Kennametal Inc.

Patent Trials and Appeals Board

Feb 4, 2021

2020000462 (P.T.A.B. Feb. 4, 2021)

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.
14/694,791 04/23/2015 Naveen KONDAMEEDI K-5955USUS1 1310
27877 7590 02/04/2021
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX 231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
EXAMINER
PARVINI, PEGAH
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/04/2021 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):
k-corp.patents@kennametal.com
larry.meenan@kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAVEEN KONDAMEEDI,
FABIAN ROSENBERGER, and CHRISTOPH GEY
____________

Appeal 2020-000462
Application 14/694,791
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5–16, 29–32, and 35–49. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Kennametal, Inc. as the real party in
interest. Appeal Br. 3.
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The invention “relates to cutting tools employing refractory materials
and, in particular, to cutting tools having refractory surface microstructures
and/or surface nanostructures by exposure to ablative laser radiation.” Spec.
1. Claim 1 illustrates the invention:
1. A cutting tool comprising:
at least one cutting edge formed by intersection of a flank
face and a rake face, the flank face formed of a refractory
material comprising radiation ablation regions defining at least
one of surface microstructures and surface nanostructures,
wherein surface pore structure of the refractory material is not
occluded by the surface microstructures and surface
nanostructures, and the surface microstructures and surface
nanostructures are selected from the group consisting of
nodules and ridges.
Appeal Br. 11 (Claims App.).

Independent claim 29 recites a cutting tool that differs from the one
claim 1 recites in that it focuses on the features of the rake face instead of
the flank face. Independent claim 41 recites a cutting tool similar to the one
claim 1 recites.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated December 14, 2018 (see generally
Appeal Br.):
I. Claims 1, 2, 5–9, 11, 13–16, 29–32, 35, 36, 39–44, and 49
rejected under 35 U.S.C. § 103 as unpatentable over Nakamura (US
5,178,645, issued January 12, 1993).

II. Claims 10, 37, and 45–47 rejected under 35 U.S.C. § 103 as
unpatentable over Nakamura and Vail (US 2009/0260895 A1, published
October 22, 2009).

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III. Claims 12 and 38 rejected under 35 U.S.C. § 103 as
unpatentable over Nakamura and Scott (US 5,752,573, issued May 19,
1998).

IV. Claims 1, 41, and 48 rejected under 35 U.S.C. § 103 as
unpatentable over Heinrich (US 2006/0194078 A1, published August 31,
2006). 2

OPINION
Rejections I–III (based on Nakamura)
In addressing Rejection I, Appellant does not argue any claim separate
from the others. See generally Appeal Br. In addition, Appellant relies on
this line of argument to address Rejections II and III. We select independent
claim 1 as representative of the claimed subject matter for these rejections.
Claims 2, 5–16, 29–32, 35–47, and 49 stand or fall with claim 1.
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Office
Action and the Answer, we affirm the Examiner’s prior art rejections of
claims 1, 2, 5–16, 29–32, 35–47, and 49 based essentially on the Examiner’s
fact-finding and reasoning. We add the following for emphasis.
Independent claim 1
Claim 1 recites a cutting tool having a flank face formed of a
refractory material having radiation ablation regions that define at least one

