Wear-Tech Industries Ltd.

Patent Trials and Appeals Board

May 19, 2020

2019005890 (P.T.A.B. May. 19, 2020)

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.
14/529,961 10/31/2014 Darryl Anthony GEORGE 58128-2 1052
35161 7590 05/19/2020
DICKINSON WRIGHT PLLC
1825 EYE ST., NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
TROUTMAN, MATTHEW D
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
dwpatents@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DARRYL ANTHONY GEORGE
____________

Appeal 2019-005890
Application 14/529,961
Technology Center 3600
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 22, 2018, hereinafter “Final
Act.”) rejecting claims 13, 14, 16–19, 21, and 22.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Wear-Tech Industries Ltd. is identified as the real party in
interest in Appellant’s Appeal Brief (filed Jan. 18, 2019, hereinafter “Appeal
Br.”). Appeal Br. 3.
2 Claims 1–12 are withdrawn and claims 15 and 20 are canceled. Appeal Br.
18–20.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellant’s invention is directed to a tool “for crushing rocks,
aggregate, [and] other forms of earth and minerals” made from wear
materials. Spec. para. 2
Claim 13, the sole independent claim, is representative of the claimed
invention and reads as follows:
13. An aggregate crushing tool comprising:
an attachment portion for mounting the tool on a
chassis, the attachment portion comprising a bendable
cylindrical shank defined by a first hardness within the
range 20-35 HRC; and
a crushing portion supported on the attachment
portion, the crushing portion comprising a conical or
frusto-conical shaped body defined by a second hardness
that is greater than the first hardness.

REJECTIONS

I. The Examiner rejects claim 13 under 35 U.S.C. § 102(a)(1) as
being anticipated by Hall.3
II. The Examiner rejects claims 13, 14, 16–19, 21, and 22 under 35
U.S.C. § 103 as being unpatentable over Marathe4 and Rea.5

3 Hall et al., US 2012/0025592 A1, published Feb. 2, 2012.
4 Marathe et al., US 2008/0084106 A1, published Apr. 10, 2008.
5 Rea, US 2,066,853, issued Jan. 5, 1937.
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ANALYSIS
Rejection I
The Examiner finds Hall discloses an aggregate crushing tool having
all of the limitations of independent claim 13 including, inter alia, bendable
cylindrical shank portion 2104 defined by a hardness of 35 HRC, which falls
within the claimed range of 20–35 HRC. Final Act. 2 (citing Hall, para. 72,
Fig. 21).
Appellant argues that Hall fails to disclose “a cylindrical shank that is
(i) bendable and (ii) defined by a first hardness within the range 20-35
HRC.” Appeal Br. 5 (emphasis omitted). According to Appellant, because
paragraphs 71 and 72 of Hall disclose shank 2104 and metal segment 2401
as each being part of a “wear-resistant base” having a hardness of 35 to 50
HRC and “wear-resistant surface 3202 of shank 2104 . . . [as having] a
hardness greater than 60 HR[C],” “Hall appears to suggest that it is in fact
metal segment 2401 and not shank 2104 that has a hardness of 35-50 HRC.”
Id. at 6 (emphasis omitted). Appellant also contends that because Hall’s
shank 2104 includes wear-resistant surface 3202, which has a hardness
greater than 60 HRC, Hall’s shank is not bendable, as called for by claim 13,
because “the wear-resistant surface 3202 bonded to shank 2104 is designed
for . . . hardness, strength, and thickness,” which “is directly contrary to the
suggestion that shank 2104 is impliedly bendable by having a hardness as
low as 35 HR[C].” Id. at 7–8 (citing Hall, paras. 71, 73) (emphasis omitted).
We are not persuaded by Appellant’s arguments because, as the
Examiner correctly finds, Hall discloses in paragraph 72 that shank 2104 and
metal segment 2401 are “formed from a single piece of material,” i.e., steel,
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“having a hardness of 35 to 50 HR[C].” Ans. 3 (emphasis added).6
Accordingly, each of Hall’s shank 2104 and metal segment 2401 has a
hardness of as low as 35 HRC. Furthermore, even though wear-resistant
surface 3202, having a hardness greater than 60 HRC, is attached to Hall’s
shank 2104, we note that the use of the term “comprising” in the limitation
“the attachment portion comprising a . . . cylindrical shank” (see Appeal Br.
19, Claims App.) does not preclude Hall’s attachment portion, i.e., wear-
resistant base, from also having wear-resistant surface 3202 in addition to
shank 2104. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
Cir. 1997) (“Comprising” is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.). Therefore,
the Examiner is correct that even though wear-resistant surface 3202 is
bonded to Hall’s shank 2104 or disposed within groove 3401, “this does not
change the basic characteristic of the core shank 2104 itself,” namely,
having a hardness of 35 to 50 HRC. Ans. 6 (emphasis added).
As Hall discloses a crushing tool (“asphalt milling, mining, or
excavating”) including shank 2104 having a hardness as low as 35 HRC, we
agree with the Examiner’s position that in light of Appellant’s Specification,
“the shank 2104 of Hall is considered to meet the limitation of being ‘a
bendable cylindrical shank’.” Id. at 6; see also Hall, para. 2. Here,
Appellant’s Specification describes a crushing tool used in “mining and
other types of extraction” including a shank having a “hardness[] of about
HRC 40 or less” as being “susceptible to bending.” Spec. paras. 3, 8.

