Ex Parte Grady et al

Board of Patent Appeals and Interferences

Jan 19, 2010

11473866 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL F. GRADY, JON C. HAMMETT,
STEPHEN G. ROSEBERRY and BRIAN J. SCHWARTZ
____________

Appeal 2009-006793
Application 11/473,866
Technology Center 3700
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Decided: January 19, 2010
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Daniel F. Grady et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of twice-rejected claims 1-11 and 14-21. Original claims 12 and 13
have been canceled, and claim 22 is objected to as being dependent upon a
rejected base claim. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
An oral hearing was conducted via telephone on January 13, 2010,
with William B. Slate, Esq., arguing on behalf of Appellants.
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ invention is directed to a process for point abrasive
machining of a workpiece. Independent claim 1, reproduced below, is
representative of the overall claimed subject matter:
1. A process for point abrasive machining of a
workpiece comprising the steps of:

providing a tool having a tip grinding
surface coated with an abrasive and having a
central tip recess;

installing the tool in a machine tool;

orienting said tool relative to a surface of
said workpiece to be machined so that there is
contact between said surface to be machined and
said grinding surface; and

forming a part by removing material at said
contact by:

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rotating said tool about the central
longitudinal axis; and

translating the tool relative to the workpiece
and off parallel to the longitudinal axis while
machining the workpiece,

wherein:

the tip grinding surfaces [sic] is at least
partially along an annular tip protuberance;

a plurality of additional recesses extend
from the central recess through the tip
protuberance; and

during the machining, the additional
recesses facilitate the evacuation of grinding
debris.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rowley US 3,709,308 Jan. 9, 1973
Diener US 5,803,680 Sep. 8, 1998
Sathianathan US 6,543,991 B2 Apr. 8, 2003

