Ex Parte Liu

Patent Trial and Appeal Board

Dec 10, 2014

12002436 (P.T.A.B. Dec. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/002,436 12/17/2007 Jie Liu 1576-0138 6280
28078 7590 12/11/2014
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
12/11/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JIE LIU
____________________

Appeal 2012-009925
Application 12/002,436
Technology Center 3700
____________________

Before: JOHN C. KERINS, MICHAEL L. HOELTER, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 2–
15. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
The claims are directed to an abrasive coated drill bit and method for
using the bit. Appeal Br. 3–4. Claims 6 and 10, reproduced below, are
illustrative of the claimed subject matter:
6. A method of drilling a hole in a hard surface comprising:
positioning a spherical work portion of an accessory on a
target area of the hard surface;
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rotating the accessory with the rotary tool;
pivoting the spherical portion of the rotating accessory
while positioned on the target area to initiate a bore into the
hard surface at the target area; and
swirling a cylindrical work portion of the rotating
accessory against the hard surface in a conical pattern to drill
the hole.

10. A rotary tool accessory for cutting hard, brittle material,
comprising:
a shaft for coupling with a rotary tool;
a work portion extending outwardly from the longitudinal
axis of the shaft, the work portion including a first functional
area and a second functional area;
a nickel based bonding material affixed to the first
functional area and the second functional area; and
a plurality of abrasive particles extending outwardly of
the bonding material on the first functional area and the second
functional area, wherein each abrasive particle of the plurality
of abrasive particles extends outwardly of the nickel based
bonding material by generally between about 30 percent and
about 55 percent of the abrasive particle.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Greenspan
Kyotani
Fischer
US 4,083,351
US 4,834,655
US 4,929,127
Apr. 11, 1978
May 30, 1989
May 29, 1990

REJECTIONS
Claims 2–5, 7, and 10–15 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Ans. 4.
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Claims 2–5 and 10–15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Greenspan. Id. at 5.
Claims 2–5 and 10–15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kyotani. Id.
Claims 6–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greenspan, alone or in view of Fischer. Id.
Claims 6–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kyotani, alone or in view of Fischer. Id.

ANALYSIS
Indefiniteness Rejection
Claims 2–5, 7, and 10–15
Independent claim 10 recites, inter alia, “wherein each abrasive
particle of the plurality of abrasive particles extends outwardly of the nickel
based bonding material by generally between about 30 percent and about 55
percent of the abrasive particle.” Appeal Br. 35, Claims App. Similarly,
claim 7, which depends from independent claim 6, recites “wherein each of
the plurality of abrasive particles extends outwardly of a nickel based
bonding material by generally between about 30 percent and about 55
percent of the abrasive particle.” Id. at 34, Claims App. The Examiner
contends that the above-quoted subject matter is indefinite, as “it is unclear
how ‘each’ abrasive particle extends outwardly of the nickel base bonding
material between 30-55%.” Ans. 4. The Examiner bases this contention on
Appellant’s Figure 4, which “shows differently sized particles in which
some of the particles are totally immersed within nickel bonding material
and do NOT extend outwardly by [30]-55%.” Id.
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Appellant argues that “nothing in the claims requires every abrasive
particle on the accessory to be a part of the ‘plurality of abrasive particles.’”
Reply Br. 3. “[T]he claims only require that each of the abrasive particles in
the claimed plurality have the claimed characteristic. Thus, the existence of
some particles in FIG. 4 that are not within the claimed plurality of particles
does not contradict the claims.” Id. We find Appellant’s argument
persuasive. The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.
Ct. 2120, 2128 (2014). One of ordinary skill in the art would understand
that the claims at issue require only each of a plurality of particles to have
the claimed characteristic, not each and every particle on the abrasive drill
bit. In other words, those particles that do not have the claimed
characteristic would be understood as not being included in the claimed
plurality of particles.
For the reasons above, we do not sustain the Examiner’s rejection of
independent claim 10 under 35 U.S.C. § 112, second paragraph, as being
indefinite. Further, we do not sustain the Examiner’s rejection of dependent
claims 2–5 and 11–15, which depend directly or indirectly from claim 10,
under 35 U.S.C. § 112, second paragraph, as being indefinite. Also, we do
not sustain the Examiner’s rejection of dependent claim 7, which depends
from claim 6, under 35 U.S.C. § 112, second paragraph, as being indefinite.