2 We note that claim 48 ultimately depends from independent claim 41 via
its direct dependency from dependent claim 43. We are unable to determine
whether the Examiner intended to include claim 43 in this rejection.
However, whether or not claim 43 was intended to be included is not
relevant to our discussion of this rejection because Appellant did not present
any specific arguments addressing the subject matter of claim 48.
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of surface microstructures and surface nanostructures selected from the
group consisting of nodules and ridges and a surface pore structure that is
not occluded.
The Examiner finds that Nakamura teaches a polycrystalline diamond
(PCD) cutting tool comprising a rake face and a flank face formed of a
refractory material. Final Act. 3; Nakamura Figs. 4–5, Abstr., col. 2–6. The
Examiner finds that Nakamura teaches applying a laser beam on the tool.
Final Act. 3; Nakamura Fig. 5, col. 5, ll. 18–41. The Examiner finds that
Nakamura’s use of a laser beam introduces radiation ablation regions
defining at least one surface microstructure and surface nanostructure. Final
Act. 3–4; Nakamura col. 4, ll. 43–50. The Examiner further finds that
refractory material in Nakamura’s tool has a surface pore structure that is not
occluded by the surface microstructure and surface nanostructure based on
Nakamura’s lack of a disclosure and absence evidence to the contrary. Final
Act. 3–4. The Examiner also finds that the surface microstructure and
surface nanostructure of Nakamura’s tools would include nodules and ridges
because Nakamura discloses the same type of materials for the cutting tool
as claimed instantly and the use of laser cutting in producing the cutting
edge. Final Act. 4.
Both Appellant and the Examiner acknowledge that Nakamura’s laser
treatment of the cutting tool’s flank face results in providing a graphite layer
over the flank face. Appeal Br. 6; Ans. 16; see Nakamura col. 3, ll. 22–26,
col. 5, ll. 56–59. Appellant, however, contends that Nakamura does not
produce the claimed flank structure comprising radiation ablation regions of
the flank face having a structure as claimed because of the presence of the
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graphite layer. Appeal Br. 6. Appellant points to Brecher3 in support of this
contention. Appeal Br. 7. According to Appellant, Brecher discloses a
process of forming a cutting tool by laser roughing allegedly in a manner
similar to Nakamura that forms a flank face having insufficient surface
quality that requires further treatment to achieve the desirable surface
qualities below 1 μm Rz. Id. (citing Brecher 1009, 1112).
Appellant’s arguments do not identify reversible error in the
Examiner’s conclusion of obviousness.
As the Examiner explains, Nakamura removes the graphite layer to
arrive at a final cutting tool product. Ans. 16–17. That is, like Brecher,
Nakamura recognizes that using a laser treatment to form a cutting tool
results in a flank face having insufficient surface quality and, as a result,
Nakamura subjects this flank face to further refinement by removing the
graphite layer to arrive at a surface with the desirable surface quality. Thus,
Appellant fails to explain adequately how Brecher supports Appellant’s
contention that Nakamura does not produce a flank structure of desirable
surface quality for a cutting tool.
Appellant argues that Nakamura does not disclose forming surface
microstructures and surface nanostructures selected from the group
consisting of nodules and ridges on the flank face. Appeal Br. 6.
This argument is also unavailing. Table II in the Specification sets
forth the “[g]eneral laser beam specifications for methods described [in the
Specification].” Spec. 9. Table II is reproduced below:

3 C. Brecher et al., Laser Roughing of PCD, 56 Physics Procedia, 1107–1114
(2014).
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As Appellant notes, Nakamura employs a YAG laser of a continuous
oscillation mode with laser power of 3 W. Appeal Br. 6; see Nakamura col.
6, ll. 16–18. However, Nakamura’s Table 3 also teaches using YAG lasers
of varying powers to produce cutting tools with acceptable work surface
roughness. See Nakamura col. 8, ll. 16–46. Nakamura’s Table 3 is
reproduced below.

Table 3 shows the impact of PCD grainsize and laser power in forming a
suitable cutting tool.
Nakamura’s Example E shows a cutting tool having a work surface
roughness of 1.2 microns after treatment with a laser having a power of 1.0
W, which is within Appellant’s disclosed lasers having a power of 0.1–100
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W. Given that the Specification associates surface roughness with the
formation of surface microstructures and surface nanostructures (Spec. 7)4,
one skilled in the art would have reasonably inferred from Nakamura’s
disclosure that the laser treatment used to form the cutting tool results in a
flank surface having at least surface microstructures. See In re Preda, 401
F.2d 825, 826 (CCPA 1968) (holding that, in evaluating references, it is
proper to take into account not only the specific teachings of the references
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom); see also In re Fritch, 972 F.2d 1260, 1264–65
(Fed. Cir. 1992) (holding that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom).
Based on the above, the Examiner’s assertion that one skilled in the
art would have inferred that, after applying a laser to the flank face of
Nakamura’s cutting tool and after removal of the graphite layer, the flank
surface would comprise radiation ablation regions having surface
microstructures and surface nanostructures appears reasonable. Final Act. 3;
Nakamura col. 4, ll. 43–50, 5, col. 5, ll. 18–41. Moreover, by removing the
graphite layer, the porous structure of the flank face would not be occluded
by the surface microstructures and surface nanostructures. In addition, the
Examiner’s assertion that one skilled in the art would have inferred that the
flank face of Nakamura’s cutting tool would comprise surface

