Ex Parte Rowlett et al

Patent Trial and Appeal Board

Apr 13, 2016

13471398 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/471,398 05/14/2012
27877 7590 04/15/2016
KENNAMETAL INC
Intellectual Property Department
P.O. BOX231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
FIRST NAMED INVENTOR
Don C. Rowlett
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.
K-4154USUS1 1085
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
larry.meenan@kennametal.com
k-corp. patents@kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DON C. ROWLETT and RANDALL W. OJANEN
Appeal 2014-003178 1,2
Application 13/471,398
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 8-14, 16, and 18-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
According to Appellants, "the ... invention pertains to a rotatable
cutting tool that is useful for the impingement of earth strata wherein the
cutting tool body possesses improved design so as to provide for improved
1 Our decision references Appellants' Specification ("Spec.," filed May 14,
2012) and Appeal Brief ("Br.," filed Sept. 16, 2013), as well as the
Examiner's Answer ("Answer," mailed Oct. 28, 2013).
2 Appellants identify Kennametal Inc., as the real party in interest. Br. 3.
Appeal2014-003178
Application 13/471,398
performance characteristics for the rotatable cutting tool." Spec. i1 1. We
reproduce, below, independent claim 1 as representative of the appealed
claims.
1. A rotatable cutting tool for use in impinging earth
strata, the rotatable cutting tool comprising:
a cutting tool body having a central longitudinal axis, the
cutting tool body including a head portion, a collar portion
axially rearward of the head portion, and a shank portion axially
rearward of the collar portion; and
a hard cutting tip affixed to the head portion of the cutting
tool body,
wherein the head portion includes:
a first head section adjacent to an axial forward end
of the head portion, the first head section comprising a
plurality of first side faces wherein adjacent first side faces
meet to form a corresponding plurality of first common
edges; and
a second head section adjacent to an axial rearward
end of the head portion, the second head section
comprising a plurality of second side faces wherein
adjacent second side faces meet to form a corresponding
plurality of second common edges, wherein the plurality
of first side faces are offset from the plurality of second
side faces such that none of the plurality of first common
edges are aligned with any of the plurality of second
common edges.
Br., Claims App.
REJECTION AND PRIOR ART
The Examiner rejects claims 1---6, 8-14, 16, and 18-21 under
35 U.S.C. § 103(a) as unpatentable over Fader (US 2012/0167420 Al, pub.
2
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Application 13/471,398
July 5, 2012) and Bauschulte (US 6,354,771 Bl, iss. ivfar. 12, 2002).
See Answer 2---6.
ANALYSIS
Appellants argue the rejection of claim 1 is in error, essentially,
because "there is no motivation for combining [the references] because these
references teach away from one another[,] and any attempt at modifying
Fader ... with the teachings of Bauschulte ... would destroy the individual
teachings of ... Fader ... and render it inoperable for its intended purpose."
Br. 12. We do not find Appellants' arguments to be persuasive of error, and,
thus, we sustain the rejection.
More specifically, Appellants argue that
[f]irst, it will be easily appreciated that Fader ... and
Bauschulte ... clearly teach away from each other in that Fader
... specifically provides for the aligned faces and edges (e.g.
faces 22, 32[,] and edges 24, 34), whereas Bauschulte ...
provides for offset (i.e.[,] not aiigned) edges and spatiai areas.
Appellant asserts that the distinct and opposite teachings of these
references would not motivate one of ordinary skill in the art to
look at these references and combine the same to obtain the
invention recited in independent [ c ]laim 1.
Br. 13. We are unpersuaded by Appellants' argument, however, inasmuch
as Appellants do not point to anything in either Bauschulte or Fader that
"criticiz[es], discredit[s], or otherwise discourage[s]" the Examiner's
proposed modification of Fader based on the teaching of Bauschulte. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). It is not sufficient for
Appellants to identify differences between Fader and Bauschulte, and rely
on these differences as proof of teaching away. See, e.g., In re Beattie, 974
F.2d 1309, 1312-13 (Fed. Cir. 1992).
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Application 13/471,398
Appellants further argue that "[ s ]econd, any attempt at modifying
Fader ... with the teachings of Bauschulte ... to obtain the invention recited
in independent [ c ]laim 1 ... would destroy the individual teachings of ...
Fader ... and render it inoperable for its intended purpose." Br. 13. First,
we note that many times an obviousness rejection is based on a modification
to a reference, and, thus, Appellants' argument that the Examiner's
modification of Fader "would destroy the individual teachings" of Fader
simply because Fader is being modified is not persuasive of error. In
addition, Appellants' remarks in the Appeal Brief are neither sufficient to
establish that Fader's intended purpose is to "have at least one pair of
opposite sides that are parallel to each other to enable the pick 10 to be
pressed into shape" nor sufficient to establish that this intended purpose
would be destroyed were Fader to be "modified to include the offset edges
and spatial areas (faces) of Bauschulte." Br. 13. See Answer 5.
Based on the foregoing, we sustain the obviousness rejection of
claim 1. Appellants' arguments for each of independent claims 1, 8, and 14
are similar. See Br. 14--15. Appellants argue the remaining, dependent
claims are allowable for the same reasons as the independent claims from
which they depend. See id. at 15. Thus, we also sustain the rejection of
claims 2---6, 8-14, 16, and 18-21.
DECISION
We AFFIRM the Examiner's rejection of claims 1---6, 8-14, 16,
and 18-21under35 U.S.C. § 103.
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Application 13/471,398
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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