Kennametal Inc.

Patent Trials and Appeals Board

Apr 2, 2021

2020001955 (P.T.A.B. Apr. 2, 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.
14/897,535 12/10/2015 Alexander DRAKEN K-04329-US-PCT 9900
27877 7590 04/02/2021
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX 231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
EXAMINER
CHEN, KEATH T
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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 ALEXANDER DRAKEN, RUDOLF KARL GRAU,
RODRIGUE NGOUMENI YAPPI, and
HUBERT JOSEF SCHWEIGER
____________
ppeal 2020-00195
Application 14/897,535
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–7, 9, 10, and 12–19 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/897,535 filed Dec. 10, 2015 (“the ’535 Application”); the Final Office
Action dated Feb. 7, 2019 (“Final Act.”); the Appeal Brief filed Aug. 8,
2019 (“Appeal Br.”); and the Examiner’s Answer dated Sept. 25, 2019
(“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Kennametal, Inc. Appeal Br. 3.
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14/897,535, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to vaporizing units. Spec.
1. The ’535 Application describes vaporizing units as ceramic bodies for
coating flexible film and textile substrates with a metal, such as aluminum.
Id. The ’535 Application describes that an electrical current running directly
through the unit’s ceramic material encounters resistance, which heats the
unit to temperatures sufficient to melt and vaporize metal on the unit’s
surface. Id. According to the ’535 Application, the claimed subject matter’s
objective is to wet the vaporizer unit surface with molten metal as
homogeneously as possible, without risking molten metal contacting the
electrodes on the vaporizing unit’s edges. Id. at 1, 2. The ’535 Application
describes that contact between molten metal and the electrodes causes an
undesirable metal spatter. Id. at 2.
Figure 3 of the ’535 Application is reproduced below:

Figure 3 is a top view of a vaporizing unit in operation. Spec. 5.
Ceramic vaporizing unit 2 has an approximately rectangular top into which
inner cavity 6 and outer cavity 8 are incorporated. Id. Inner cavity 6,
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constituting the primary vaporizing surface, is surrounded by circumferential
web 10 which separates two cavities 6, 8 from each other. Id. at 5–6. Outer
cavity 8 is surrounded by continuous edge 12. Id. at 6. Vaporizing unit 2 is
clamped between two electrodes 14 and an electric current flows through the
unit. Id. As a result, vaporizing unit 2 is heated to approximately 1700 °C.
Id. Metal wire 16 is concurrently and continuously introduced into inner
cavity 6 with the aid of feed device 15, such that the metal melts and forms
molten material 18. Id.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. Vaporizing unit with a top side wherein
an inner cavity is incorporated in the top side, the inner
cavity being defined by a surrounding web to which in turn an
outer cavity is connected, wherein the outer cavity is designed
as a channel surrounding the inner cavity, the outer cavity being
deeper than the inner cavity and having lower material
thickness than the inner cavity, and the vaporizing unit is
electric resistance heated via electric current flow through the
vaporizing unit.
REFERENCES
The Examiner relies on the following references in rejecting the
claims:
Name Reference Date
Passmore US 3,636,305 Jan. 18, 1972
Rusinko, Jr. et al.
(“Rusinko”)
US 2007/0110412 A1 May 17, 2007
Li3 CN 102071398 A May 25, 2011

3 The Examiner relies on a machine translation of Li, to which Appellant
does not object. Final Act. 12–13.
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REJECTIONS
The Examiner maintains the following rejections under
35 U.S.C. § 1034 as obvious: (1) claims 1, 3–7, 9, 10, 12–17, and 19 over
Passmore in view of Rusinko or, alternatively, Rusinko in view of Passmore
and (2) claim 18 and, alternatively claims 1, 3–7, 9, 10, 12–17, and 19, over
Passmore and Rusinko in view of Li. Final Act. 3–13.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
rejections.
Ground 1: Rejection of claims 1, 3–7, 9, 10, 12–17, and 19 over
Passmore in view of Rusinko or, alternatively, Rusinko in view of
Passmore
Appellant argues claims 1, 6, 7, 10, 13, 15, 16, and 19 as a group. We
select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Appellant
provides separate arguments for claims 3, 4, 5, 9, 12, 14, and 17, which we
address separately. Appeal Br. 5–8.