4 In reference to a preferred embodiment, the Specification describes that
“[t]he surface microstructures and/or nanostructures, in some embodiments,
can provide the flank face surface roughness (Ra) of 0.025 μm to 0.7 μm.”
Spec. 7.
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microstructures and surface nanostructures such as nodules and ridges is also
reasonable given that Nakamura uses lasers at power levels within
Appellant’s preferred range of power levels for lasers.5 Thus, there is a
basis for one skilled in the art to reasonably expect that Nakamura’s PCD
cutting tool to possess the characteristics of the claimed invention. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) and In re Best, 562 F.2d 1252,
1254–56 (CCPA 1977) (explaining that when the Examiner establishes a
reasonable basis for concluding that the claimed and prior art products
appear to be the same, the burden is properly shifted to the applicant to show
that they are not).
As we note above, Appellant’s reliance on Brecher as objective
evidence to show that the flank face of Nakamura’s cutting tool does not
possess the characteristics of the claimed invention is insufficient.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1, 2, 5–16, 29–32, 35–47, and 49 for the reasons the Examiner presents and
we give above.

Rejection IV (based on Heinrich)6
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Office

5 The Specification discloses that “[s]urface microstructures and surface
nanostructures of radiation ablation regions on the flank face can exhibit
various morphologies based on compositional identity of the rake [sic, flank]
face and specifications of the laser radiation applied in forming the rake
face, as detailed further below.” Appeal Br. 6.
6 We limit our discussion to claim 1 with an understanding that it applies
equally to claims 41 and 48.
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Action and the Answer, we reverse the Examiner’s prior art rejection of
claims 1, 41, and 48 based essentially for reasons Appellant provides. We
add the following for emphasis.
Independent claim 1
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 14–15.
Appellant argues that the Examiner has not established that Heinrich’s
cemented carbide would inherently exhibit the claimed ridges or nodules by
presenting any technical or extrinsic evidence making clear that Heinrich’s
cutting tool possesses the claimed surface features of radiation ablation
regions. Appeal Br. 9–10. Appellant further contends that there is no
disclosure in Heinrich that the cemented carbide of the flank face receives
any direct laser treatment. Id. at 10.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness. The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art
the teachings of the invention in issue’”)).
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The premise of the Examiner’s rejection based on Heinrich is that the
laser removal of the aluminum oxide coating from the flank face of
Heinrich’s cutting tool exposes the surface of the underlying cemented
carbide layer. Final Act. 14. According to the Examiner, this exposed
surface has the claimed surface structures because “[i]t is well established in
the field of science that no surface is perfectly smooth, and as a result, the
presence of ridges or nodules in microstructures or nanostructures on the
surfaces would be inevitable.” Id. However, the Examiner does not direct
us to any portion of Heinrich’s disclosure that supports the Examiner’s
premise. Specifically, and as Appellant argues, the Examiner does not point
out where Heinrich teaches or suggests applying any direct laser treatment to
the cemented carbide for the purpose of modifying its surface structure.
Appeal Br. 10. Nor does the Examiner direct us to other objective evidence
that provides a basis to ascertain whether the flank face of Heinrich’s cutting
tool comprises surface microstructures and surface nanostructures in the
form of nodules and ridges. That is, the Examiner does not provide an
adequate foundation to support the stated conclusion. Instead, it appears that
the Examiner benefits from impermissible hindsight by relying on
Appellant’s own disclosure to find unrecited claim elements in Heinrich’s
disclosure and, thus, “read into the prior art the teachings of the invention in
issue.” See KSR, 550 U.S. at 421. As a result, the Examiner does not
explain adequately how one skilled in the art, absent impermissible
hindsight, would have arrived at the claimed invention from Heinrich’s
disclosure.
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Accordingly, we reverse the Examiner’s prior art rejection of claims
1, 41, and 48 under 35 U.S.C. § 103 for the reasons Appellant presents and
we provide above.

DECISION SUMMARY
Because no rejection affirms all the claims presented for review on
appeal, our decision is an affirmance in part.
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–9,
11, 13–16,
29–32, 35,
36, 39–44,
49
103 Nakamura 1, 2, 5–9,
11, 13–16,
29–32, 35,
36, 39–44,
49

10, 37,
45–47
103 Nakamura, Vail 10, 37,
45–47

12, 38 103 Nakamura, Scott 12, 38
1, 41, 48 103 Heinrich 1, 41, 48
Overall
Outcome
1, 2, 5–16,
29–32, 35–
47, 49
48

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 IN PART