Ex Parte Cho et al

Board of Patent Appeals and Interferences

Sep 28, 2011

11077995 (B.P.A.I. Sep. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HYUN SAM CHO, KYUNG RYUL HAN and
KI JEON SONG
____________

Appeal 2009-012783
Application 11/077,995
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 5, 7, 8, and 10-18. We have
jurisdiction pursuant to 35 U.S.C. § 6.

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Appellants’ invention relates to abrasive tools, particularly a
polycrystalline compact such as polycrystalline diamond (PCD) and/or
polycrystalline cubic boron nitride (PCBN), which is used for the production
of such tools (Spec., 21, ll. 10-25). Appellants employ intermediate layers
between polycrystalline layers and a substrate, which is said to reduce
delamination (Spec. 3, l. 25 – 4, l. 23). Claim 1 is illustrative and
reproduced below:
1. A polycrystalline compact, comprising:
a) a metal substrate having a first surface and a second surface,
wherein the first and second surfaces are non-contiguous;
b) a first polycrystalline layer attached to the first surface using a
first intermediate layer, said first polycrystalline layer including
first superabrasive particles bonded together and said first
intermediate layer including a consolidated mixture of first
intermediate superabrasive particles, a first binder metal from
about 5 vol% to about 25 vol%, and a first bonding medium from
about 5 vol% to about 25 vol%; and
c) a second polycrystalline layer attached to the second surface
using a second intermediate layer, said second polycrystalline
layer including second superabrasive particles bonded together
and said second intermediate layer including a consolidated
mixture of second intermediate superabrasive particles, a second
binder metal from about 5 vol% to about 25 vol%, and a second
bonding medium from about 5 vol% to about 25 vol%, wherein
the first and second intermediate layers each comprise from about
50 to about 99 vol% superabrasive particles.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Nakai 4,403,015 Sep. 6, 1983

1 Our reference to page 2 is to the first of two pages bearing this page
number.
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Frushour 5,011,515 Apr. 30, 1991
Cho 5,011,514 Apr. 30, 1991
Goudemond WO03/070417 Aug. 28, 2003

Claims 1, 5, 7, 8, 14, 17 and 18 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Goudemond in view of Nakai. Claims
10-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Goudemond in view of Nakai and Frushour. Claims 2, 3, 15, and 16 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Goudemond in
view of Nakai and Cho.

We affirm the stated rejections for substantially the reasons set forth
by the Examiner in the Examiner’s Answer. We add the following for
emphasis.
Concerning the Examiner’s first stated ground of rejection; Appellants
argue the rejected claims as a group. Accordingly, we select claim 1 as the
representative claim on which we decide this appeal as to this ground of
rejection. Appellants limit their argument with respect to the other grounds
of rejection pertaining to certain dependent claims to the features argued
with respect to claim 1 and the first ground of rejection (Br. 17-19).
The Examiner relies on Goudemond for teaching a “metal cemented
carbide substrate having surfaces on opposite sides over which at least one
polycrystalline strip or layer of a compact of superabrasive particles are
bounded to each of the major surfaces”; and the Examiner relies on Nakai
for teaching, and for suggesting for use in Goudemond, an intermediate
bonding layer corresponding to that claimed by Appellants (Ans. 3-5).
Appellants center their arguments on the amount of bonding medium
required to be present in the claimed intermediate layers. In particular, it is
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argued that Nakai teaches away from, rather than teaching toward
intermediate layers that include about 5 volume percent to about 25 volume
percent of bonding medium therein, as required by claim 1 (Br. 15). Thus,
the combined teachings of Goudemond and Nakai would lead to a compact
having an intermediate layer that has a different composition than that
recited in claim 1, according to Appellants (Br. 14-17).
The dispositive issue can be stated as follows:
Have Appellants indicated by their argument that Nakai teaches away
from intermediate layers that include bonding medium in amounts
corresponding to that required by claim 1?
We answer this question in the negative.
Appellants urge that the combined teachings of Goudemond and
Nakai would not lead one of ordinary skill in the art to the claimed subject
matter because “Nakai teaches that the carbides, nitrides, carbonitrides,
borides, of 4a, 5a, 6a metals have a volume of at least 30% or the
intermediate layer is “rendered brittle.” See col. 6, lines 28-44” (Br. 14).
Thus, Nakai teaches an amount of bonding medium (“nitrides, carbides, and
carbonitrides of Group Ivb, Vb, or VIb metals”) that must be outside of the
claim 1 requirements (“about 5 vol% to about 25 vol%”) to avoid a brittle
intermediate layer, according to Appellants. (Br. 14-17; Spec. 13, ll. 16-19).
Like the Examiner, we disagree with Appellants’ teaching away
assessment of Nakai. In this regard, the referenced portion of Nakai (col. 6,
ll. 28-40) states2:
If the CBN content of the intermediate bonding layer
is in excess of 70 volume %, the residual part, that is, the

