities between the
figures of the ’616 patent and the AccuPort 432 tool shown in
the exhibits, and the bald assertions of the declarants.
However, such general visual similarities between the figures of
the ’616 patent and the AccuPort 432 tool and bald assertions
are inadequate to establish that the AccuPort 432 tool is within
the scope of the claims of the ’616 patent. The general features
noted in the customer statements and other declaration evidence
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noted by the Patent Owner as to the AccuPort 432 tool do not
address all of the limitations of a claim of the ’616 patent, and
thus, are likewise inadequate to establish that the AccuPort 432
tool is within the scope of the claims of the ’616 patent.
We have not been directed to any analysis based on the
noted exhibits or other evidence that objectively establishes that
the AccuPort 432 tool includes all of the limitations of a claim
of the ’616 patent. For example, it cannot be ascertained that
the AccuPort 432 tool includes a second drilling insert having
the recited cutting edges.
(Orig. Dec. 39).

The Request for Rehearing relies on portions of the illustrations
showing the AccuPort 432 tool with annotations added thereto (Reh'g Req.
5, 7). The Patent Owner refers to these annotations, and asserts that various
identified edges correspond to the four cutting edges recited in the claims
(Reh'g Req. 4, 7). However, such annotations were not present in the
original evidence of record, and thus, arguments based on the annotations
are new arguments for which the Patent Owner has not shown good cause as
to why they could not have been previously presented. See 37 C.F.R.
§ 41.52.
Even if we accept these annotations as merely clarifying the original
evidence of record, they still do not adequately establish that the illustrated
device includes the limitations claimed. In particular, a deficiency with the
Patent Owner's evidence, including Exhibit ZZ, is that mere illustration of
these edges do not establish that they are cutting edges (or for that matter,
that they are non-cutting edges as also recited in the claims). For example,
on page 7, the Patent Owner asserts that the annotated edge 1 corresponds to
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the recited first cutting edge (Reh'g Req. 7). The annotated illustration in the
Request for Rehearing is reproduced below.

The illustration reproduced above shows a portion of a brochure in
Exhibit ZZ entitled "Port Contour Cutters and Inserts" with numbers 1
through 4 and pointing arrows annotated therein.

In contrast, the main prior art reference Hall3 at issue in the appeal
includes Figure 8, which is reproduced below.

3 Hall, US 5,957,633, issued Sept. 28, 1999.
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Figure 8 of Hall reproduced above shows a side elevational view of a
port cutting tool being removed from a port just formed by the port cutting
tool (Hall, col. 3, ll. 33–35; Fig. 8; see also Figs. 1, 7).

Despite the marked similarities between the above reproduced
illustrations of the AccuPort 432 and the port cutting tool of Hall, especially
as to the second insert, the Patent Owner is well aware and correctly argued
during the appeal that the edge of insert 52 of Hall (radially outermost edge
that protrudes radially beyond the periphery of the body of the cutting tool)
that corresponds to the edge annotated with numeral "1" is a non-cutting
edge (see Appeal Brief 75). Thus, such general illustrations as originally
submitted by the Patent Owner, or the clearer illustrations with annotations
submitted with the Request for Rehearing do not persuasively establish that
the referenced edge is a cutting edge and are of little probative value.
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In the Request for Rehearing, the Patent Owner refers to statements
made by various declarants including employees of the Patent Owner,
Messrs. Brown and Rosenberger, as establishing that AccuPort 432 uses
non-indexable inserts having four cutting edges (Reh'g Req. 5–9). Indeed,
both of these declarants identically state that "[t]he Accuport 432 is a
commercial embodiment of the invention claimed in U.S. Patent No.
7,942,616 (the ’616 patent)." (Decl. of Brown ¶ 7; Decl. of Rosenberger
¶ 3). However, these statements are conclusory statements that lack
persuasive analysis based on underlying facts regarding the AccuPort 432
device that serve as objective evidence. The statement of Mr. Rosenberger
further have already been discussed in the Original Decision (see Orig. Dec.
36–38).
The Patent Owner relies on Exhibits A and B of the declarations of
Messrs. Brown and Rosenberger in support of their statements (Reh'g Req.
8). As noted supra, Exhibit A of the Brown Declaration was a blank page.
Exhibit B of the declarations of Messrs. Brown and Rosenberger reproduces
Figures 5 and 6 of the ’616 patent, and the declarations state "[t]he figure in
Exhibit B is an accurate depiction of the tool used under my authority and
supervision to machine ports." (Decl. of Rosenberger ¶ 5; Reh'g Req. 8).
However, this statement does not directly correlate the figures to the
AccuPort 432 device.4 The Patent Owner further relies on Mr. Brown's
statement (Reh'g Req. 8), which reads:

4 In the Request for Rehearing, the Patent Owner also asserts that "[m]ore
importantly, both Brown and Rosenberger state that Exhibit B to their
declarations, which is a compilation of Figures 5 and 6 from the ’616 patent,
is an accurate depiction of the tool, i.e., the AccuPort 432 tool, used under
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I have personal knowledge that the Accuport 432 reduces
machining time and maintains high tolerances due to at least
having four cutting edges. Attached is Exhibit B which is an
illustration from the ’616 patent. The four cutting edges are
illustrated in Exhibit B as elements 104, 98, 94, and 92. The
Accuport 432 is the exclusive cutting tool that includes the
second insert that is non-indexable and has four (4) cutting
edges.
(Brown Decl. ¶ 30).
This statement of Mr. Brown is supportive of his earlier statement that
"[t]he Accuport 432 is a commercial embodiment of the invention claimed
in U.S. Patent No. 7,942,616 (the ’616 patent)." (Id. at ¶ 7). However, the
statement is largely an assertion by Mr. Brown that, like the earlier
conclusory statement, needs to be supported by persuasive, underlying
factual evidence and detailed analysis. The statement "[t]he Accuport 432 is
the exclusive cutting tool that includes the second insert that is non-
indexable and has four (4) cutting edges" is inadequate for that purpose (id.
at ¶ 30).
Just as important as the above discussed issues regarding the recited
cutting edges, the Original Decision also stated:
it cannot be ascertained . . . that the insert attachment seat
portion of the tool holder includes "first, second and third
register surfaces that mate with corresponding non-cutting
register surfaces and the back of the at least one second drilling
insert" as required by claim 1, or as similarly required by the
other claims of the ’616 patent. In this regard, we observe such
features have been argued by the Patent Owner as