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Obviousness Rejection over Greenspan
Claims 10–13
Independent claim 10 recites, inter alia, “a plurality of abrasive
particles . . . wherein each abrasive particle of the plurality of abrasive
particles extends outwardly of the nickel based bonding material by
generally between about 30 percent and about 55 percent of the abrasive
particle.” Appeal Br. 35, Claims App. The Examiner finds that the above-
quoted subject matter would have been a matter of obvious design choice.
Ans. 5.
Appellant argues that the Examiner improperly takes official notice of
this factual finding. Appeal Br. 5–6. This argument fails to address the
Examiner’s rejection—the Examiner does not take Official Notice of this
fact. Instead, the Examiner finds that the claimed subject matter would be a
matter of obvious design choice—that Greenspan discloses the general
subject matter of claim 10 and that discovering the range of extension of
particles from the surface represents discovering a workable range that
“involves only routine skill in the art.” See Ans. 6. Indeed, as Appellant
argues, claim 10 merely requires a plurality of particles (that is, as few as
two particles) to exhibit the recited extension. See Reply Br. 3.
Appellant further contends that “the Examiner has failed to provide
any basis whatsoever for concluding that including a plurality of abrasive
particles which each extend outwardly from a bonding material by about 30-
55 percent would have been a matter of obvious design expedient dependent
upon workpiece and desired cutting action.” Appeal Br. 7. In response, the
Examiner states that:
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The factual basis [supporting the Examiner’s finding] is that
one of ordinary skill knows that the type of abrasive, the size of
abrasive, the shape and amount of exposed abrasive all dictate
the grinding action of the tool and the cutting action when
applied to workpiece, and to vary the degree of outward
extension of the abrasive would be within the level of ordinary
skill.”
Ans. 6–7. Appellant does not inform us of any Examiner error in the
Examiner’s factual finding.
Appellant further argues that the Examiner fails to articulate the
reasons for modifying Greenspan to arrive at a drill bit with a plurality of
particles that extend outwardly of the bonding material by generally between
about 30 percent and about 55 percent of the abrasive particle. Appeal Br. 7.
We find this argument unpersuasive. We recognize that “[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.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Here, the Examiner’s articulated reasoning is
sufficiently supported by a rational underpinning. The Examiner reasons
that the recited range represents an optimum or workable range and that one
of ordinary skill in the art would modify the drill bit of Greenspan depending
“on the workpiece or cutting action desired.” Ans. 6. The Examiner further
reasons that “the shape and amount of exposed abrasive [among other
considerations] dictate[s] the grinding action of the tool and the cutting
action when applied to [a] workpiece, and to vary the degree of outward
extension of the abrasive would be within the level of ordinary skill.” Id. at
7.
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For the reasons above, we sustain the Examiner’s rejection of
independent claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Greenspan. As Appellant does not separately argue the rejection of
dependent claims 11–13, which depend, directly or indirectly, from claim
10, we also sustain the Examiner’s rejection of claims 11–13 under 35
U.S.C. § 103(a) as being unpatentable over Greenspan.

Claim 14
Claim 14 recites, “[t]he accessory of claim 10, wherein: the first
functional area is cylindrically shaped; and the second functional area is
spherically shaped.” Appeal Br. 36, Claims App. (emphasis added). The
Examiner finds that Greenspan discloses the subject matter of claim 14,
citing Figure 2 of Greenspan. Ans. 5. Specifically, the Examiner finds that
“Figure 2 shows a cross section view of drill and show[s] a spherical
portion(s) around the outer circumference.” Id. at 7.
Appellant argues that, as shown in Figure 1 of Greenspan, the
structures depicted in Figure 2 are rounded in a single plane and are not
spherical as required by claim 14. Reply Br. 5. We find this argument
persuasive. As clearly seen in Figure 1 of Greenspan, the structures at the
end of the drill bit referred to by the Examiner are flat, not spherical. See
Greenspan, Figs. 1–2.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Greenspan.
Further, we do not sustain the Examiner’s rejection of claims 2–5, which
depend, directly or indirectly, from claim 14.

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Claim 15
Claim 15 recites, “[t]he accessory of claim 10, wherein the plurality of
abrasive particles comprise diamond particles providing a full
concentration.” Appeal Br. 36, Claims App. (emphasis added). The
Examiner finds that Greenspan discloses an abrasive drill bit that comprises
diamond particles that provide a full concentration. Ans. 6.
Appellant argues that the Examiner fails to identify teachings in
Greenspan that disclose the recited subject matter. Appeal Br. 12; Reply Br.
7. We find this argument unpersuasive. The Examiner finds that the figures
of Greenspan depict an abrasive drill bit with a full concentration of abrasive
particles on the bit. See Ans. 7 (“Greenspan shows spaced particles which
provide full concentration.”) (emphasis added); Greenspan, Figs. 1–2; see
also In re Meng, 492 F.2d 843, 847 (CCPA 1974) (“[A] drawing is available
as a reference for all that it teaches a person of ordinary skill in the art.”).
Appellant fails to apprise us of any error in the Examiner’s finding.
For the reasons above, we sustain the Examiner’s rejection of claim
15 under 35 U.S.C. §103(a) as being unpatentable over Greenspan.

