Docket No. 2014-1350
PROST, NEWMAN, LINN
March 25, 2015
Brief Summary: PTAB findings of anticipation and obviousness affirmed (prior art claim provided “a specific hook back into the  disclosure for the further description of how that coating is applied”; secondary considerations did not result from what is both claimed and novel in the claim, [so] there is no nexus to the merits of the invention”).
Summary: Kennametal appealed PTAB decision in an inter partes reexamination of its US 7,244,519 relating to carbide cutting tools, entering a new ground of rejection for anticipation of some of the claims and affirming the Examiner’s obviousness rejections for the other claims. The ‘519 cutting tools are made of a “binder compris[ing] ruthenium” and coated using physical vapor deposition (PVD) (amended claims following Ingersoll’s proposed anticipation rejections). The Examiner did not adopt Ingersoll’s arguments regarding the amended claims but the Board disagreed, concluding the specification “discloses PVD as one of three contemplated methods of coating” (the prior art’s “recitation of a ‘coating’ [in the prior art claim] was ‘a specific hook back into the  disclosure for the further description of how that coating is applied…not negated by the fact that [the other two methods] were ‘characterized by [the prior art] as preferred.” The Board also affirmed the Examiner’s obviousness rejections, rejecting Kennemetal’s alleged unexpected results. The FC reviewed the Board’s factual findings for substantial evidence and its legal conclusions without deference (anticipation is a question of fact and obviousness a question of law based on underlying findings of fact). Regarding anticipation, the opinion explained that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination” (In re Petering, CCPA 1962). The FC panel considered “the question [to be] ‘whether the number of categories and components’ disclosed in [the prior art] is so large that the combination of ruthenium and PVD coatings ‘would not be immediately apparent’” (Wrigley, FC 2012). It concluded “[a]t the very least, [the prior art’s] ‘contemplat[ion]’ of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art…would immediately envisage applying a PVD coating”, noting that “actual performance” is not required as long as “those suggestions [are] enabled” (Novo, FC 2005). The Board’s anticipation decision was therefore affirmed. The FC panel also agreed with the Board’s obviousness analysis (noting that “references that anticipate an invention can, theoretically, still not make it obvious…that is the rare case” (Cohesive Techs., FC 2008)), concluding that the combination of ruthenium binders and PVD coatings “was not significantly undermined by the problem of cobalt capping” (a problem the ‘519 patent alleged to overcome). Kennemetal’s argument that its binder/coating combination “results in unexpected tool lifetimes” was not found persuasive since “the offered secondary considerations results from something other than what is both claimed and novel in the claim, [so] there is no nexus to the merits of the invention” (In re Huai-Hung Kao, FC 2011). Therefore, the Board’s obviousness decision was also affirmed.