Ex Parte ReinekeDownload PDFPatent Trial and Appeal BoardJul 1, 201311776152 (P.T.A.B. Jul. 1, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/776,152 07/11/2007 Leland M. Reineke REINEKE-1001 R 6283 7733 7590 07/01/2013 WALKER & JOCKE 231 SOUTH BROADWAY STREET MEDINA, OH 44256 EXAMINER HOOVER, MATTHEW ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 07/01/2013 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 LELAND M. REINEKE ____________________ Appeal 2012-002748 Application 11/776,152 Technology Center 1700 ____________________ Before TERRY J. OWENS, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002748 Application 11/776,152 2 Appellant seeks relief under 35 U.S.C. § 134(a) from the Examiner’s final rejection1 of Claims 1-12, 22, 23, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 STATEMENT OF THE CASE The invention relates to a method of producing diamond or cubic boron nitride tipped cutting tools using a graphite electrical resistance heater tube during sintering and bonding diamond or cubic boron nitride particles to metal carbide substrates. Spec. 1:7-10. The heater tube comprises a plurality of layers of expanded graphite foil which are compressed together. Id. at 3:11-12. The layers of the graphite foil may be compressed a sufficient amount (e.g. 30% or more decrease in the longitudinal length of the layers) to create folds. Id. at 6:14-18. The Specification theorizes that these folds increase the electrical resistance of the heater tube “because electrical current travels through sections of the graphite that are perpendicular to the original sheet direction or against the grain.” Id. 6:18- 21. Independent claim 1, set forth below, is illustrative of the subject matter on appeal: 1. A method for making a substrate supported compact comprising: 1 Final Office Action mailed January 7, 2011. 2 Our decision refers to Appellant’s Appeal Brief (App. Br.) filed June 6, 2011, the Examiner’s Answer (Ans.) mailed September 13, 2011, and Appellant’s Reply Brief (Reply Br.) filed November 11, 2011. Appeal 2012-002748 Application 11/776,152 3 a) forming a heater tube assembly by loading a heater tube to include therein at least one substrate and a plurality of crystalline particles positioned adjacent the at least one substrate, wherein the heater tube includes a cylindrical wall, wherein the cylindrical wall of the heater tube is comprised of a plurality of wound layers of at least one expanded graphite foil sheet, which plurality of layers include a plurality of folds that are compressed together; and b) applying sufficient levels of pressure to the heater tube assembly and a sufficient level of electrical current to the heater tube assembly for a sufficient amount of time to produce from the crystalline particles a compact layer that is bonded to the at least one substrate. App. Br., Claims App’x. (italics added). The Rejections The Examiner maintains, and Appellant appeals, the following rejections under 35 U.S.C. § 103(a): 1.) claims 1-2 and 7-9 as unpatentable over Appellant Admitted Prior Art3 in view of Pope4 and further in view of Ozaki5; 2.) claims 3-6 and 10-12 as unpatentable over AAPA in view of Pope and Ozaki, and further in view of Marrocco6; 3.) claims 22-23 as unpatentable over AAPA in view of Pope and Ozaki, and further in view of Marrocco and Dohi7; and 3 Appellant Admitted Prior Art, hereinafter “AAPA”, disclosed in pages 1 and 2 of Appellant’s Specification. 4 US 2005/0110187 A1, published May 26, 2005. 5 US 6,116,611, issued September 12, 2000. 6 US 5,976,437, issued November 2, 1999. 7 US 5,135,893, issued August 4, 1992. Appeal 2012-002748 Application 11/776,152 4 4.) claims 25-26 as unpatentable over AAPA in view of Pope and Ozaki, and further in view of Dohi. The Issue Presented The dispositive issue before us on appeal is whether the Examiner reversibly erred in finding Pope teaches a heater tube comprised of a plurality of layers of graphite and finding Ozaki teaches a tube having plural graphite layers including a plurality of folds that are compressed together, thereby supporting the conclusion that Appellant’s claimed invention would have been obvious to one of ordinary skill in the art. We answer this question in the affirmative and therefore reverse the Examiner’s rejections of the claims as unpatentable over AAPA in view of Pope and Ozaki, alone or further taken with Marrocco and/or Dohi. ANALYSIS The Examiner finds AAPA discloses “it is known to make polycrystalline diamond cutting tools by placing within a machined graphite heater tube, a substrate such as a metal carbide shank and an unsintered mass of abrasive crystalline diamond or CBN particles adjacent the substrate.” Ans. 4. The Examiner also finds The resulting heating tube is then placed in a shaped cavity of a high- pressure cell, which is placed within a high pressure press. The entire assembly is compressed under high pressure and an electrical current is applied to produce sufficiently high pressures and temperatures to affect intercrystalline bonding between adjacent grains of the abrasive particles joining of the sintered particles to the metal carbide substrate. Id. at 4-5. The