Ex Parte Sung et alDownload PDFPatent Trial and Appeal BoardNov 15, 201712444368 (P.T.A.B. Nov. 15, 2017) Copy Citation 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. 12/444,368 04/03/2009 Wook Jung Sung 1785.011 8459 23598 7590 11/17/2017 BOYLE FREDRICKSON S.C. 840 North Plankinton Avenue MILWAUKEE, WI 53203 EXAMINER SWINNEY, JENNIFER B ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): docketing @boylefred.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOOK JUNG SUNG and IN SIK SUNG Appeal 2016-000617 Application 12/444,368 Technology Center 3700 Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-000617 Application 12/444,368 STATEMENT OF THE CASE Appellants Wook Jung Sung and In Sik Sung1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final Office Action dated September 23, 2014 (“Final Act.”), rejecting claims 1, 3—5, 10- 13, and 16—18.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The claims are directed to a cutting insert for high-efficient cutting. Claim 1, the only independent claim on appeal, is reproduced below with disputed limitations italicized for emphasis: 1. A cutting insert for high-efficiency cutting, including an upper surface, a lower surface, side surfaces for connecting the upper surface and the lower surface to each other, and comer side surfaces for connecting the side surfaces to each other in rounded shapes, with a circular opening formed through central portions of the upper and lower surfaces, the cutting insert comprising: cutting edges formed by respective junctions between one of the upper and lower surfaces and the side surfaces and between one of the upper and lower surfaces and the comer side surfaces consisting of three comer side surfaces, the cutting edges comprising: comer side cutting edges consisting of three comer side cutting edges corresponding to the three comer side surfaces respectively, three major cutting edge pairs, each pair including major cutting edges extending from opposite ends of the comer side cutting edges towards neighboring comer side cutting edges, 1 Appellants identify Kolroy, Inc. as the real party in interest. Appeal Brief, dated February 23, 2015 (“Appeal Br.”), at 3. 2 Claims 2, 6—9, 14, and 15 are withdrawn from consideration. Appeal Br. 2; Final Act. Office Action Summary. 2 Appeal 2016-000617 Application 12/444,368 three minor cutting edges connecting the major cutting edges, wherein the major cutting edges are longer than the minor cutting edges, and six boundary cutting edges, each boundary cutting edge positioned between one of the three minor cutting edges and a respective one of the three major cutting edges at the junction between a boundary edge and one of the upper and lower surfaces, the boundary edge forming a junction between the upper and lower surfaces. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: US 4,288,179 Sept. 8, 1981 US 6,709,205 B2 Mar. 23, 2004 US 7,452,167 B2 Nov. 18, 2008 US 7,549,825 B2 June 23, 2009 Kruger Morgulis Nishio Wermeister REJECTIONS The Examiner made the following rejections: 1. Claims 1, 3—5, 10-13, 16, and 17, as amended on August 1, 2013 and August 8, 2014, are objected to under 35 U.S.C. 132(a) because they contain new matter. 2. Claims 1, 3—5, 10-13, 16, and 17 stand rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 3. Claims 1, 3—5, 10-13, 16, and 17 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 4. Claims 1, 3, 10, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgulis. 3 Appeal 2016-000617 Application 12/444,368 5. Claims 1, 3—5, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgulis and Nishio. 6. Claims 1,3, and 10—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgulis and Wermeister. 7. Claims 1, 3, 10, 11, 13, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgulis and Kruger. Appellants seek our review of these rejections. DISCUSSION The Objection to Claims 1, 3—5, 10—13, 16, and 17 as Adding New Matter The Examiner objects to claims 1, 3—5, 10-13, 16, and 17, as amended on August 1, 2013 (and slightly modified on August 8, 2014), under 35 U.S.C. § 132(a) because they add new matter to the disclosure. Final Act. 2. Ordinarily, an objection is petitionable, and a rejection is appealable to the Board. However, when the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. See Manual of Patent Examining Procedure (MPEP) § 2163.06, II. Review of New Matter Objections and/or Rejections (9th ed., Rev.07.2015, October 2015); MPEP § 608.04(c); 35 U.S.C. § 134(a); and 37 C.F.R. § 1.181(a)(1). According to the Examiner, the italicized phrases in the two limitations “comer side surfaces consisting of three comer side surfaces” and “the comer side cutting edges consisting of three comer cutting edges” in independent claim 1 are new matter, which is not supported by the original disclosure. Final Act. 2; see also id. at 3. The Examiner contends that the pending application has “nine comer cutting edges,” wherein “fslix of the comer cutting edges are boundary edges 128, which per the 4 Appeal 2016-000617 Application 12/444,368 specification (Para 0047) have a radius of curvature, thus creating a rounded cutting comer,” and the “remaining three comer cutting edges are [comer cutting edge] 122.” Id. at 2 (emphasis added). The Examiner concludes that “the claims are inconsistent with the original disclosure because the comer side cutting edges ‘consists’ of more than what is recited [i.e., three comer cutting edges].” Id. Appellants assert that Examiner’s objection is erroneous. We agree. According to Appellants, “the Examiner’s assertion that the boundary edges, which are clearly defined in both the application and claims as being different from the comer edges, can be considered to be comer edges based on having a radius of curvature is improper.” Appeal Br. 8. As Appellants correctly state, the Specification discloses “three elements defined as being comer side surfaces 116 and three elements defined as being comer cutting edges 122 on each of the upper and lower surfaces 110a and 110b,” and “[n]othing in the figures or the specification states that the boundary cutting edges are defined as being comer cutting edges.” Id. (citing Spec. Figs. 1, 2, and 144). The Examiner’s finding that the Specification discloses “nine” comer cutting edges is inconsistent with the Specification, which discloses that the boundary edges are different from the “three” comer cutting edges 122 and three comer side surfaces 116. See, e.g., Spec. ^fl[ 37, 38, 43, 44, Figs. 1, 2. The Examiner’s objection to claims 1, 3—5, 10-13, 16, and 17 is not sustained. 