The act of contemplation then creates the thing created (Isaac D’Israeli).

Adele Critchley | April 21, 2015

Kennametal, Inc., v. Ingersoll Cutting Tool Company.

March 25, 2015

Before: Newman and Linn. Opinion by Linn.


The CAFC affirmed 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 (i) entered a new anticipation ground of rejection asserted by Ingersoll over US. Patent No. 6,554,548 (Grab); and (ii) affirmed the Examiner’s obviousness rejection.

The CAFC held that “contemplation” of a method in a prior art reference is sufficient disclosure for a rejection under §102. The CAFC further held that a finite number of solutions were present in Grab for the specific claimed combination, and that the motivation to select the specific combination was not undermined by the known problem of cobalt capping.


The ‘519 patent in question relates to cutting tools containing ruthenium as a binder that are coated using physical vapor deposition (PVD).

According to the ‘519 patent, it was unusual to include ruthenium with cobalt in a binder, and in those instances when ruthenium and cobalt were simultaneously used, no one had coated the tools using PVD. The patent suggested this was because the use of cobalt in a binder tended to create cobalt structures on the surface, known as ‘cobalt capping.’ Specifically, that the addition of ruthenium exacerbated cobalt capping, and that PVD is carried out at lower temperatures than other coating methods, and so high enough temperatures are not reached in order to avoid cobalt capping from occurring.

The inventors assigned their interests in the ‘519 patent to TDY Industries, Inc., and TDY sued Ingersoll for infringement. Subsequently, TDY assigned the ‘519 Patent to Kennametal. Ingersoll successfully petitioned the PTO for inter partes reexamination of the ‘519 patent, and the district court, in turn, halted the litigation.

Ingersoll submitted a request for inter partes reexamination claiming some of the original claims were anticipated under 35 U.S.C. §102(b), and that all of the claims were obvious under §103(a). The Examiner failed to adopt any of Ingersoll’s proposed anticipation rejections, but did reject all the pending claims as being obvious. In response, claim amendments were made.

Nevertheless, Ingersoll once more proposed both anticipation and obviousness rejections against the claims. Again, the Examiner refused to adopt the anticipation rejection and so, Ingersoll cross-appealed the Examiner’s refusal.

The Board found that the Examiner had erred in not adopting Ingersoll’s proposed rejection of pending claims 1 to 4, 9 to 18, 23, 24, 27 to 31, 35, 36, 45, 46, 49, 50, 58, 83, 85 and 89 as being anticipated by Grab.

The Board held that claim 5 of Grab expressly described the majority of the elements in pending claim 1 of the ‘519 patent.

Claim 1 of the ‘519 patent reads:

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.

Base claim 1 of Grab, from which claim 5 depends, defines a “coating cutting insert…having a hard refractory coating and a substrate where in the coating is adherently bonded to the substrate, the substrate comprising a tungsten carbide-based material…cobalt…chromium; the cobalt and the chromium forming a binder alloy.”

Claim 5 of Grab defines that “the binder alloy further includes one or more of tungsten, iron, nickel, ruthenium, and rhenium.”

The Board acknowledged that the claims of Grab did not teach that the coating is applied via PVD, but asserted that PVD is contemplated in the specification of Grab. Specifically, Grab teaches that “one or more of the coating layers…are applied by chemical vapor deposition (CVP) and moderate temperature chemical vapor deposition (MTCVD). However, applicants also contemplate that one or more layers…may be applied by physical vapor deposition (PVD).”

The board held that Grab anticipated claim 1 of the ‘519 patent since the combination of one of five metals with one of three coatings leads to only fifteen possibilities, which is a sufficiently definite and limited class of combinations.

The board rejected Kennametal’s argument of unexpected results, finding that the unexpected results lacked a connection to a novel feature in the claims.

Kennametal argued that Grab teaches more than the alleged 15 combinations due to the recitations “one or more” for the metals of claim 5, and “one or more coating layers” as described in the specification. Kennametal argued Grab teaches three to five coating layers in the examples of the specification. Based on this, Kennametal alleged there are actual 10,881 possibilities, albeit acknowledging that some would include the combination of ruthenium and PVD.  Kennametal argued that in every example Grab uses only CVD and MTCVD. In light of this, Kennametal argued that the use of PVD and ruthenium would not have been immediately envisaged to a person of ordinary skill in the art. Kennametal cited expert testimony’s which agreed that this specific combination would not have been considered viable to those of ordinary skill in the art.

Ingersoll disagreed with Kennametal’s allegation of combinations but asserted that even based on Kennametal’s calculation of possibilities, 17% or 29% would fall within the ambit of pending claim 1, and so Grab clearly anticipates the claim. Ingersoll asserted that the lack of example for PVD does not mean that the reference cannot anticipate such coating.

The CAFC held that the all the limitations of claim 1 are disclosed in Grab, and so the only question was whether the number of categories and components disclosed is so large that the combination of ruthenium and PVD coatings would not be immediately apparent.

The CAFC held that Grab’s “contemplation” of PVD is sufficient evidence that a reasonable mind would envisage applying a PVD coating, and there is no requirement for evidence that Grab actually performed the combination.

Kennametal argued that because of the problems relating to cobalt capping it would not have been obvious to combine ruthenium binders with PVD coating, citing supporting Declarations. Kennametal argued that the Board erred in rejecting its evidence, which compared the performance of various carbide cutting inserts, demonstrating that the claimed combination achieved a “surprising and unexpected” tool lifetime.

Ingersoll relied upon its own Declarations asserting that (i) the combination is obvious because there were a finite number of solutions; and (ii) the problem of cobalt capping and solutions has long been known and is independent to the presence of ruthenium.

Ingersoll argued that the Board correctly found that the unexpected results touted by Kennametal would have been present in the cutting inserts of Grab, and therefore lacked any connection to a novel feature of the invention.

The CAFC held that while a reference that anticipates an invention can, theoretically, still not make it obvious, here there is substantial evidence to support the Board’s findings that the combination of ruthenium binders and PVD coating would have been readily envisaged to those skilled in the art, and so it would have been obvious to that skilled artisan. The CAFC held that the express teaching in Grab for the combination of ruthenium and PVD was not significantly undermined by the known problem of cobalt capping.


A prior art document need not disclose actual performance of a potential combination amongst various options to be considered an anticipatory embodiment.

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 (CCPA 1962).

Any assertion of unexpected results should be connected to a novel feature of the invention.

Full Opinion

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