6 Examiner’s Answer, dated May 8, 2019.
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Therefore, as Hall discloses a crushing tool used in mining or excavating
having a shank with a hardness as low as 35 HRC, i.e., “about HRC 40 or
less,” the Examiner is on solid footing to shift the burden to Appellant to
prove Hall’s shank 2104 with a hardness as low as 35 HRC does not possess
the “bendable” characteristic recited in claim 13. See In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (citations omitted) (“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”).
Appellant provides neither evidence nor persuasive technical reasoning to
show otherwise.
Appellant further argues that even if the hardness of Hall’s shank
2104 is in the range of 35–50 HRC, such a disclosure does not satisfy the
claim limitation of “a first hardness within the range 20-35 HRC” because
the disclosure of endpoint 35 HRC is not a disclosure of Appellant’s entire
range, and, thus, “the two ranges are non-overlapping.” Appeal Br. 5–6
(emphasis omitted).
We are not persuaded by Appellant’s arguments because when a claim
recites a range, such as the instant hardness range, the claim is anticipated
when one of the values within the range is disclosed in the prior art. See
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985)
(citing In re Petering, 301 F.2d 676, 682 (CCPA 1962)). In this case, Hall’s
disclosure of a shank hardness of 35 HRC constitutes a specific disclosure of
a point within the claimed range of 20–35 HRC, and, thus, constitutes a
disclosure of a specific hardness within the claimed range. We, thus, agree
with the Examiner that Hall’s disclosure of a shank hardness of 35 HRC
“anticipat[es] the claimed range.” Ans. 5 (citing MPEP § 2131.03).
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Lastly, Appellant argues that “Hall teaches away from . . . [the]
claimed embodiments.” Appeal Br. 8 (emphasis omitted). According to
Appellant, the “claimed embodiments are based upon a very different
principle of operation that is contrary to, and against, the teachings of Hall”
because the tool of claim 13 “does not incorporate a hard, ‘wear-resistant’
attachment portion,” like Hall, “but rather a bendable shank defined by a
hardness in the range of 20-35 HRC.” Id. at 10 (emphasis omitted).
We are not persuaded by Appellant’s argument because teaching
away is irrelevant to anticipation. See Seachange Int’l, Inc. v. C-COR, Inc.,
413 F.3d 1361, 1380 (Fed. Cir. 2005).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(a)(1) of claim 13 as anticipated by Hall.

