Ex Parte Gales et al

Board of Patent Appeals and Interferences

Nov 18, 2008

11233852 (B.P.A.I. Nov. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALFRED S. GALES, JR.,
EDWARD J. OLES, KENT L. REINER,
WILLIAM M. ALEXANDER, IV,
and JEAN-PIERRE GENAIN
____________

Appeal 2008-4622
Application 11/233,852
Technology Center 1700
____________

Decided: November 18, 2008
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 40-73. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Claim 40 is illustrative:
40. A coated cutting tool for removing material from a workpiece in a
material removal operation wherein the coated tool engages the workpiece at
a selected depth of cut, the cutting tool comprising:
Appeal 2008-4622
Application 11/233,852

a body, the body containing a pocket;

an uncoated polycrystalline cubic boron nitride blank having a
rake surface and a cutting edge, and a leg extending away from the cutting
edge;

the uncoated polycrystalline cubic boron nitride blank being
brazed into the pocket using a braze alloy whereby there is a braze joint
between the body and the uncoated polycrystalline cubic boron nitride
blank;

the braze joint being located a distance away from the rake surface
of the polycrystalline cubic boron nitride blank ranging between about 1.5
millimeters and about 4.9 millimeters and the leg having a length that is at
least about 1.7 times as great as the depth of cut; and

a coating applied to the uncoated polycrystalline cubic boron
nitride blank brazed into the pocket.

The Examiner relies upon the following references as evidence of
obviousness:
Nakai 5,037,704 Aug. 6, 1991
Thysell 6,090,476 July 18, 2000

Brochure on Brazing Alloys, Semi-Alloys, Semialloy Brazing Alloys, July
1968. (Semialloy)

Appellants’ claimed invention is directed to a coated cutting tool. The
cutting tool comprises a body containing a pocket and an uncoated
polycrystalline cubic boron nitride blank brazed into the pocket, resulting in
a brazed joint between the body of the tool and the uncoated boron nitride
blank. A coating is applied to the uncoated boron nitride blank that is brazed
into the pocket.
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Application 11/233,852

Appealed claims 40-52 and 60-68 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nakai in view of Semialloy. Claims
53-59 and 69-73 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the stated combination of references further in view of
Thysell.
Appellants present separate, substantive arguments only for claims 45
and 67, as a group, claims 56 and 70 as a group, and claims 59 and 73 as a
group. Accordingly, claims 40-44, 46-52, 60-66, and 68 stand or fall
together, as do claims 53-55, 57, 58, 69, 71 and 72.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
There is no dispute that Nakai discloses, like Appellants, a coated
cutting tool for removing material from a workpiece comprising a body
containing a pocket, a boron nitride blank brazed into the pocket using a
braze alloy, and a coating applied to the boron nitride blank that is brazed
into the pocket. As recognized by the Examiner and emphasized by
Appellants, Nakai does not provide an uncoated boron nitride blank brazed
into the pocket of the cutting tool’s body. Rather, Nakai provides a thin
coating on the boron nitride blank consisting of carbides, carbonitrides and
nitrides of silicon and other elements for the purpose of achieving a strongly
brazed tool that is free from the occurrence of cracks. However, we agree
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with the Examiner that Nakai’s provision of the thin coating does not require
a conclusion of nonobviousness for the presently claimed subject matter.
As explained by the Examiner, Nakai clearly recognizes that it was
known in the art to make cutting tools like Appellants that are free of a
coating on the boron nitride blank that is brazed into the pocket of the
cutting tool. Nakai describes certain disadvantages of not using a coating on
the brazed surface of the boron nitride blank at columns 1 and 2 of the
patent. Consequently, rather than providing a teaching away from using an
uncoated blank at the brazed area, as urged by Appellants, we fully concur
with the Examiner that one of ordinary skill in the art would have found it
obvious to eliminate the coating of Nakai for preparing a cutting tool of the
prior art discussed by Nakai, with the reasonable expectation of not
achieving the benefits of the coating espoused by Nakai. It is by now well
settled that the omission of a feature disclosed by the prior art along with its
attendant function or advantage is a matter of obviousness for one of
ordinary skill in the art. In re Thompson, 545 F.2d 1290, 1294 (CCPA
1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Marzocchi, 456
F.2d 790, 793 (CCPA 1972); In re Larson, 340 F.2d 965, 969 (CCPA 1965);
In re Keegan, 331 F.2d 315, 319 (CCPA 1964); In re Porter, 68 F.2d 971,
973 (CCPA 1934). In the present case, Appellants have advanced no
argument, let alone the requisite objective evidence, that eschewing the
coating of Nakai results in anything other than the disadvantages discussed
by Nakai. Nor have Appellants demonstrated that they may eliminate the
coating of Nakai and still produce a comparable cutting tool.
Regarding separately argued claims 45 and 67, which recite a brazed
alloy comprising gold, nickel and palladium, the Examiner properly points
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out that Appellants’ Specification discloses that such a braze alloy was
known in the art at the time of filing the present application, and we find no
error in the Examiner’s legal conclusion that it would have been obvious for
one of ordinary skill in art to use a known braze alloy in preparing the
cutting tool of Nakai. Appellants’ argument with respect to the
unpredictability of the effectiveness of a braze alloy is not supported by
factual evidence.
Turning to the rejection to claims 53-59 and 69-73 over the additional
disclosure of Thysell, we agree with the Examiner that “it would have been
obvious to one of ordinary skill in the art to have formed coating layers such
as the multilayer coatings of Thysell on the compact containing the brazed
blank in order to provide the compact with the desirable properties such as
enhanced adhesion, wear resistance and chemical stability” (Ans. 7, last
sentence). Appellants’ argument that Thysell does not use a braze alloy
misses the thrust of the Examiner’s rejection which cites Nakai for using a
braze alloy.
Concerning Appellants’ separate arguments for claim 56 which recites
a coating layer of titanium aluminum oxycarbonitride, and claim 59 which
recites a coating layer of titanium aluminum nitride, we agree with the
Examiner that Thysell evidences the obviousness of these coating
compositions by teaching that “the coating may be selected from
compositions comprising a metal, oxygen, carbon and nitrogen (col. 3, ln.
51-55).” (Ans. 8, second para.). We observe that Thysell expressly teaches
that the coating may comprise combinations of any number of layers of
compositions comprising a metal, nitrogen, carbon and oxygen where the
metal may be titanium and aluminum (col. 3, ll. 51 et seq.). We note that
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Appellants attach no criticality to the use of the specifically recited
oxycarbonitride and titanium aluminum nitride.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the
Examiner.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting 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)(1)(iv).

AFFIRMED

ls

MR. JOHN J. PRIZZI
CHIEF COUNSEL FOR INTELLECTUAL PROPERTY
KENNAMETAL INC.
P.O. BOX 231
LATROBE PA 15650
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