4 Because this application claims priority to an application that was filed
after the March 16, 2013, effective date of the America Invents Act, we refer
to the AIA version of the statute.
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Claim 1
The Examiner finds that Passmore teaches or suggests each of
claim 1’s limitations, except that the reference does not explicitly disclose
electrical current flowing directly through the vaporizer unit to heat the unit
by electrical resistance. Final Act. 4. Passmore’s Figure 2 is reproduced
below:

Figure 2 is a perspective view of an evaporating vessel embodiment.
Passmore 3:2–3. In Figure 2, vessel 1 comprises: (i) cavity 2 centrally
disposed on the upper vessel 1 surface and (ii) two transverse grooves 5, 6 at
each end of vessel 1. Id. at 3:11–12; 4:33–34. Grooves 5 are closer to
cavity 2 than grooves 6 and both grooves 5, 6 aid in preventing molten
aluminum from creeping to the ends of vessel 1. Id. at 4:34–36; 4:39–40.
The channel underneath vessel 1 is sized to fit an inserted resistance heater 3
(not shown). Id. at 3:52–56; Fig. 3.
The Examiner relies upon Rusinko for teaching the direct resistance
heating limitation missing from Passmore. Final Act. 6. The Examiner
finds Rusinko discloses directly passing electrical current through a metallic
or ceramic container to raise the container’s temperature to 1500 °C to
vaporize metal. Id. The Examiner determines that it would have been
obvious to a person having ordinary skill in the art at the time of the
invention to replace Passmore’s indirect resistance heater 3 with Rusinko’s
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direct passage of electric current through vessel 1 for vaporizing aluminum
to extend the useful service life of the container. Id. at 7 (citing Rusinko
¶¶ 2, 8).
Appellant argues that the Examiner has not established a prima facie
case of obviousness because Passmore, as modified by Rusinko, fails to
disclose every limitation of claim 1. Appeal Br. 5. According to Appellant,
Passmore’s grooves 5, 6 cannot be considered to “surround” inner cavity 2
within the meaning of claim 1. Id.
We disagree. As the Examiner notes, dependent claim 18 recites the
limitation “completely surrounds.” Id. at 12 (Claims App.). The doctrine of
claim differentiation means that limitations stated in dependent claims are
not to be read into the independent claim from which they depend. Karlin
Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir.
1999); see also Hill-Rom Svcs., Inc. v. Stryker Corp., 755 F.3d 1367, 1374
(Fed. Cir. 2014) (“[T]he presence of a dependent claim that adds a particular
limitation raises a presumption that the limitation in question is not found in
the independent claim.”). We discern no reversible error in the Examiner’s
finding because claim 18 creates a presumption that claim 1 does not
encompass an inner cavity that is completely surrounded by an outer cavity.
Rather, claim 1 encompasses Passmore’s two transverse grooves 5, 6 located
at each end of inner cavity 2.
In addition, Appellant identifies Figure 3 of the ’535 Application as
illustrating the claimed structural features, including the “surrounding web”
(element 10). Appeal Br. 3. Figure 3 shows that the web does not
completely surround the inner cavity.
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We sustain the rejection of claim 1 over Passmore in view of Rusinko.
For the same reasons, we sustain the rejection of claims 6, 7, 10, 13, 15, 16,
and 19.
We discuss the Examiner’s alternative rejection of claim 1 below.
Claims 1, 3, 4, 5, 12, and 14
Rusinko’s Figure 2 is reproduced below:

