Kennametal, Inc. v. Ingersoll Cutting Tool Company , 780 F.3d 1376 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
KENNAMETAL, INC.,
Appellant
v.
INGERSOLL CUTTING TOOL COMPANY,
Appellee
______________________
2014-1350
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,417.
______________________
Decided: March 25, 2015
______________________
STEVEN MOORE, Kilpatrick Townsend & Stockton
LLP, San Francisco, CA, argued for appellant. Also repre-
sented by J. JASON LINK, N. DEAN POWELL, Winston-
Salem, NC.
NANDA ALAPATI, Womble, Carlyle, Sandridge & Rice,
PLLC, Tysons Corner, VA, argued for appellee. Also
represented by DAVID RYAN CROWE, Greensboro, NC; IAN
A. CALVERT, Winston-Salem, NC.
______________________
2 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
Before PROST, Chief Judge, NEWMAN, and LINN, Circuit
Judges.
LINN, Circuit Judge.
Kennametal, 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 Cut-
ting 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”). Because substantial evidence
supports the Board’s determinations of anticipation and
obviousness and because we see no error in the Board’s
legal conclusion of obviousness, we affirm.
I. BACKGROUND
A. The ’519 Patent
The ’519 patent was filed in 2004 and issued in 2007.
The ’519 patent relates to cutting tools containing ruthe-
nium as a binder that are coated using physical vapor
deposition (“PVD”). See, e.g., ’519 patent Title; id. Ab-
stract. The patent explains that cemented carbide cutting
tools are generally useful. Id. col.1 ll.15–19. These tools
are made by consolidating hard particles and a binder to
form a compact, which is then sintered to form a tool
blank from which a variety of tools can be formed. Id.col.1 ll.19–26. Cobalt is often used in the binder. Id. col.1
ll.48–50.
According to the ’519 patent, it was unusual to include
ruthenium with cobalt in the binder, and, in those in-
stances when a cobalt-ruthenium binder was used, no one
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 3
had coated the tools using PVD. Id. col.1 ll.54–56, col.2
ll.58–61. The patent suggests that the reason cobalt-
ruthenium binders were not coated by PVD was because
the use of cobalt in a binder tends to create cobalt struc-
tures on the surface—a process known as “cobalt cap-
ping.” Id. col.3 ll.6–10; id. col.3 ll.38–40. This problem is
supposedly exacerbated when ruthenium is included in
the binder. Id. col.3 ll.13–15. According to the patent,
PVD coating—which is done at a lower temperature than
other methods of coating, such as chemical vapor deposi-
tion—is not hot enough to re-melt the surface of the
binder, so coatings applied via PVD do not adhere well to
binders that produce cobalt capping. Id. col.3 ll.33–36.
Additionally, PVD coatings, as the patent describes, can
be too thin to compensate for the cobalt capping effect. Id.col.3 ll.36–37.
The inventors assigned their interests in the inven-
tion claimed in the ’519 patent to TDY Industries, Inc.
(“TDY”) at the time the application for the patent was
filed. ’519 patent Assignee. In 2010, TDY sued Ingersoll
for infringement of the ’519 patent. TDY Indus. Inc. v.
Ingersoll Cutting Tool Co., No. 2:10-cv-00790-CB (W.D.
Pa., filed June 10, 2010). After the suit was filed, TDY
assigned the ’519 patent to Kennametal. Ingersoll suc-
cessfully petitioned the Patent and Trademark Office (the
“Patent Office”) for inter partes reexamination of the ’519
patent, and the district court, in turn, stayed the litiga-
tion.
B. Proceedings at the Patent Office
Ingersoll submitted a request for inter partes reexam-
ination, 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 nu-
4 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
merous new claims. Pending claim 1 is representative,
and recites as amended:
1. A cutting tool, comprising:
a cemented carbide substrate, wherein the
substrate comprises hard particles and a
binder, and the binder comprises rutheni-
um; and
at least one physical vapor deposition
coating on at least a portion of the sub-
strate.
Ingersoll again proposed both anticipation and obvious-
ness rejections. The Examiner refused to adopt the
anticipation rejections but did reject all of the claims as
obvious. Kennametal appealed the rejections, and Inger-
soll cross-appealed the Examiner’s refusal to adopt its
proposed anticipation rejections.
In the Initial Board Decision, the Board found that
the Examiner erred in not adopting Ingersoll’s proposed
rejection of pending claims 1–4, 9–18, 23, 24, 27–31, 35,
36, 45, 46, 49, 50, 58, 83, 85 and 89 as anticipated by U.S.
Patent No. 6,554,548 to Grab (“Grab”). Initial Board
Decision, at *3–5.