5 Appeal 2016-000617 Application 12/444,368 The Rejection of Claims 1, 3—5, 10—13, 16, and 17 as Failing to Comply with the Written Description Requirement Repeating the objections to claims 1, 3—5, 10—13, 16, and 17, the Examiner’s rejection asserts that the italicized phrases in the two limitations “comer side surfaces consisting of three comer side surfaces” and “the comer side cutting edges consisting of three comer cutting edges” in independent claim 1 are new matter because it conflicts with the Specification. Final Act. 3; Ans. 3. As discussed above, the Specification discloses three comer cutting edges 122 and three comer side surfaces 116. Thus, the rejection is not sustained. The Rejection of Claims 1, 3, 5, 10—13, 16, and 17 as Being Indefinite With respect to claim 1, the Examiner determines that “it is not clear what weight should be given to the phrase ‘corner side surfaces consisting of three comer side surfaces [] and ‘the corner side cutting edges consisting of three comer side cutting edges [] ’ since it conflicts with the specification” (Final Act. 3), and “according to the disclosed Figures, there are six comer side surfaces (116, 126) and nine comer side cutting edges (122, 128)” (Ans. 3^4 (emphasis added)). As discussed above, the Specification discloses three comer cutting edges 122 and three cutting side surfaces 122, not six comer side surfaces and nine comer cutting edges 122, 128, as asserted by the Examiner. In light of this disclosure, we determine that claim 1 is not indefinite. With respect to claims 3 and 18, the Examiner finds that the phrase “a length of the junction ... is indefinite because ‘a length of a junction’ has not been defined between any corresponding structures” and “it is unclear 6 Appeal 2016-000617 Application 12/444,368 how the ‘length of the junction’ is defined.” Ans. 4; Final Act. 4. According to the Examiner, it is also “unclear if applicant is trying to claim the length of the boundary cutting edges is greater than the length of the comer side cutting edges or the length of the comer side cutting edges is greater than the length of the boundary cutting edges.” Ans. 4. In response to the rejection, Appellants argue that one of ordinary skill in the art would recognize that “the claim limitation of claim 3 defining a boundary edge having a predetermined curvature along the length of the junction between the upper and lower surfaces defined a boundary edge that has a curvature along the entire length of the junction between the upper and lower surfaces.” Appeal Br. 11. With respect to claim 18, Appellants argue that the length of the junction between the upper and lower surfaces is greater at the boundary cutting edges than the length of the junction between the upper and lower surfaces at the comer side cutting edges simply means that the distance between the upper and lower surfaces is greater between a boundary cutting edge on the upper surface and a boundary cutting edge on the lower surface than it is between a comer side cutting edge on the upper surface and a comer side cutting edge on the lower surface. Id. at 11—12. We agree. For the reasons above, the rejection of claims 1,3,5, 10-13, 16, and 17 is not sustained. 7 Appeal 2016-000617 Application 12/444,368 The Rejection of Claims 1, 3, 5, 10—13, and 16—18 Claims 1,3, 10, 11, and 18 The Examiner finds that the Morgulis discloses all of the limitations of claims 1, 3, 10, 11, and 18. Final Act. 5—8; Ans. 15—17. The Examiner’s annotated Figure 4 of Morgulis is presented below: comer side edge Ans. 16. The Examiner’s annotated Figure 4 depicts the Examiner’s findings regarding the location of the recited comer side cutting edge, major cutting edge, boundary edge, and minor cutting edge. 8 Appeal 2016-000617 Application 12/444,368 Appellants contend that the Examiner’s rejection is erroneous. Appellants argue, in part, that Morgulis does not support the Examiner’s finding that Morgulis’ cutting edge 72 defines multiple elements in claim 1, including a major cutting edge, a minor cutting edge, and a boundary edge between the major and minor cutting edge. Appeal Br. 12—13. We agree. Morgulis discloses that cutting edge 72 has a “radius of curvature” which means that cutting edge 72 is a single, continuous convex edge. See, e.g., Morgulis Fig. 3—4, 6:3—6 (“first cutting edge 72 is convex and has a relatively large radius of curvature”). Because the cutting edge 72 has a “radius of curvature,” the Examiner’s finding that the cutting edge 72 “has a first and second slope” defining a “boundary edge between the two slopes” is not supported by Morgulis. Ans. 15. In view of this erroneous finding by the Examiner, there is no persuasive reason for the Examiner to delineate Morgulis’ continuous cutting edge 72 into a major cutting edge and a minor cutting edge, as best shown in annotated Figure 4 above. Contrary to the Examiner’s findings, Morgulis’ cutting edge 72 does not disclose a structure having a “boundary edge” separating a “major cutting edge” and a “minor cutting edge,” as recited in claim 1. Thus, the rejection of claim 1, and claims 3, 10, 11 and 18, which depend from claim 1, as anticipated by Morgulis is not sustained. Claims 4, 5, 12, 13, 16, and 17 Because the Examiner does not contend that other prior art (i.e., Nishio, Kruger, and Wermeister in Rejections 4—6) remedy the deficiencies 9 Appeal 2016-000617 Application 12/444,368 of Morgulis, the rejections of claims 4, 5, 12, 13, 16 17, which also depend from claim 1, are not sustained. DECISION For the above reasons, the Examiner’s rejections of claims 1, 3—5, 10— 13, and 16-18 are REVERSED. REVERSED 10 Copy with citationCopy as parenthetical citation