Examiner acknowledges AAPA does not teach the heating tube is constructed from a plurality of layers from at least one expanded Appeal 2012-002748 Application 11/776,152 5 graphite foil. Id. at 5. Instead, the Examiner finds Pope teaches use of a graphite heater tube comprising a plurality of layers of graphite material. Id., referring to Pope, Fig. 8, element 84, [0232], and [0323]-[0325]. The Examiner concludes it would have been obvious to one of ordinary skill in the art construct the AAPA heater tube of a plurality of compressed graphite layers in order to increase the strength and other heat transfer properties of the tube as taught by Pope. The Examiner then finds Ozaki teaches it is known to fold a graphite sheet into a plurality of layers, bend the layers into a tube shape, and compress the layers together. Ans. 6. Therefore, the Examiner concludes it would have been obvious to have used Ozaki’s tube forming process to form the AAPA heater tube because doing so “predictably would create a tubular packing for high temperature use.” Id. Appellant argues the applied prior art fails to disclose or suggest a “heater tube is comprised of a plurality of wound layers of at least one expanded graphite foil sheet, which plurality of layers include a plurality of folds that are compressed together.” App. Br. 12. For example, Appellant argues “nowhere does Pope disclose or suggest the cylindrical wall of the heater tube is comprised of a plurality of wound layers of at least one expanded graphite foil sheet, with a plurality of folds that are compressed together.” Id. Appellant contends Pope, paragraph [0232], refers to bisque molds/containers, but does not teach or suggest such are comprised of a plurality of wound graphite layers compressed together or are capable of receiving a sufficient level of electrical current to facilitate sintering of crystalline particles. Id. at 13. In addition, Appellant notes Pope’s element 84 in Figure 8 refers to containment cans comprised of refractory metal, not Appeal 2012-002748 Application 11/776,152 6 graphite nor of a plurality of layers of at least one expanded graphite foil compressed together. Id. at 14. As to Ozaki, Appellant contends Ozaki is directed to a tubular packing used in an automobile exhaust pipe and is non-analogous art. Id. Further, Appellant argues Ozaki merely shows a graphite sheet with a single fold and therefore fails to disclose or suggest a plurality of folds that are compressed together. Id. at 15-16. We have considered the respective positions clearly articulated by the Examiner and Appellant, and find a preponderance of the evidence favors Appellant. We note the Examiner’s position is that Figure 8 shows plural graphite layers identified as element 84. However, Pope teaches Figures 7 and 8 depict a spherical, multilayered powder load within a pair of containment cans 84 whose open ends overlap. Pope [0216]. As can be seen from Figures 7 and 8, Figure 8 is a transverse cross-section of Figure 7 wherein the overlapping ends of the hemispheric containment cans in Figure 7 appear as the two elements 84 in Figure 8. Pope, Figs. 7 and 8. Accordingly, the Examiner erred in finding Pope teaches a heating tube comprised of plural graphite layers. In addition, in response to Appellant’s argument that Ozaki fails to teach or suggest plural folds, the Examiner finds Ozaki teaches that the sheet is both folded and then curved thereby producing both a fold and a curve to “make a plurality of folds.” Ans. 16. While Ozaki does indeed teach producing both a fold and a curve in a graphite foil sheet to arrive at a multilayered graphite tube, we find the Examiner’s characterization of the fold and curve as a plurality of folds is erroneous. Ozaki teaches a single fold in the graphite sheet, but the curve into the cylindrical shape is not also Appeal 2012-002748 Application 11/776,152 7 a fold. Ozaki, Figures 9 and 10. The Examiner fails to find any other disclosure of Ozaki suggests plural folds, nor do we find any. The Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be made explicit.”); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”), quoted with approval in KSR, 550 U.S. at 418. We find the Examiner has not supplied the requisite rational underpinning to support the obviousness conclusion for the reasons set forth above. Accordingly, we cannot sustain the Examiner’s obviousness rejections based upon the combination of AAPA, Pope and Ozaki. The remaining obviousness rejections each build upon this combination, adding Marrocco and/or Dohi. The Examiner does not rely on either of these additional references to remedy the deficiencies noted above. It follows therefore that we cannot sustain these remaining rejections as well. CONCLUSION For the foregoing reasons, we find that the Examiner has failed to establish the combination of AAPA, Pope and Ozaki, even taken with Marrocco and Dohi make obvious the claimed invention to one of ordinary Appeal 2012-002748 Application 11/776,152 8 skill in the art. We therefore reverse the 35 U.S.C. § 103 rejections of Claims 1-12, 22, 23, 25, and 26. REVERSED bar Copy with citationCopy as parenthetical citation