The Board found that claim 5 of Grab expressly de-
scribed the majority of the elements recited in pending
claim 1 of the ’519 patent. Id. at *3–5. Claim 5 of Grab
and its parent, claim 1, recite:
1. A coated cutting insert comprising:
a rake face and a flank face, a cutting edge
at the juncture of the rake face and the
flank face;
the cutting insert having a hard refractory
coating and a substrate wherein the coat-
ing is adherently bonded to the substrate;
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 5
the substrate comprising a tungsten car-
bide-based material comprising a bulk
composition of at least about 70 weight
percent tungsten and carbon, between
about 3 weight percent and about 12
weight percent cobalt, and at least 0.09
weight percent chromium;
the cobalt and the chromium forming a
binder alloy:
wherein the binder alloy content being en-
riched in a surface zone of binder alloy en-
richment beginning near and extending
inwardly from a peripheral surface of the
substrate; and
wherein the bulk composition of the sub-
strate further comprises tantalum in an
amount up to about 10 weight percent, ni-
obium in an amount up to about 6 weight
percent, and titanium in an amount up to
about 10 weight percent.
5. The coated cutting insert of claim 1 wherein
the binder alloy further includes one or more of
tungsten, iron, nickel, ruthenium, and rhenium.
The Board noted that claim 5 of Grab specifically re-
cites five metals, one of which was ruthenium. Initial
Board Decision, at *4. Claim 5 also recites a “coating,”
but, the Board acknowledged, does not state that the
coating is applied via PVD. Id. The Board noted, howev-
er, that the specification of Grab discloses PVD as one of
three contemplated methods of coating. Id. Specifically,
Grab states:
Generally speaking, one or more of the coating
layers of the coating schemes are applied by chem-
ical vapor deposition (CVD) and moderate tem-
perature chemical vapor deposition (MTCVD).
6 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
However, applicants also contemplate that one or
more layers of a coating scheme may be applied by
physical vapor deposition (PVD).
Grab col.4 ll.56–61. The 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.
Because the Board found these claims anticipated, it
refused to consider whether these claims were also obvi-
ous. Id. at *7. The Board separately found claims “5–8,
19–22, 23, 24, 25, 26, 56, 57, 59, 86, and 90” 1 obvious over
Grab in view of additionally cited prior art. Id.Regarding obviousness, the Board affirmed the Exam-
iner’s rejections of: claims 33, 34, 37–44, 47, 48 and 84 as
obvious over U.S. Patent No. 6,214,247 to Leverenz (“Lev-
erenz”); claims 24, 25, 26, 49–52, 56, 57, 59, 86–90 and 93
1 Claims 23 and 24 appear to be erroneously includ-
ed in this list as the Board already ruled them anticipated
by Grab and it stated that it would not review the obvi-
ousness of the claims it already found anticipated.
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 7
as obvious over Leverenz in view of other prior art; and
claims 2–14, 16–23, 27, 31, 33–48, 58, 84 and 85, “[w]ith
respect to the dependent claims not already addressed,” 2
as obvious over Leverenz in view of T.L. Shing, et al., The
effect of ruthenium additions on the hardness, toughness
and grain size of WC-Co, 19 Int’l J. Refractory Metals &
Hard Materials 41 (2001). The Board rejected Ken-
nametal’s assertion that these claims provided unex-
pected results because it found that the unexpected
results lacked a nexus to the limitations recited in the
claims. Id. at *7–8.
The Board denied Kennametal’s request for a rehear-
ing, finding that although Grab appeared not to have
applied coatings by PVD, it still anticipated this usage.
Board Decision on Rehearing, at *3. It also found that
Grab’s teachings, especially in view of the art at the time,
would have avoided a cobalt capping problem and were
therefore enabling. Id. at *4.
II. DISCUSSION
Kennametal appeals all the Board’s rejections. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4).
A. Standard of Review
Anticipation under 35 U.S.C. § 102 is a question of
fact, while obviousness under § 103 is a question of law
based on underlying findings of fact. Flo Healthcare
Solutions, LLC v. Kappos, 697 F.3d 1367, 1375 (Fed. Cir.
2012) (citing cases). We review the Board’s factual find-
ings for substantial evidence and its legal conclusions
without deference. Id. at 1375–76 (citing cases). “Sub-
2 Presumably this refers to the Leverenz rejections
that were not previously addressed, as all these claims
were already determined to be anticipated and/or obvious
over some art.
8 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
stantial evidence is ‘such relevant evidence as a reasona-
ble mind might accept as adequate to support a conclu-
sion.’” In re Applied Materials, Inc., 692 F.3d 1289, 1294
(Fed. Cir. 2012) (quoting Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938)).
B. Anticipation
A 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. Cad-
bury 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 argues that Grab does not disclose the
combination of ruthenium as a binder and a PVD coating.
It notes that Grab discloses five potential metals to use in
the binder, which, allowing for combinations of metals
3 This provision has since been amended. See
Leahy–Smith America Invents Act (“AIA”), Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the pending claims have an effective filing date
before March 16, 2013, the pre-AIA § 102(b) applies. See
AIA, 125 Stat. at 293; In re Giannelli, 739 F.3d 1375, 1376
n.1 (Fed. Cir. 2014).
