Ex Parte Jonsson

Patent Trial and Appeal Board

Feb 22, 2016

12245323 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/245,323 10/03/2008
9629 7590 02/24/2016
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA A VENUE NW
WASHINGTON, DC 20004
FIRST NAMED INVENTOR
Anders JONSSON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
042866-7835 3739
EXAMINER
FRID IE JR, WILLMON
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
02/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@morganlewis.com
karen.catalano@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDERS JONSSON
Appeal2013-008279
Application 12/245,323
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
ANDERS JONSSON (Appellant) seeks our review under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 1-19. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to "cutting tool inserts particularly
for parting or grooving with improved properties and a method of making
the same." Spec. i-f 2. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
Appeal2013-008279
Application 12/245,323
1. Cutting tool insert with an elongated shape with a rake
face and an opposite bottom surface, both with a coating,
wherein
the insert has a length, L, width, W, and height, H, all in
mm, such that L> W + H and that the bottom surface of the insert
is blasted.
Appeal Br. 12.
REFERENCES RELIED ON BY THE EXAMINER
Tagstrom
Ljungberg
US 6,238,147 Bl
US 7,655,293 B2
May 29, 2001
Feb.2,2010
THE REJECTIONS ON APPEAL
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Tagstrom and Ljungberg. 1
ANALYSIS
Claims 1 and 10
The Examiner finds that Tagstrom discloses many of the features of
the tool insert recited in claims 1 and 10, but does not disclose that a rake
face and opposite bottom surface have a coating and that the bottom surface
1 Although the statement of the rejection in the Final Action refers only to
claims 1-17, the body of the rejection also includes treatment of claims 18
and 19. As such, we understand claims 1-19 to be subject to this ground of
rejection.
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Application 12/245,323
is blasted. 2 See Final Act. 2. The Examiner relies on Ljungberg to teach an
insert having a coating and a blasted bottom surface. Final Act. 2-3. The
Examiner finds that blasting reduces the stress level in a material and
produces high coating smoothness, and "Ljungberg discloses blasting a
coated surface wherever it may be on a cutting insert." Final Act. 4. The
Examiner reasons that it would have been obvious to provide the insert of
Tagstrom with a coating and blasted bottom surface in order to reduce
tensile stress and to increase smoothness. Final Act. 3.
Appellant asserts that L jungberg is silent as to coating the bottom
surface of an insert, does not consider blasting the bottom surface, and "is
only concerned with blasting a coating that exists on operative surfaces, e.g.,
the flank and rake faces of [the insert]." Appeal Br. 6. In relation to the
Examiner's reasoning to provide the insert disclosed by Tagstrom with a
smooth surface, Appellant contends that no coating exists on the bottom
surface of the insert taught by L jungberg, and "L jungberg does not consider
that a smooth surface would even be desirable on what is a non-operative
bottom surface." Appeal Br. 6.
In response, the Examiner states, "L jungberg' s teaching in his abstract
does not preclude any surface on an insert." Ans. 5.
Appellant replies that "[ w ]hat the Examiner continues to ignore is that
L jungberg never indicates that low tensile stress and high coating
smoothness would provide any benefit to a non-operative bottom surface,
which would not even come into contact with the material." Reply Br. 7-8.
2 Although not relied upon, we note that Tagstrom teaches "[ t ]he cutting
insert is generally made of coated or sometimes non-coated cemented
carbide." Col. 2, 11. 25-26.
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Application 12/245,323
For the reasons that follow, the Examiner's findings are supported by
a preponderance of the evidence and the reason to combine is supported by
rational underpinnings. We are not persuaded by Appellant's arguments.
Ljungberg is directed to:
A CVD-coated cutting tool insert with a TiCxNy-layer with a
low tensile stress level of 10-300 MPa and an a-AI20 3 -layer
with a high surface smoothness of <0.1 µm as measured by
AFM-technique is disclosed. This is obtained by subjecting
the coating to a first intensive wet blasting operation with a
slurry of F80 grits of Ab03 followed by a second wet blasting
treatment with a slurry of F320 grits of Ab03.
Ljungberg, Abstract (emphases added). Thus, the Examiner's finding that
blasting reduces the stress level in a material and produces high coating
smoothness (Final Act. 4) is supported by a preponderance of the evidence.
Further, although Ljungberg specifically describes providing a CVD 3
coating on a rake face and a clearance face (see col. 2, 11. 49-58), we agree
with the Examiner that Ljungberg does not preclude providing a coating on
any surface of the insert. In this regard, we note Ljungberg also describes
the insert as "being at least partly coated with a from about 2 to about 10 µm
thick coating including at least one layer of TiCxNy and an a- Ab03 -layer
being the outer layer at least on the rake face." Col. 2, 11. 45--48 (emphasis
added). By describing the insert as at least partly coated, Ljungberg implies
that the insert is fully coated in some embodiments. Further, Appellant
provides no persuasive evidence that Ljungberg limits the coating to what
Appellant describes as "operative" surfaces.
As for the Examiner's reasoning for modifying the bottom surface of
the insert taught by Tagstrom as proposed by the Examiner and Appellant's
3 "CVD" refers to Chemical Vapor Deposition.
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Application 12/245,323
assertion that "L jungberg does not consider that a smooth surface would
even be desirable on what is a non-operative bottom surface," we are not
apprised of Examiner error. It is not necessary for Ljungberg to suggest the
modification. Rather, the Examiner's analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court [or examiner] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner reasons that it would
have been obvious to provide the insert of Tagstrom with a blasted bottom
surface in order to reduce tensile stress and to increase smoothness (Final
Act. 4), and this effect of blasting is, as noted above, taught by Ljungberg.
