04/15/15

Headline: Kennametal, Inc. v. Ingersoll Cutting Tool Co.: Support for Art Grounds for Rejection in a Post-Grant Proceeding


 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleKennametal, Inc. v. Ingersoll Cutting Tool Co., No. 2014-1350 (Fed. Cir. March 25, 2015).
Issues
[Anticipation] Because all the limitations of Kennametal’s claim are specifically disclosed in Grab, the question for the purposes of anticipation is “whether the number of categories and components” disclosed in Grab is so large that the combination of ruthenium and PVD coatings “would not be immediately apparent to one of ordinary skill in the art.” Wrigley, 683 F.3d at 1361.
Kennametal, Inc., at *10.
[Obviousness] Kennametal claims that the Board failed to establish a prima facie case of obviousness. Because of the problems relating to cobalt capping, Kennametal contends, it would not have been obvious to combine ruthenium binders with PVD coating.
Id. at *13.
Holdings
[Anticipation] Grab’s express “contemplat[ion]” of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading Grab’s claim 5, would immediately envisage applying a PVD coating. Grab col.4 l.59. Thus, substantial evidence supports the Board’s conclusion that Grab effectively teaches 15 combinations, of which one anticipates pending claim 1.
Id. at *11.
[Obviousness] [B]ecause a person of skill in the art reading Grab would readily envisage the combination of ruthenium binders and PVD coatings, it would have been obvious to that person that these two could be combined with a reasonable expectation of success. Substantial evidence supports the Board’s finding that this express teaching was not significantly undermined by the problem of cobalt capping, especially in view of the similar teaching of Leverenz.
Id. at *15.
 
 
Procedural HistoryKennametal, Inc. (“Kennametal”) appeals the decision of the Patent Trial and Appeal Board (the “Board”) in an inter partes reexamination of U.S. Patent No. 7,244,519 (the “’519 patent”) in which the Board: (a) entered a new anticipation ground of rejection asserted by Ingersoll Cutting Tool Co. (“Ingersoll”) against certain of the pend- ing claims; and (b) affirmed the Examiner’s obviousness rejection of certain remaining claims. See Ingersoll Cutting Tool Co. v. TDY Indus., Reexamination Ctrl. No. 95/001,417, available at 2013 WL 6039030 (P.T.A.B. Nov. 12, 2013) (“Board Decision on Rehearing”); Ingersoll, available at 2013 WL 3294868 (P.T.A.B. May 6, 2013) (“Initial Board Decision”).
Kennametal, Inc., at *2.
 
 
Legal Reasoning (LINN, Newman, Prost)
Background
Post-Grant ProcessIngersoll submitted a request for inter partes reexamination, claiming that some of the original claims were anticipated under 35 U.S.C. § 102(b) and all of the claims were obvious under § 103(a). The Examiner did not adopt any of Ingersoll’s proposed anticipation rejections but did reject all of the pending claims as obvious. In response, the patentee amended the existing claims and filed numerous new claims.
Kennametal, Inc., at *3-4.
Claim at Issue1. A cutting tool, comprising:
a cemented carbide substrate, wherein the substrate comprises hard particles and a binder, and the binder comprises ruthenium; and
at least one physical vapor deposition coating on at least a portion of the substrate.
Id. at *4.
Claim InterpretationThe Board also found that claim 5’s recitation of a “coating” was “a specific hook back into the Grab disclosure for the further description of how that coating is applied.” Initial Board Decision, at *5. The Board found that the description of coating by PVD was not negated by the fact that CVD and MTCVD were “characterized by Grab as preferred.” Id. at *4. The combination of one of five metals with one of three coat- ings leads to only fifteen possibilities, which, according to the Board, was a sufficiently definite and limited class so that each member of the class was anticipated by Grab. Id. at *4–5. The Board stated that Ingersoll provided evidence that claims 2–4, 9–18, 23, 24, 27–31, 35, 36, 45, 46, 49, 50, 58, 83, 85 and 89 were also anticipated, and neither the Examiner nor the Patent Owner distinguished these claims from claim 1. Therefore, the Board ruled that these claims were also anticipated by Grab. Id. at *5.
Id. at *6.
Anticipation
Legal Standard, AnticipationA patent is invalid if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.” 35 U.S.C. § 102(b) (2006).3 A prior art reference can only anticipate a claim if it discloses all the claimed limitations “arranged or combined in the same way as in the claim.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012) (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008)). However, 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, 301 F.2d 676, 681 (C.C.P.A. 1962).
Kennametal, Inc., at *8.
Grounds for Anticipation
Substantial evidence supports the Board’s determination that pending claim 1 of the ’519 patent is anticipated. Kennametal does not contest that, with the exception of combining ruthenium binders with PVD coatings, claim 5 of Grab expressly recites all the elements of pending claim 1. Claim 5 of Grab recites using a binder consisting of one of five metals, one of which is ruthenium, together with a coating. Grab only discloses three coating methods, one of which is PVD. While CVD and MTCVD coatings are the coatings on which Grab focuses, it “also contemplate[d] that one or more layers of a coating scheme may be ap- plied by physical vapor deposition.” Grab col.4 ll.59–61. Because all the limitations of Kennametal’s claim are specifically disclosed in Grab, the question for the purpos- es of anticipation is “whether the number of categories and components” disclosed in Grab is so large that the combination of ruthenium and PVD coatings “would not be immediately apparent to one of ordinary skill in the art.” Wrigley, 683 F.3d at 1361. The fact that a skilled artisan had various ways of formulating a coated cutting insert based on Grab’s teaching does not help Kennametal, since many of these are within the scope of its claim. See id. at 1362 n.4 (“The fact that one of ordinary skill in the art might also have included other flavorings would not remove the resulting composition from the broad reach of [the challenged] claim 34.”).
Id. at *10-11.
At the very least, Grab’s express “contemplat[ion]” of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading Grab’s claim 5, would immediately envisage applying a PVD coating. Grab col.4 l.59. Thus, substantial evidence supports the Board’s conclusion that Grab effectively teaches 15 combinations, of which one anticipates pending claim 1.
Id. at *11.
Obviousness
Legal Standard, Obviousness“A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (2006). Obviousness is a question of law, based on underlying factual determinations, including: “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; “the level of ordinary skill in the pertinent art”; and “[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007).
Kennametal, Inc., at *13.
Analysis[S]ubstantial evidence supports the Board’s factual determination that Grab expressly taught combining a ruthenium binder with a PVD coating. While references that anticipate an invention can, theoretically, still not make it obvious, see Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 n.2 (Fed. Cir. 2008), that is the rare case. Here, because a person of skill in the art reading Grab would readily envisage the combination of ruthenium binders and PVD coatings, it would have been obvious to that person that these two could be combined with a reasonable expectation of success. Substantial evidence supports the Board’s finding that this express teaching was not significantly undermined by the problem of cobalt capping, especially in view of the similar teaching of Leverenz.
Id. at *15.
Conclusion
For the foregoing reasons, this court affirms the Board’s determination that claims 1–4, 9–18, 23, 24, 27– 31, 35, 36, 45, 46, 49, 50, 58, 83, 85 and 89 are anticipated and claims 2–14, 16–31, 33–52, 56–59, 84–88, 90 and 93 would have been obvious.
Kennametal, Inc., at *16.
 
 
 
 
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