Ex parte Tank

Board of Patent Appeals and Interferences

Feb 23, 2001

08672440 (B.P.A.I. Feb. 23, 2001)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS TANK
____________

Appeal No. 1999-2735
Application No. 08/672,440
____________

HEARD: JANUARY 10, 2001
____________

Before FRANKFORT, NASE, and LAZARUS, Administrative Patent
Judges.

LAZARUS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 12, which are all of the claims
pending in this application.

We reverse.
Appeal No. 1999-2735 Page 2
Application No. 08/672,440

BACKGROUND
The appellant's invention relates to tool components
(specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's brief.

THE PRIOR ART
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Olmstead et al. (Olmstead) 5,472,376 Dec. 5, 1995

Adia et al. (Adia) EP 0 659 510 A1 Jun. 28, 1995
(European Patent
Application)

THE REJECTION

Claims 1 through 12 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Olmstead in view of Adia.

Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
6, mailed March 16, 1998) and the answer (Paper No. 11, mailed
December 22, 1998) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 10,
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Application No. 08/672,440

filed September 25, 1998) and reply brief (Paper No. 12, filed
February 24, 1999) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.

Claim 1 reads as follows:
1. A tool component comprising an abrasive compact having a
flat working surface presenting a cutting edge around its
periphery and an opposite surface bonded to a cemented
carbide substrate along an interface, a recess extending
into the cemented carbide substrate from the interface
filled with abrasive compact and having a central portion
and an outer portion, shallower than the central portion,
which defines, in plan, at least one substantially wedge-
shaped configuration, the configuration having a narrow end
coincident with a side surface of the component and sides
extending into the component and diverging from the narrow
end.

Olmstead discloses tool components comprising a composite
abrasive compact which consist of an abrasive compact layer
Appeal No. 1999-2735 Page 4
Application No. 08/672,440

bonded to a substrate which is generally a cemented carbide
substrate (column 1, lines 4-8). As stated in the SUMMARY OF
THE INVENTION "a tool component comprises ... a recess
extending into the substrate from the interface, the recess
having a side wall and a base located entirely within the
carbide substrate" (column 1, lines 41-51). In the subsequent
DESCRIPTION OF EMBODIMENTS it is further disclosed that "[t]he
material-filled recess has a side wall and a base which are
both located entirely within the carbide substrate. This
means that the entire side wall and the base will be provided
and defined by the carbide substrate" (column 2, lines 7-10).
Olmstead's Figs. 1 and 2 show the tool component comprising a
cemented carbide substrate (12) having a recess (20) with side
walls (22) and a base (24) entirely located within the carbide
substrate and filled with an abrasive compact layer (10) (col.
3, lines 13-19, Figs. 1 and 2). In Figs. 5 and 6, the
embodiment relied on by the examiner, a recess (40) extends
into a substrate (32) from an interface (34). The recess (40)
is disc-shaped having side walls (42) and one step (44a).

Appeal No. 1999-2735 Page 5
Application No. 08/672,440

Adia teaches a tool component having an abrasive compact
layer (10) bonded to a cemented carbide substrate (12) having
a recess, filled with abrasive compact, which is V-shaped (20)
in plan (Fig. 1) or cross-shaped (40) in plan (Fig. 3).
Adia's recess (20) extends to the periphery where the
intersection of the V-shape, portion (21), "is coincident with
the periphery of the carbide substrate (12)" (column 3, lines
41-43).

Based on our analysis and review of Olmstead and claim 1,
it is our view that the only difference is that Olmstead's
recess does not have, as recited in claim 1, a central portion
and an outer shallower portion which defines, in plan, at
least one substantially wedge-shaped configuration... having a
narrow end coincident with a side surface of the component and
sides extending into the component and diverging from the
narrow end. With regard to this difference, the examiner
determined that it would have been obvious to one having
ordinary skill in the art at the time the invention was made
to utilize an outer portion comprising a wedge-shaped
configuration with the abrasive composite tool of Olmstead, as
Appeal No. 1999-2735 Page 6
Application No. 08/672,440

taught by Adia since such a modification would have reduced
the overall processing time and increased machining efficiency
(answer, page 4). The appellant argues that the combination
proposed by the examiner is based on hindsight (brief, page
13) and that any combination of the two references would not
lead to the claimed tool component (brief, page 14).

Although the examiner proposes that the combined
teachings of Olmstead and Adia render the claimed structure
obvious under 35 U.S.C. § 103, we do not find any teaching or
suggestion of how the V-shape (or cross-shape) recess (20, 40)
of Adia would be combined with Olmstead to arrive at the
subject matter of the appellant's claim 1. The examiner
suggests that one of ordinary skill could have modified step
(44a) of Olmstead's embodiment of Figs. 5 and 6 with Adia's
wedge-shaped configuration. However, it is our view that
incorporating Adia's V-shape recess (20), which has a portion
(21) coincident with the periphery of the carbide substrate
(12), into Olmstead's shallow recess portion is contrary to
Olmstead's teaching that "the recess is surrounded by carbide
and is located entirely within the carbide substrate" (column
Appeal No. 1999-2735 Page 7
Application No. 08/672,440

3, lines 14-16). Olmstead repeats this requirement in
slightly different ways five times in his patent (the
Abstract; column 1, lines 41-51; column 2, lines 7-10; column
3, lines 14-16; and, claim 1). It is our opinion that
Olmstead's requirement that "the recess is surrounded by
carbide and is located entirely within the carbide substrate"
would have precluded an artisan from applying Adia's V-shaped
recess which extends so that it is coincident with the
periphery of the carbide substrate to Olmstead's tool
component, especially since Adia does not teach or suggest any
benefit from extending the V-shaped recess to be coincident
with the periphery of the carbide substrate.

We also note that Adia teaches the V-shape recess (20) to
be in the deepest part of the recess (Fig. 2) whereas claim 1
on appeal recites that the recess portion that is
substantially wedge-shaped in configuration and filled with
abrasive compact is the "outer portion, shallower than the
central portion." For these reasons we do not find any
teaching or suggestion to incorporate Aida's V-shape (or
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Application No. 08/672,440

cross-shape) recess which extends to the periphery of the
carbide substrate into the shallower recess portion of
Olmstead's recess which is surrounded by the carbide substrate
and does not extend to the periphery.

Accordingly, we do not see in either Adia or Olmstead any
basis for their combination in the manner suggested by the
examiner to arrive at the claimed subject matter and we can
only conclude that the examiner's finding, in this regard, is
based on impermissible hindsight.1

It is our opinion that the combined teachings of Olmstead
and Adia would not have suggested the subject matter recited
in claim 1 to one of ordinary skill in the art and we will not
sustain the examiner's rejection of claim 1 or of claims 2
through 12 which include the limitations of claim 1.

1 Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor. See Para-Ordnance Mfg. v. SGS
Importers Int'l, 73 F.3d 1085, 1087, 37 USPQ 2d 1237, 1239 (Fed. Cir. 1995)
(citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984)).

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Application No. 08/672,440

CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 12 under 35 U.S.C. § 103(a) is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )

rbl/ki

Appeal No. 1999-2735 Page 9
Application No. 08/672,440

LEOPOLD PRESSER ESQ
SCULLY SCOTT MURPHY PRESSER
400 GARDEN CITY PLAZA
GARDEN CITY, NY 11530