Figures 11 and 12 are top views showing different embodiments of a
boat or container. Rusinko ¶ 14. In Figures 11 and 12, the boat or container
comprises a plurality of grooves, which may be a combination of stand-
alone and interconnected grooves on the surface. Id. ¶ 42.
The Examiner finds that Rusinko discloses each of the limitations of
claim 1, except that the reference does not teach that the outer cavity is
deeper and possesses a lower material thickness than the inner cavity. Final
Act. 4.
The Examiner finds Passmore discloses that the centrally disposed
cavity on the vessel’s upper surface: (i) is relatively large, but shallow and
(ii) is made of material resistant to the metal being vaporized. Id. at 8; see
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Passmore Fig. 2. The Examiner finds Passmore discloses that providing
grooves in the vessel may desirably reduce and prevent the risk of molten
aluminum from flowing to the ends of vessel 1, where it could contact the
heater. Final Act. 8.
The Examiner determines that it would have been obvious to one
having ordinary skill in the art at the time of the invention to modify
Rusinko’s boat or container to have: (i) deeper peripheral grooves than the
grooves in the central region to prevent metal flowing to the end of the
vessel and (ii) a large shallow cavity. Id. at 8 (citing Rusinko Figs. 11, 12;
Passmore 2:7–10; 2:64–67). In view of Passmore, the Examiner concludes
that the ordinarily skilled artisan would have known that deeper grooves
would have retained more molten metal within the vessel, thereby
preventing overflow risks at the ends of the vessel. Final Act. 8.
With respect to the parent independent claim, Appellant argues that
Rusinko’s grooves cannot be considered to “surround” the inner cavity
within the meaning of claim 1. Appeal Br. 5. According to Appellant, “[i]t
is not credible that [Rusinko’s] three lateral grooves ‘surround’ the diamond
and/or circular grooves.” Id. (citing Rusinko Figs. 11, 12).
Appellant argues that Rusinko’s diamond and circular grooves would
not have rendered obvious the limitations regarding inner cavity dimensions
recited in dependent claims 4, 5, 12, and 14. Appeal Br. 5. Appellant argues
that neither Rusinko nor Passmore discloses that the inner cavity is enclosed
by the claimed web as required by claim 3. Id.
We are not persuaded by these arguments.
Based on the construction of the surrounding limitation forth supra,
claim 1 encompasses Rusinko’s three lateral grooves at each end of the
centrally located diamond and circular grooves. See Rusinko Figs. 11, 12;
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Ans. 10. With regard to claim 3’s required web, we agree with the Examiner
that the claimed web “is merely the top surface of the vaporizing unit[]
between the inner cavity and the outer cavity.” Ans. 10. In our view, both
of the Examiner’s proposed modifications of Rusinko (Final Act. 8) and
Passmore (id. at 5, 6) would have possessed the requisite “inner cavity . . .
defined by a surrounding web” within the meaning of claims 1 and 3.
Appeal Br. 10 (Claims App.).
Appellant’s arguments in support of dependent claims 4, 5, 12, and 14
lack persuasive merit. See Appeal Br. 5. These arguments fail to
substantively address the Examiner’s reasons why one of ordinary skill
would have modified Rusinko’s diamond and circular grooves with
Passmore’s large shallow cavity. Final Act. 8. We adopt the Examiner’s
reasoned findings that Passmore discloses or suggests every limitation
regarding inner cavity dimensions recited in dependent claims 4, 5, 12, and
14. See id. at 9–10, 11.
We sustain the rejection of claims 1, 3, 4, 5, 12, and 14 over Rusinko
in view of Passmore.
Claim 9
Appellant argues that Passmore’s grooves 5, 6 are not vaporization
surfaces because application of heat would have resulted in temperatures:
(i) too low for the evaporation of metal or (ii) too high risking damage to the
vaporizing unit. Appeal Br. 7 (citing Passmore 3:21–31). Appellant argues
that the Examiner’s applied prior art “fails to contemplate an outer
vaporizing surface of the outer cavity.” Appeal Br. 6.
These arguments are not persuasive because each fails to
substantively address the Examiner’s proposed modifications of Passmore’s:
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(i) indirect resistance heater 3 with Rusinko’s direct passage of electric
current through vessel 1 and (ii) grooves 5, 6. Final Act. 5, 8. With respect
to the latter modification, the Examiner finds Passmore suggests that making
peripheral grooves deeper would have retained more molten metal within the
vessel, thereby preventing overflow risks at the ends of the vessel. Id. at 5.
We discern no reversible error in the Examiner’s conclusion that including
Rusinko’s direct resistance heating current with Passmore’s deeper
peripheral grooves 5, 6 would have resulted in less ceramic material for the
current to pass, thereby resulting in higher vaporizing temperatures in
grooves 5, 6 than inner cavity 2. Ans. 12.
We sustain the rejection of claim 9.
Claim 17
Appellant argues that there is insufficient motivation to combine
Passmore and Rusinko because Passmore explicitly discloses that “[a]nother
disadvantage of prior-art two-component evaporating sources is . . .
[n]onuniform thickness . . . caus[ing] cracking of the vessel.” Passmore
1:61–62, 1:66–68; see Appeal Br. 7–8 (underlining omitted).
This argument is unpersuasive of reversible error, as it relies on a
premise to bodily incorporate Passmore’s indirect resistance heater 3.
However, it is well established that the obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”); In re
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Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
We sustain the rejection of claim 17.
Ground 2: Rejection of claim 18 and, alternatively, claims 1, 3–7, 9,
10, 12–17, and 19 over Passmore and Rusinko, in view of Li
Appellant argues claims 1, 3, 6, 7, 10, 13, 15, 16, and 19 as a group.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Appellant
provides separate arguments for claims 4, 5, 9, 12, 14, and 17, which we
address separately. Appeal Br. 8–9.
Appellant does not provide argument for claim 18, either within a
group or separately. See generally id.
We summarily affirm the rejection of claim 18.5
Claims 1, 3, 6, 7, 10, 13, 15, 16, and 19
Appellant argues that Li fails to remedy the deficiencies of Passmore
and Rusinko. See id. at 8.
Having found no deficiencies in Passmore and Rusinko for the
reasons set forth supra, Appellant’s argument is not persuasive.
Appellant argues that there is insufficient motivation to combine
Passmore and Rusinko because modification from indirect electrical
resistance heating to one that is direct changes the principles of operation of
Passmore and Li. Id. According to Appellant, the Examiner’s proposed