Obviousness Rejection over Kyotani
Claims 10–14 and 2–4
Appellant makes identical arguments as to the Examiner’s rejection of
independent claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Kyotani as are made for the rejection over Greenspan. See Appeal Br. 13–
16. For the reasons presented above in connection with our analysis of the
Examiner’s obviousness rejection of claim 10 over Greenspan, we find these
arguments unpersuasive.
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Accordingly, we sustain the Examiner’s rejection of independent
claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Kyotani. As
Appellant does not separately argue the rejection of dependent claims 11–14
and 2–4, which depend, directly or indirectly, from claim 10, we also sustain
the Examiner’s rejection of claim 11–14 and 2–4 under 35 U.S.C. § 103(a)
as being unpatentable over Kyotani.

Claims 5 and 15
Appellant argues that the Examiner fails to identify teachings in
Kyotani that disclose the recited subject matter of dependent claims 5 and
15. Appeal Br. 17–18; Reply Br. 7. We find this argument unpersuasive.
The Examiner cites to Figure 5 of Kyotani for disclosing the abrasive drill
bit with a full concentration of abrasive particles on the bit. See Ans. 5;
Kyotani, Fig. 5; see also In re Meng, 492 F.2d at 847. Appellant fails to
apprise us of any error in the Examiner’s finding.
For the reasons above, we sustain the Examiner’s rejection of claims 5
and 15 under 35 U.S.C. § 103(a) as being unpatentable over Kyotani.

Obviousness Rejection over Greenspan alone or in view of Fischer
Claims 6–9
Independent claim 6 requires, inter alia, the step of “positioning a
spherical work portion of an accessory on a target area of the hard surface.”
Appeal Br. 33, Claims App. (emphasis added). As discussed above in
connection with our analysis of the Examiner’s obviousness rejection of
claim 14 over Greenspan, we find that Greenspan fails to disclose an
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abrasive drill bit with a spherical work portion. Further, the Examiner fails
to identify any teaching in Fischer to remedy this deficiency.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Greenspan, alone or in view of Fischer. Further, we do not sustain the
Examiner’s rejection of claims 7–9, which directly depend from claim 6,
under 35 U.S.C. § 103(a) as being unpatentable over Greenspan, alone or in
view of Fischer.