their authority and supervision to machine ports." (Reh'g Req. 8, italics
added, citing Brown Decl. ¶¶ 8–9 and Rosenberger Decl. ¶¶ 4–5). We note
that the italicized portion does not appear in the cited paragraphs.
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distinguishing the claimed invention from the prior art,
especially Jorgensen, which is also directed to a port machining
tool (see, e.g., App. Br. 60; App. Br. 71 citing Second
Supplemental Kucklick Decl. ¶ 44; see also Reply Br. 23, 31).
However, it has not been established through objective
evidence that AccuPort 432 has a seat attachment portion
having register surfaces that mate with corresponding non-
cutting register surfaces.
(Orig. Dec. 39–40).
The Patent Owner reproduces in its Request for Rehearing, the upper
right hand corner of an advertisement for the AccuPort 432 tool provided in
Exhibit ZZ, together with annotations using numerals 1 through 3 and
arrows. The annotated illustration in the Request for Rehearing is
reproduced below:

The illustration reproduced above shows a portion of a brochure in
Exhibit ZZ entitled "AccuPort 432 Port Contour Cutter" with numbers 1
through 3 and pointing arrows annotated therein.

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The Patent Owner refers to these annotations and asserts that various
identified portions of the tool show the various recited register surfaces
visibly mating with register edges recited in the claims (Reh'g Req. 10–11).
However, such annotations were not present in the original evidence of
record, and thus, arguments based on the annotations are new arguments for
which the Patent Owner has not shown good cause as to why they could not
have been previously presented. See 37 C.F.R. § 41.52. Moreover, even if
these annotations were accepted as merely clarifying the original evidence of
record, they still do not adequately establish that the illustrated device
includes the limitations claimed for reasons similar to those discussed above
relative to the annotated illustrations purporting to show the cutting edges.
The illustration is not of sufficient quality and detail, and appropriate
analysis demonstrating the presence of the limitations has not been
presented.
The Patent Owner also relies on declarations of Messrs. Brown and
Rosenberger stating that the second insert is biased "against three (3) register
surfaces." (Reh'g Req. 11).5 However, this statement is largely conclusory,
and inadequate to establish that the AccuPort 432 device includes the
limitations recited in the claims, which would require higher quality
evidence and factual analysis of the structure of the device and insert so as to
establish inclusion of the claimed "insert attachment seat portion" having

5 In the Request for Rehearing, the Patent Owner also asserts that "Brown
also states that the AccuPort 432 tool includes a second insert attached to
bias the second insert against three (3) register surfaces just as shown and
claimed in the ’616 patent." (Reh'g Req. 11, italics added, citing Brown
Decl. ¶ 31). We note that the italicized portion does not appear in the cited
paragraph.
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"first, second and third register surfaces," the second insert with its recited
"non-cutting register surfaces and [] back," and the manner in which they
mate.
In summary, having weighed the totality of the evidence presented,
the Original Decision found that the Patent Owner failed to establish that the
AccuPort 432 device is "the invention disclosed and claimed in the patent."
Demaco, 851 F.2d at 1392. It is not that the Board gave no weight,
misapprehended or overlooked the evidence as asserted by the Patent Owner
in its Request for Rehearing. Rather, the evidence was weighed by the
Board and found to be inadequate. In re Am. Acad. of Sci. Tech Center, 367
F.3d 1359, 1368 (Fed. Cir. 2004) (the Board has "broad discretion as to the
weight to give declarations offered in the course of prosecution."); Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("It is within the discretion
of the trier of fact to give each item of evidence such weight as it feels
appropriate.").
In this regard, we also note that it is not the Board's finding that the
AccuPort 432 device is not covered by one or more claims of the ’616
patent. Instead, it is merely the finding of the Board that the Patent Owner
has not sufficiently demonstrated through persuasive evidence that the
AccuPort 432 device is the invention claimed. Instead of submitting
appropriately detailed illustrations of the AccuPort 432 device (such as
engineering drawings or other illustrations) with corresponding detailed
analysis thereof by a declarant so as to clearly and factually establish that the
AccuPort 432 device includes the limitations of the claim(s), the Patent
Owner relied on general illustrations showing resemblance of the device to
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the claimed invention, and conclusory statements that were, and are,
inadequate. As discussed, the Examiner informed the Patent Owner of the
deficiency of the submitted evidence, and while the Patent Owner
understood the point being made, it did not remedy this deficiency because
in its view, the Examiner erred. The Board disagrees with the Patent
Owner's assessment.

DECISION
While we have considered the Original Decision in light of the
Request for Rehearing, and have elaborated on certain aspects of it, we
decline to modify the Original Decision in any respect.

DENIED

PATENT OWNER:

HAHN LOESER & PARKS, LLP
One GOJO Plaza
Suite 300
Akron, OH 44311-1076

THIRD PARTY REQUESTOR:

Karma, INC.
HAMILTON IP LAW, PC
201 W. 2nd Street
Suite 400
Davenport, IA 52801