5 “If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.” MPEP
§ 1205.02.
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modification would have required a substantial reconstruction and redesign
of elements. Id.
We disagree. In our view, a person of ordinary skill in the art at the
time of the invention would have known how to replace Passmore’s and Li’s
indirect heating technology from 1972 and 2011, respectively, with
Rusinko’s direct heating means from 2007. Appellant has not identified any
disclosure in the prior art that disparages the use of direct electrical
resistance heating.
We sustain the rejection of claim 1. For the same reasons, we sustain
the rejection of claims 3, 6, 7, 10, 13, 15, 16, and 19.
Claims 4, 5, 12, and 14
Appellant argues that: (i) Passmore and Li are designed for indirect
electrical resistance heating, which is fundamentally different from direct
resistance heating (id.); (ii) Passmore and Li do not teach or disclose the
limitations regarding inner cavity dimensions recited in claims 4, 5, 12, and
14 (id.); and (iii) Rusinko fails to teach these dimensions by not even
contemplating “an inner cavity surround by an outer cavity.” Id. at 8–9.
For the reasons set forth supra and on page 14 of the Answer, we are
not persuaded by these arguments.
We sustain the rejection of claims 4, 5, 12, and 14.
Claims 9 and 17
Appellant argues that Li fails to remedy the deficiencies of Passmore
and Rusinko. Id. at 9.
Having found no deficiencies in Passmore and Rusinko for the
reasons set forth supra, Appellant’s argument is not persuasive.
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As to Appellant’s particular argument that Li “fails teach an outer
cavity comprising a vaporization surface” (id.), we discern no reversible
error in the Examiner’s reasoned findings regarding claim 9 in Ground 1.6
We sustain the rejection of claims 9 and 17.
DECISION SUMMARY
In summary:
TIME PERIOD FOR RESPONSE
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

6 We note that Appellant fails to provide substantive argument in support of
claim 17 for this rejection. Appeal Br. 9.
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–7, 9,
10, 12–17,
19
103

Passmore, Rusinko 1, 3–7, 9, 10, 12–17, 19
1, 3–7, 9,
10, 12–19 103
Passmore, Rusinko,
Li
1, 3–7, 9, 10,
12–19
Overall
Outcome
1, 3–7, 9, 10,
12–19