We find that the Examiner's reasoning is based on rational underpinning,
and Appellant does not persuasively explain why the beneficial effects of
blasting (smoothness and reduced stress) would not be desired in the bottom
surface of an insert. Although we have considered all of Appellant's
arguments for the patentability of claims 1 and 10, we are not persuaded that
the Examiner's decision to reject these claims as unpatentable over
Tagstrom and Ljungberg is incorrect, and we sustain this rejection.
Claims 4 and 13
Dependent claim 4 recites, "[the] [ c Jutting tool insert according to
claim 1, wherein the coating on non-blasted coated areas is greater than
about 4 µm thick." Appeal Br. 12. Claim 13 depends from method claim 10
and recites substantially similar features. Appeal Br. 14.
Appellant argues that the Examiner's reasoning (in the rejection of
claim 1 and 10) for determining that it would have been obvious to blast the
bottom surface of the insert precludes also determining that it would have
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Application 12/245,323
been obvious to provide a portion of the coating remaining non-blasted.
Reply Br. 8-9. Specifically, Appellant asserts that the Examiner's finding
that "Ljungberg discloses blasting a coated surface wherever it may be on a
cutting insert" (Final Act. 4) means that "the applied references, whether
taken singly or combined, to fail to disclose or render obvious that a portion
of the coating would remain non-blasted" (Reply Br. 8-9). Thus, Appellant
asserts that there is a contradiction between the Examiner's reasoning in the
rejection of claims 1 and 10 and the Examiner's reasoning in the rejection of
claims 4 and 13.
We do not agree with Appellant's argument. L jungberg does not
require all coated surfaces to be blasted. For example, Ljungberg states,
"[i]f a smooth coating surface is desired also on the clearance face[,]
blasting has to be performed there as well. In this case the TiCxNy layer will
have low tensile stresses both on the rake face and at the clearance side."
Col. 5, 11. 19-22 (emphasis added). Thus, contrary to Appellant's argument,
Ljungberg teaches that blasting provides a benefit, but Ljungberg also
teaches that blasting a surface is optional.
Appellant also argues "the very existence of non-blasted areas would
render the invention of Ljungberg unsatisfactory for its intended purpose
and/or would change Ljungberg's principle of operation if Ljungberg
discloses a need to blast the coating wherever it mav be, as alleged by the
Office Action." Appeal Br. 8-9; Reply Br. 9-10 (citing In re Gordon, 733
F.2d 900 (Fed. Cir. 1984) and Jn re Ratti, 270 F.2d 810, 813 (CCPA 1959)).
We note that the Examiner's proposed modification is to Tagstrom
rather than Ljungberg, and therefore, Appellant's argument as to rendering
Ljungberg unsuitable for its intended use is not commensurate with the
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Application 12/245,323
Examiner's rejection of claims 4 and 13. In any event, contrary to
Appellant's assertion, Ljungberg does not require all surfaces to be blasted
and instead explicitly teaches that some areas may not be blasted.
Accordingly, we are not persuaded by Appellant's arguments on the above-
noted points.
Appellant further asserts that the Examiner's rejection relies on
impermissible hindsight. Reply Br. 10-11. However, after making this
assertion, Appellant does not persuasively explain why the Examiner's
reasoning is inadequate. Accordingly, we are not persuaded by this
argument.
Claim 5
Dependent claim 5 recites, "[the] [ c Jutting tool insert according to
claim 1, wherein the residual stress in the coating of the bottom surface is
less than the residual stress in the coating on the rake face." Appeal Br. 12.
The Examiner finds that in Ljungberg, "the insert is provided with a
CVD and/or MTCVD coating and various ratios of the residual stress
between the elements of the assembly." Final Act. 2. The Examiner states
that providing the stress relationship recited in claim 5 would have been an
expression of ordinary creativity and matter of optimization. Ans. 7.
Appellant argues that "no explanation of how these alleged 'various
ratios' render obvious Appellant's claim features is provided, and no such
various ratios between a bottom surface coating and a rake face coating even
exist." Appeal Br. 9. Appellant contends that although Ljungberg discusses
a difference in stress level between the clearance side coating and a stress
level in the rake face, Ljungberg does not disclose a comparison between the
stress levels of a coating on a bottom surface and a coating on the rake face.
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Application 12/245,323
Appeal Br. 9-10; Reply Br. 11-12. According to Appellant, "Ljungberg
does not disclose the appropriate stress values to 'adjust."' Reply Br. 12. In
this regard, Appellant states, "[t]he claimed 'residual stress in the coating of
the bottom surface is less than the residual stress in the coating on the rake
face' cannot be a result-effective variable because Ljungberg does not even
consider comparing a residual stress in a coating on the bottom surface with
a residual stress in a coating on the rake face." Reply Br. 12.
We are not persuaded by Appellant's argument. L jungberg teaches
controlling the relative stress levels of different surfaces on the coated insert,
although Ljungberg refers to a rake face and clearance face in describing
these relative stress levels. Col. 2, 1. 49---col. 3, 7. See also Ljungberg, claim
1. Appellant does not persuasively explain why the Examiner's
determination that a person of skill in the art, applying ordinary creativity,
would have found it obvious to apply this teaching in Ljungberg to any
surface (including the bottom surface) of an insert is in error. Nor does
Appellant persuasively explain why (given Ljungberg's teaching regarding
stress levels) finding the optimum relationship between these stress levels
would not have been obvious. Accordingly, we sustain the Examiner's
rejection of claim 5 as unpatentable over Tagstrom and Ljungberg.
Appellant does not make separate arguments for any of claims 2, 3, 6-
9, 11, 12, 14--19. Accordingly, these claims fall with claims 1 and 10.
DECISION
The Examiner's decision to reject claims 1-19 is affirmed.
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Application 12/245,323
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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