The Examiner has rejected:
(i) claims 1-3, 9-11 and 14-21 as being unpatentable over Diener in
view of Rowley; and
(ii) claims 4-8 as being unpatentable over Diener in view of Rowley
and Sathianathan.
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ISSUE
The Examiner concluded that it would have been obvious to a person
of ordinary skill in the art to employ the abrasive tool configuration
disclosed in Rowley in the machining device and method disclosed by
Diener. Appellants contend that the combination of teachings was made
using hindsight reconstruction, that the reasoning presented is conclusory
and without substantiation, and that the Rowley device is from a totally
dissimilar art than that of Diener and the present invention.
The issue presented on appeal is whether Appellants have
demonstrated that the Examiner erred in combining the teachings of Diener
and Rowley in arriving at the conclusion that the claimed invention would
have been obvious.
PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred);
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
A claim is unpatentable under 35 U.S.C. § 103(a) if, “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.” 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
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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 Int'l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”).
The determination of the scope and content of the prior art includes
determining whether prior art references are “analogous.” The established
precedent of our reviewing court sets up a two-fold test for determining
whether art is analogous: “First, we decide if the reference is within the
field of the inventor’s endeavor. If it is not, we proceed to determine
whether the reference is reasonably pertinent to the particular problem with
which the inventor was involved.” In re Deminski, 796 F.2d 436, 442 (Fed.
Cir. 1986).
ANALYSIS
Claims 1-3, 9-11 and 14-21--Obviousness--Diener in view of Rowley
The Examiner found, with respect to claim 1, that the Diener patent
discloses a method and apparatus that meets all claim limitations with the
exception of a tool having an abrasive-coated tip grinding surface, having a
central recess and a tip protuberance, and having a plurality of additional
recesses facilitating the evacuation of grinding debris. (Answer 4). The
Examiner further found that the Rowley patent discloses a tool having the
characteristics noted above as not being provided on the tool in Diener.
(Id.). Noting that Diener discloses that machining tools can be interchanged
on the disclosed apparatus, the Examiner concluded that it would have been
obvious to provide the grinding method of Diener with the abrasive tool of
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Rowley, “in order to enhance the grinding capabilities”, presumably of the
Diener apparatus. (Id.).
Appellants contend that the apparent reason to combine the teachings
of Rowley with Diener is conclusory and lacks any substantiation of the
asserted enhancement of grinding capabilities. (Appeal Br. 4). Appellants
contend, more generally, that the rejection includes no reasoned analysis and
appears to employ hindsight reconstruction in view of the claimed invention.
(Id.). Further, Appellants posit that the drill bit of Rowley, which is an
earth-boring drill bit, is from a totally dissimilar art than the aerospace
component machining art to which the Diener apparatus and method are
directed, and that the disclosure in Diener that the machining tool is
interchangeable does not, in itself, provide a reason to adopt a bit or tool
configuration from the disparate field. (Appeal Br. 5).
We agree with Appellants that the Examiner’s proffered reason to
combine the teachings is not supported by any rational underpinnings.
Given that the Diener apparatus is directed to the machining of, principally,
metal alloys (Diener, col. 4, ll. 35-37), and that the Rowley drill bit is an
earth-boring tool, it is not readily apparent that a person of ordinary skill in
the machining art would recognize that any particular enhancement in the
machining of alloys would be attained by employing a drill bit designed to
bore through geological formations. In this regard, for example, the
rejection contains no analysis or comparison of the properties of the
materials being worked on in the respective references so as to substantiate
that the Rowley drill bit would be recognized as being suitable for
machining alloys. The rejection further does not identify how or in what
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regard the grinding capabilities would be enhanced by employing the
Rowley drill bit in the Diener apparatus and method.
The Examiner responds to Appellants’ contentions that the cited
references are drawn from two disparate fields of art by stating that:
[b]oth inventions teach using a machine with a bit
in order to remove unwanted material . . . the
teachings of Rowley was [sic] cited to teach the
limitations of the structure of the tool, and not for
the drilling or grinding process. The Diener
reference teaches that his machining can be done
with various types of machining tools, and a
diamond coated abrasive drill bit could definitely
be used in various machining methods.
(Answer 6-7).
The first assertion, while generally accurate on a conceptual level
(although Diener does not expressly disclose the use of a bit), is a grossly
oversimplified finding as to the scope of the relevant art under a Graham
analysis. If we were to accept that characterization as the basis for holding
that the Rowley reference is within the field of Appellants’ endeavor, then so
would be virtually any drill or cutting implement, regardless of what
material is being worked on and regardless of the conditions of the working
environment. Boring through geological formations is simply not within the
field of machining workpieces to form parts, as claimed. To the extent that
the statement was intended to aid in establishing that the Rowley reference is
reasonably pertinent to the particular problem with which Appellants were
involved, the rejection provides no correlation between a problem faced by
Appellants, and how any particular features of the Rowley drill bit would be
regarded as being reasonably pertinent to such problem.
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The further statement that Rowley was cited as teaching the
limitations of the structure of the tool, and not for the drilling or grinding
process, evidences that no attempt was made to correlate a problem faced by
Appellants to a possible solution provided by the Rowley drill bit.
Moreover, the statement creates an apparent conflict in the Examiner’s
position, in that the stated reason as to why it would have been obvious to
combine the teachings is that the modification would enhance the grinding
capabilities of the Diener process. If the Examiner is abandoning that
contention, then not only are there no rational underpinnings evident, there
would be no proffered reason to combine the teachings.
Finally, the assertion that “a diamond coated abrasive drill bit could
definitely be used in various machining methods”, without more, falls short
of establishing that it would have been obvious to employ the Rowley bit in
the Diener apparatus. Considerations such as the properties of the material
that is to be machined or drilled and the operating environment would have
to be taken into account, as noted above, as would the particular
configuration of the drill bit. As but one example here, in Rowley, the
material that is cut by the diamond chips within the central recess of the
Rowley bit is apparently moved out of the recess to the exterior of the bit by
the flow of a pressurized drilling fluid exiting the central passage of the drill
bit. Were the Rowley bit configuration employed in the Diener apparatus,
we question whether Diener would require further modification to provide
for a flow of cutting fluid though the center of the bit in order to flush out
the machined material from the central recess. The conclusory statement
above does not address this and other significant considerations of this type.
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Appellants’ arguments persuade us that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) over Diener in view of Rowley,
in that the reason for combining the teachings of Rowley with Diener is not
supported with rational underpinnings. The rejection of claim 1, and of
claims 2, 3, 9-11 and 14-21, which are rejected on the same grounds, will
not be sustained.
Claims 4-8--Obviousness--Diener in view of Rowley and Sathianathan
The Examiner relied on the Sathianathan patent as disclosing
limitations set forth in claims 4-8, which depend from claim 1. The
Sathianathan patent does not remedy the deficiencies of the Diener and
Rowley patents in rendering obvious the claimed invention. The rejection of
claims 4-8 will thus not be sustained.
CONCLUSION
Appellants have established that the Examiner erred in rejecting
claims 1-3, 9-11, and 14-21 as being unpatentable over the Diener and
Rowley patents, and in rejecting claims 4-8 as being unpatentable over
Diener, Rowley, and Sathianathan.
DECISION
The decision of the Examiner to reject claims 1-11 and 14-21 is
reversed.
REVERSED

Klh

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