Obviousness Rejection over Kyotani alone or in view of Fischer
Claim 6
Claim 6 recites, inter alia, the steps of “pivoting the spherical portion
of the rotating accessory while positioned on the target area to initiate a bore
into the hard surface at the target area; and swirling a cylindrical work
portion of the rotating accessory against the hard surface in a conical pattern
to drill the hole.” Appeal Br. 33, Claims App. (emphasis added). The
Examiner finds that the pivoting and swirling steps are “common
knowledge.” Ans. 7. The Examiner also relies on Fischer for teaching the
pivoting and swirling techniques. Id.
Appellant argues that the Examiner mischaracterizes Fischer. Appeal
Br. 27. Specifically, Appellant argues that the shank section 2a of Fischer’s
drill bit—the cylindrical work portion—does not come in contact with the
work piece. Id. We find this argument unpersuasive. The Examiner is
using Fischer for its disclosure of the pivoting and swirling action. Ans. 6.
The Examiner’s proposed modification relies on the cylindrical work portion
of Kyotani to contact the work piece. Id. at 5. Nonobviousness cannot be
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established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant further argues that Fischer fails to disclose the swirling step
of claim 6. Id. Appellant contends that Fischer discloses pivoting and not
swirling. Id. Appellant explains that pivoting is movement in a single plane
while swirling is movement outside a single plane. Id. We find this
argument unpersuasive. As the Examiner finds,
it is old and well-known to pivot drill tip to start a hole and to
swirl as the drill bites into the workpiece. The rotating of the
drill along with pivoting, as taught by Fisher, would cause the
drill to swirl, as the pivot and rotating are simultaneously taking
place.
Ans. 8. In other words, as disclosed in Fisher, the undercut is made by
pivoting the drill bit in more than one plane to ream out a symmetrical hole.
See Fisher, col. 2, ll. 48–52; see also Fischer, Fig. 1 (depicting, with a dotted
line, a reamed out undercut extending about the bottom of the drill hole).
Appellant also argues that the Examiner fails to support his reasoning
for modifying Kyotani with the teachings of Fischer. Appeal Br. 28. We
find this argument unpersuasive. The Examiner reasons that Fischer teaches
an old and well known technique for drilling holes. See Ans. 8. As the
Supreme Court made clear, “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 that person’s skill.” KSR Int’l Co.,
550 U.S. at 401. The Examiner finds that Fischer’s disclosed technique is an
“old and well-known technique of one of ordinary skill in the art,” that is,
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the disclosed technique’s application to the Kyotani drill bit is not beyond
the level of ordinary skill in the art. See Ans. 8. The Examiner further finds
that the recited technique would have been “common knowledge” to one of
ordinary skill in the art, bolstering the obviousness rejection. See id. at 7.
Appellant fails to rebut this factual finding and we find that the Examiner’s
reasoning is adequately supported by a rational underpinning. See KSR Int’l
Co., 550 U.S. at 418.
Appellant argues against the combination of Fischer and Kyotani by
contending that the device of Fischer in not an abrasive drill bit. Appeal Br.
28. Once again, Appellant improperly attacks Fischer individually, without
considering the Examiner’s combination. As the Examiner makes clear, the
rejection relies on Fischer for teaching the old and well known drilling
technique, not an abrasive drill bit. Ans. 8. Further, claim 6 does not
require an abrasive drill bit. See Appeal Br. 33, Claims App.
Accordingly, we sustain the Examiner’s rejection of independent
claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Kyotani, alone
or in view of Fischer. Further, as Appellant does not separately argue the
rejection of claim 8, which depends from claim 6, we sustain the Examiner’s
rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Kyotani, alone or in view of Fischer. See Appeal Br. 29.

Claim 7
Dependent claim 7 requires “[t]he method of claim 6, wherein . . .
each of the plurality of abrasive particles extends outwardly of a nickel
based bonding material by generally between about 30 percent and about 55
percent of the abrasive particle.” Appeal Br. 34, Claims App. As discussed
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above in connection with our analysis of the Examiner’s obviousness
rejection of claim 10 over Kyotani, the Examiner correctly finds that
configuring an abrasive drill bit such that “each of the plurality of abrasive
particles extends outwardly of a nickel based bonding material by generally
between about 30 percent and about 55 percent of the abrasive particle” is a
matter of design choice within the knowledge of one of ordinary skill in the
art. See Ans. 6.
Accordingly, we sustain the Examiner’s rejection of claim 7 under 35
U.S.C. § 103(a) as being unpatentable over Kyotani, alone or in view of
Fischer.

Claim 9
Dependent claim 9 requires that “pivoting the spherical portion of the
rotating accessory comprises pivoting the rotating accessory to an angle of
at least 15 degrees off of an axis extending perpendicularly to the hard
surface from the target area.” Appeal Br. 34, Claims App. (emphasis
added). The claim further requires that “swirling a cylindrical work portion
of the rotating accessory comprises contacting the bore about the periphery
of the bore while maintaining the accessory at an angle of at least 15
degrees off of the axis.” Id. (emphasis added).
Appellant argues that the Examiner fails to identify any specific
teachings in Fischer as to the angle for swirling the drill accessory. Appeal
Br. 31. The Examiner finds that “[t]he amount of the swirl angle would be
within the level of ordinary skill in the art.” Ans. 8. Appellant fails to rebut
this factual finding.
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Accordingly, we sustain the Examiner’s rejection of dependent claim
9 under 35 U.S.C. § 103(a) as being unpatentable over Kyotani, alone or in
view of Fischer.

DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
2–5, 7, and 10–15 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
For the above reasons, we affirm the Examiner’s rejection of claims
10–13 and 15 under 35 U.S.C. § 103(a) as being unpatentable over
Greenspan.
For the above reasons, we reverse the Examiner’s rejection of claims
2–5 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Greenspan.
For the above reasons, we affirm the Examiner’s rejection of claims
2–5 and 10–15 under 35 U.S.C. § 103(a) as being unpatentable over
Kyotani.
For the above reasons, we reverse the Examiner’s rejection of claims
6–9 under 35 U.S.C. § 103(a) as being unpatentable over Greenspan, alone
or in view of Fischer.
For the above reasons, we affirm the Examiner’s rejection of claims
6–9 under 35 U.S.C. § 103(a) as being unpatentable over Kyotani, alone or
in view of Fischer.

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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

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