Rejection II
The Examiner finds Marathe discloses an aggregate crushing tool
including, inter alia, an attachment portion (lower portion) having a first
hardness as low as 38 HRC and a crushing portion (upper portion) having a
second hardness as low as 52 HRC, which is greater than the first hardness.
Final Act. 3 (citing Marathe, Table 1, Figures). However, the Examiner
finds that Marathe does not disclose “a hardness of the attachment portion
falling in the [claimed] range” of 20–35 HRC. Id. at 4. Nonetheless, the
Examiner finds that Rea discloses a rock cutting tool including an
attachment portion having a hardness as low as 30 HRC. Id. (citing Rea, p.
2, col. 2, ll. 40–47). Thus, the Examiner concludes that
It would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Marathe to alter the
hardness of the attachment portion such that it is as low as 30
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HRC as Rea has taught wherein it is old and well known in the
art to construct the attachment portion of a rock engaging tool
out of a material having a hardness of 30 HRC as such a
hardness provides for ductility and resistance to fracture in the
attachment region.

Id. (emphasis added).
Appellant argues that a person of ordinary skill in the art would not
have combined the teachings of Marathe and Rea because Rea discloses
providing a hardness of 30 HRC in the attachment portion (threaded portion)
“to resist crystallization and fracture that result from torque strains imposed
at this point of attachment to the coupling,” whereas Marathe “would not
experience significant torsional forces, but rather a very different loading in
the form of high impact with extreme shear force.” Appeal Br. 14.
According to Appellant, “[t]he material hardness of 30 HRC disclosed in
Rea is specific to a different mode of operation” than that of Marathe, and,
thus, would not be applicable to Marathe’s tool, “which it must be noted
explicitly discloses a different hardness range with a view to different
performance requirements.” Id.
It is undisputed that Marathe’s cutting tool includes an attachment
portion having a shank 50, 104 with a first hardness of 38–48 HRC. See
Marathe, Figs. 1, 2, Tables 1, 2. Rea is directed to a cutting tool including
an attachment portion having a hardness of 30 HRC. See Rea, p. 2, col. 2, ll.
54–57. Although Rea discloses that it was known in the art to provide a
hardness of 30 HRC to the attachment portion of a cutting tool, we find
Examiner’s rejection insufficient to explain what would have prompted a
person having ordinary skill in the art to provide a hardness of 30 HRC, as
taught by Rea, to Marathe’s shank 50, 104, rather than a hardness in the
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range 38–48 HRC explicitly disclosed by Marathe. The Examiner has not
provided any findings that Marathe recognized a problem with having a
shank hardness of 38–48 HRC. Moreover, Marathe specifically discloses
that a shank hardness of 38–48 HRC “provides for better toughness in the
shank region,” which in turn “provide[s] an improved useful tool life” and
“is less likely to experience premature failure (e.g., catastrophic stress
fracturing) due to operational stress.” Marathe paras. 59, 61, Tables 1, 2.
Accordingly, we fail to see why a person having ordinary skill in the
art would have further reduced the hardness of Marathe’s shank from 38–48
HRC to Rea’s hardness of 30 HRC. The reason proffered by the Examiner
to modify the hardness of Marathe’s shank to 30 HRC, i.e., to “provide[] for
ductility and resistance to fracture in the attachment region,” appears to
already be adequately performed by a hardness level of 38–48 HRC. Final
Act. 4. Hence, without a persuasive articulated rationale based on rational
underpinnings for modifying the hardness of Marathe’s shank, from a
hardness of 38–48 HRC to a hardness of 30 HRC, as taught by Rea, the
Examiner’s rejection appears to be the result of hindsight analysis. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of claims 13, 14, 16–19, 21, and 22 as
unpatentable over Marathe and Rea.

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CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
13 102(a)(1) Hall 13
13, 14,
16–19, 21,
22
103 Marathe, Rea 13, 14,
16–19, 21,
22
Overall
Outcome
13

14, 16–19,
21, 22

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