Ex Parte Chapman et al

Board of Patent Appeals and Interferences

Sep 23, 2008

10358753 (B.P.A.I. Sep. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK CHAPMAN, GIOVANI GONGORA, and ROGER VALE
____________

Appeal 2008-2345
Application 10/358,753
Technology Center 3600
____________

Decided: September 23, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Chapman et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-4, 6, 7, 22-25, 27-32, 34, and 35,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
Appeal No. 2008-2345
Appl. No. 10/358,753

2
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention relates to traction and anchoring
surfaces that have diamond traction surfaces (Spec. 1:¶0001). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A traction control device for gripping
surfaces, the traction control device comprising:
a base;
a contact insert fixed to the base, wherein
the contact insert comprises a contact surface, the
contact surface comprising a polycrystalline
diamond region;
wherein the polycrystalline diamond region
is bonded to a nonferrous substrate.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lowder US 3,894,673 Jul. 15, 1975
Nash US 4,893,859 Jan. 16, 1990
Frushour US 5,011,515 Apr. 30, 1991
Appeal No. 2008-2345
Appl. No. 10/358,753

3
The Appellants seek our review of the rejection of claims 1-4, 6, 7,
22-25, 27-32, 34, and 35 under 35 U.S.C. § 103(a) as being unpatentable
over Nash1 and Frushour.

ISSUE
The issue before us is whether the Appellants have shown that the
Examiner erred in rejecting the pending claims as unpatentable over Nash
and Frushour. This issue turns on whether one having ordinary skill in the
art would have had a reason, in view of the prior art, to make a traction
control device having a contact insert with a contact surface comprising a
polycrystalline diamond region.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Nash discloses a clamp “for lifting and tilting long concrete planks
or panels” (Nash, col. 1, ll. 5-6).
2. Nash describes that the very high weight of the concrete panels
results in very high torque at the interface of the concrete panel and
the clamping head and that even a very slight slippage at the

1 Nash incorporates by reference the disclosure of Lowder (Nash, col. 2,
ll. 10-12 and col. 3, ll. 53-59).
Appeal No. 2008-2345
Appl. No. 10/358,753

4
interface tends to cause the concrete to crack and spall (Nash, col.
1, ll. 41-45).
3. Nash teaches incorporating diamond crystals into the face of the
steel clamping head that contacts the side wall of the concrete
panel to increase the resistance to movement between the clamp
head interface and the concrete side walls (Nash, col. 1, ll. 60-64).
4. In particular, Nash describes that “[t]he upper projection[s] of the
diamond crystals dig into the concrete and markedly decreases
[sic] the incidence of concrete spalling by reducing slippage”
(Nash, col. 1, ll. 65-67).
5. As such, the focus of Nash is on constructing a gripping surface for
clamping concrete panels that is capable of gripping the panels
while at the same time avoiding damage to the panels.
6. Nash discloses that the diamond crystals can be bound to the steel
face by brazing a monolayer of diamond to the substrate surface, as
disclosed in U.S. Patent No. 3,894,673 to Lowder (Nash, col. 3,
ll. 53-57).
7. Frushour discloses “a sintered polycrystalline diamond composite
for use in rock drilling, machining of wear resistant metals, and
other operations which require the high abrasion resistance or wear
resistance of a diamond surface” (Frushour, col. 1, ll. 8-12).
8. Frushour does not disclose that a polycrystalline diamond
composite is suitable for use in applications requiring a gripping
surface.
Appeal No. 2008-2345
Appl. No. 10/358,753

5
9. In fact, Frushour does not discuss the gripping properties of a
substrate covered with a polycrystalline diamond composite.
10. Frushour focuses on creating a bond between the PDC diamond
layer and the metal carbide support to reduce the concentration of
force which causes delamination between the polycrystalline
diamond table and the substrate and substrate cracking in prior art
composites when used in rock drilling and metal machining
(Frushour, col. 1, ll. 29-38, col. 3, ll. 13-31, and col. 4, ll. 6-29).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
Appeal No. 2008-2345
Appl. No. 10/358,753

6
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
Appeal No. 2008-2345
Appl. No. 10/358,753

7
for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
Each of independent claims 1, 22, and 29 recites a traction control
device having a contact insert with a contact surface comprising
polycrystalline diamond. The Appellants argue that “Nash and Frushour
simply fail to provide any motivation whatsoever for replacing the discrete
diamond grit 100 bonded to the steel clamp head faces 38 disclosed in Nash
Appeal No. 2008-2345
Appl. No. 10/358,753

8
with the polycrystalline diamond layer 6 of the compact blank disclosed in
the Frushour reference” (App. Br. 8). In particular, the Appellants contend
that the smooth polycrystalline diamond layer “is unlikely to ‘dig into the
concrete’ in the same manner as the diamond crystals disclosed in Nash”
(App. Br. 10).
The Examiner found that Nash discloses a gripping apparatus having
the claimed elements except that Nash does not disclose the specific
materials as claimed. The Examiner found that “Frushour discloses an
abrasion tool blank, similar to the type of tool referenced in the Nash patent
(col. 3, line 56) formed of a polycrystalline diamond composite bonded to a
tungsten carbide substrate.” The Examiner has also found that Frushour
discloses that the manner in which the PCD layer is bonded to the tungsten
carbide base results in a much stronger bond due to the three-dimensional
nature of the bond (Ans. 5). The Examiner concluded that it would have
been obvious to modify Nash to form the base and contact surface out of
tungsten carbide and polycrystalline diamond, respectively, as taught by
Frushour “in order to create a very secure engagement with the workpiece
being lifted without damaging the surface thereof.” (Ans. 3.)
Nash discloses a clamp for lifting and tilting long concrete planks or
panels that incorporates diamond crystals into the face of the steel clamping
head to increase the resistance to movement between the clamp head
interface and the concrete side walls to avoid cracking or spalling of the
concrete (Facts 1-3). In particular, Nash describes that “[t]he upper
projection[s] of the diamond crystals dig into the concrete and markedly
Appeal No. 2008-2345
Appl. No. 10/358,753