2 CBN refers to cubic boron nitride (Nakai, col. 1, ll. 9-15).
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content of carbides, nitrides, carbonitrides, borides, etc. of
4a, 5a, 6a metals of the periodic table, is inevitably reduced
to an amount less than 30 volume %, whereby the ratio of
formation of mutual solid solutions with WC on the interface
between the intermediate bonding layer and the cemented
carbide substrate is relatively reduced, while the boride
produced by the reaction between WC-Co and CBN is
excessively increased with the result that the intermediate
bonding layer is rendered brittle. Thus the CBN content of
the intermediate bonding layer is preferably less than 70
volume %.

Contrary to Appellants’ argument, the cited passage clearly teaches
that the CBN content of the intermediate bonding layer is preferably below
70 volume percent to avoid the brittleness problem upon interaction of the
substrate with the CBN. The referenced residual part of the intermediate
layer being more than 30 volume % is best understood as resulting from a
subtraction operation (100% - 70%) for the disclosed option where a binder
metal is not employed in the intermediate layer of Nakai as argued by the
Examiner (Ans. 10-12), rather than providing an additional compositional
requirement for the intermediate layer so as to prevent the brittleness
problem as contended by Appellants. Appellants have not substantiated that
having the content of carbides, nitrides, carbonitrides, borides, etc. of 4a, 5a,
6a metals of the periodic table in an amount less than 30 volume percent in
the intermediate layer of Nakai, when a binding metal is included in the
intermediate layer as further disclosed by Nakai, would have been logically
expected to independently increase the likelihood of interaction between the
substrate and CBN such that brittleness of the intermediate layer would
result. On the other hand, the Examiner’s interpretation of Nakai is
consistent with the remaining disclosure and the claims of Nakai. In this
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regard, Nakai makes it clear that Al or Si (binding metal3) can also be
advantageously included in the intermediate layer, as another option (Nakai,
col. 4, ll. 49-60, col. 5, ll. 37-44, and col. 6, ll. 8-15).4 Hence, Appellants
have not shown that there is any discouragement that can be derived from
the teachings of Nakai with respect to forming the intermediate layer
thereof using amounts of super abrasive particles (CBN), bonding medium,
and Al (binding metal) corresponding to the ranges recited in Appellants’
claim 1.
In particular, this is because the alternative intermediate layer
composition disclosed by Nakai wherein a binding metal (Al) is also
included in the intermediate layer, as noted above, is consistent with Nakai’s
disclosure of using less than 70 volume percent of CBN to avoid interaction
thereof with the substrate without requiring that the content of carbides,
nitrides, carbonitrides, borides, etc. of 4a, 5a, 6a metals of the periodic table
in the intermediate layer must be 30 volume percent or more. After all, a
disclosure of one alternative does teach away from the other disclosed
alternatives. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed in the …
application”).

3 Appellants disclose that the claimed binding metal can include Al (Spec.
13).
4 Appellants do not particularly argue that Nakai would not have suggested
using amounts of Al in the intermediate layer corresponding to amounts
within the range claimed by Appellants for binder metal in the intermediate
layer.
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Consequently, Appellants have not established that Nakai teaches
away from using less than 30 volume % of bonding medium in the
intermediate layers by pointing to one of the options disclosed by Nakai
wherein no additional Si or Al (binding metal) is incorporated in the
intermediate layer.

ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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