Digest of Kennametal, Inc. v. Ingersoll Cutting Tool Co., No. 2014-1350 (Fed. Cir. Mar. 25, 2015) (precedential). On appeal from P.T.A.B. in Reexamination No. 95/001,417. Before Prost, Newman, and Linn.

Procedural Posture: Appellant Kennametal appealed the Patent Trial and Appeal Board’s rejection of new pending claims and affirmance of the Examiner’s rejection of certain remaining claims in an inter partes reexamination. CAFC affirmed.

  • Anticipation: Prior art reference disclosing a binder consisting of one of five metals, one of which is ruthenium, together with a coating anticipates the claims using ruthenium as the binder that is combined with a physical vapor deposition (“PVD”) coating, because PVD is a coating method disclosed in this prior art, even if not its focus. The fact that the prior art discloses five metals and three coating methods does not create a voluminous amount of combinations that would not anticipate the claimed binder and coating.
  • Obviousness: Substantial evidence supports the Board’s determination that the prior art reference taught combining a ruthenium binder with a PVD coating. While anticipatory evidence “can, theoretically, still not make [an invention] obvious, see Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 n.2 (Fed. Cir. 2008), that is the rare case.” It would have been obvious for a person of ordinary skill in the art to combine the claimed binder and coating among those disclosed in the prior art with a reasonable expectation of success. The alleged concern with cobalt capping generally associated with using ruthenium does not render the claimed invention nonobvious, because other prior art has suggested using elements “within Group VIII of the periodic table” for cutting inserts. Additionally, because appellant did not raise the independent patentability of the challenged dependent claims with the Board following the Examiner’s finding of anticipation and obviousness for their corresponding independent claim, the appellant has waived its right to appeal the obviousness rejection of those additional limitations.