9
decreases [sic] the incidence of concrete spalling by reducing slippage”
(Fact 4). As such, the focus of Nash is on constructing a gripping surface for
clamping concrete panels that is capable of gripping the panels while at the
same time avoiding damage to the panels (Fact 5).
Frushour discloses “a sintered polycrystalline diamond composite for
use in rock drilling, machining of wear resistant metals, and other operations
which require the high abrasion resistance or wear resistance of a diamond
surface” (Fact 7). Frushour does not disclose that polycrystalline diamond
composite is suitable for use in applications requiring a gripping surface
(Fact 8). In fact, Frushour does not discuss the gripping properties of a
substrate covered with a polycrystalline diamond composite (Fact 9).
Rather, Frushour focuses on creating a bond between the PDC diamond
layer and the metal carbide support to reduce the concentration of force
which causes delamination between the polycrystalline diamond table and
the substrate and substrate cracking in prior art composites when used in
rock drilling and metal machining (Fact 10).
The Examiner makes the conclusory statement that a layer of PCD
bonded to a tungsten carbide base would achieve “the predictable result of
producing a secure gripping force on a concrete slab or the like while
preventing any surface damage to the slab” (Ans. 5). The Examiner has not,
however, established on the record that one having ordinary skill in the art
would have known that a contact surface made of a polycrystalline diamond
composite would work in the gripping operation of Nash. In other words,
the Examiner has not shown that polycrystalline diamond composite has an
Appeal No. 2008-2345
Appl. No. 10/358,753

10
established function as a gripping surface. Nor do we agree that all diamond
surfaces inherently have gripping properties per se that would have led one
having ordinary skill in the art to simply substitute one diamond surface for
another. In other words, the Examiner has not established that the diamond
crystals of Nash and the polycrystalline diamond composite of Frushour are
known equivalents in terms of their gripping properties in the art. As noted
by the Appellants, polycrystalline diamond composites are manufactured in
a manner that results in a smooth layer, while the individual diamond
crystals of Nash are used to dig into the surface of the concrete to grip the
surface. Thus, it is not clear from the record whether the smooth
polycrystalline diamond composite layer of Frushour would suffice to grip
the concrete panels of Nash.
Further, the Examiner takes the position that one having ordinary skill
in the art would have been led to use the PCD/tungsten carbide combination
of Frushour in the gripping surface of Nash because Frushour teaches that
the manner in which the PCD layer is bonded to the tungsten carbide base
results in a much stronger bond (Ans. 5). We disagree with this conclusion.
Frushour teaches that its method of bonding PCD to a tungsten carbide base
results in a much stronger bond than the prior art methods of bonding PCD
to tungsten carbide to form a composite polycrystalline diamond compact
for use in rock drilling, machining of wear resistant metals, and other
operations which require high abrasion resistance or wear resistance of a
diamond surface (Facts 7 & 10). There is no indication in the record;
however, that delamination is a problem in the device of Nash. Nash is not
Appeal No. 2008-2345
Appl. No. 10/358,753

11
using its clamp for rock drilling or high wear machining or any other high
abrasion or wear purpose. As such, the diamond crystal surface of Nash’s
clamp does not undergo the same forces as the surfaces used in Frushour.
Thus, the Examiner has failed to sufficiently establish that one having
ordinary skill in the art would have been led to substitute the PCD/tungsten
carbide combination in place of the diamond crystal/steel substrate gripping
surfaces of Nash.
The Examiner appears to also conclude that because Nash
incorporates the disclosure of Lowder, pertaining to an abrasive cutting tool,
it would have been obvious to use materials from other abrasive cutting
tools, such as Frushour, in the clamp face of Nash (Ans. 3). We disagree.
Nash incorporates the disclosure of Lowder for its teaching of a method to
bind the diamond crystals to the steel face in Nash (Fact 6). This reference
to Lowder does not imply, however, that any other materials used for
abrasive cutting tools would work in the gripping operation of Nash. Rather,
Nash and Lowder show simply that diamond crystals were known in the art
to be useful both as a gripping surface, as disclosed in Nash, and as an
abrasive cutting surface, as disclosed in Lowder. As such, the Examiner has
failed to set forth a prima facie case of obviousness of the claims.
With regard to remaining rejected dependent claims 2-4, 6, 7, 23-25,
27, 28, 30-32, 34, and 35, because these claim rejections rely upon the
underlying rejection of independent claims 1, 22, and 29, we also reverse the
examiner’s rejection of these claims. See In re Fine, 837 F.2d 1071 (Fed.
Appeal No. 2008-2345
Appl. No. 10/358,753

12
Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. § 103,
then any claim dependent therefrom is nonobvious).

CONCLUSION
We conclude the Appellants have shown that the Examiner erred in
rejecting claims 1-4, 6, 7, 22-25, 27-32, 34, and 35 under 35 U.S.C. § 103(a)
as being unpatentable over Nash and Frushour.

DECISION
The decision of the Examiner to reject claims 1-4, 6, 7, 22-25, 27-32,
34, and 35 is reversed.

REVERSED

ewh

HOLLAND & HART LLP
P.O. Box 11583
60 E. South Temple, Suite 2000
Salt Lake City UT 84110