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 9
(e.g., the combination of tungsten and ruthenium), allows
for 31 different possibilities—although it recognizes that
16 of these include ruthenium. Op. Br. at 38. Ken-
nametal also notes that the examples in Grab include
three to five coating layers. Kennametal asserts that
allowing for three options for each coating creates a total
of 351 possible coating solutions, which, when multiplied
by the 31 different binder possibilities, allows for 10,881
possibilities. Op. Br. at 40. Kennametal further main-
tains that, in fact, claim 5 of Grab allows an infinite
number of options since, for instance, the percentages of
the various binders and the thickness of the coating are
undefined. Kennametal claims that the number of op-
tions taught by Grab distinguishes this case from Petering
and makes it more akin to cases where this court did not
find anticipation.
Furthermore, every example in Grab, Kennametal
points out, uses CVD or MTCVD methods of coating.
Kennametal contends that in this context, the use of
ruthenium as a binder and the contemplation of the use of
PVD as a coating were among a multiplicity of options so
that a person of skill in the art would not immediately
envisage the claimed combination. Citing its expert’s
testimony, Kennametal claims that the specific combina-
tion of ruthenium metal and PVD coating would not have
been considered viable.
Ingersoll responds that Grab discusses a coating,
which allows for three coating techniques, including PVD,
along with any one of five metal binders, including ruthe-
nium. Thus, according to Ingersoll, Grab effectively
discloses the combination of PVD coating with ruthenium.
Ingersoll also claims that the lack of PVD coating in the
examples of Grab does not mean the reference cannot
anticipate such coatings.
According to Ingersoll, a person of skill in the art
reading Grab would immediately envisage examples using
10 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
one metal as a binder and one type of coating—not combi-
nations of multiple metals or multiple coatings. In the
alternative, Ingersoll claims that allowing for multiple
coatings and/or metals only increases the likelihood that
Grab would teach embodiments within the scope of the
claim. For instance, of the 31 possible combinations of the
five metals, 16 include ruthenium. Ingersoll claims that
allowing for multi-metal and multi-coating embodiments
makes 17% or 29% of the embodiments described by Grab
fall within the ambit of pending claim 1. Resp. Br. at 20,
21. Ingersoll also argues that the fact that Grab teaches
five similar metals and three well-settled methods of
coating makes the scope of Grab’s teaching narrower, and,
consequently, more likely to be anticipatory.
Substantial evidence supports the Board’s determina-
tion 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 Ken-
nametal, since many of these are within the scope of its
claim. See id. at 1362 n.4 (“The fact that one of ordinary
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 11
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.”).
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.
Though it is true that there is no evidence in Grab of
“actual performance” of combining the ruthenium binder
and PVD coatings, this is not required. Novo Nordisk
Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355
(Fed. Cir. 2005) (quoting Bristol-Myers Squibb Co. v. Ben
Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001)).
“Rather, anticipation only requires that those suggestions
be enabled to one of skill in the art.” Id. (quoting Bristol-
Myers Squibb, 246 F.3d at 1379).
Accordingly, we affirm the Board’s determination that
pending claim 1 is anticipated. In its appeal brief, Ken-
nametal did not argue that any of the claims depending
from claim 1—namely pending claims 2–4, 9–18, 23, 24,
27–31, 35, 36, 45, 46, 49, 50, 58, 83 or 85—are not antici-
pated for any reason not present for claim 1. As for
independent claim 89, the only discussion of its independ-
ent patentability comes in a footnote, Op. Br. at 20 n.9,
which claims that it is “unclear” whether the Board
intended to reject claim 89 as anticipated. Kennametal
does not appear to make a substantive argument as to
why claim 89 might not be anticipated even if claim 1 is.
In any event, “[a]rguments raised only in footnotes . . . are
waived.” Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d
1280, 1294 (Fed. Cir. 2012) (citing SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
12 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
2006)). Accordingly, we affirm the Board’s determination
that claims 2–4, 9–18, 23, 24, 27–31, 35, 36, 45, 46, 49, 50,
58, 83, 85 and 89 are anticipated as well. See Sud-
Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009
(Fed. Cir. 2009) (refusing to consider the independent
validity of certain claims where the appellant did not
separately argue that they were patentable).
C. Obviousness
1. Waiver
As noted above, the Board found pending claims 2–14,
16–31, 33–52, 56–59, 84–88, 90 and 93 obvious over a
variety of prior art references. Initial Board Decision, at
*9. Kennametal challenges these findings. However,
before addressing the substance of these rejections we
address the threshold question of whether Kennametal
waived its right to challenge the Board’s invalidity deci-
sions for these claims.
In its brief to the Board appealing the Examiner’s re-
jections, all of which were based on obviousness, Ken-
nametal stated that “Patent Owner argues independent
claims 1, 15, 83, 89, and 93 as a group. The respective
dependent claims are not argued separately.” The Board
noted this in its Initial Board Decision, at *5, *7.
Ingersoll claims that because Kennametal failed to
argue at the Board for the independent patentability of
the remaining claims, we should not review the Board’s
decisions on these claims. Kennametal replies that, at
the time of its briefing, all of the claims were rejected for
obviousness. Kennametal argues that only when the
Board instituted a new basis for rejection, rejecting some
of the claims for anticipation, and correspondingly re-
grouping the claims, was there any reason Kennametal
should have separately argued for the patentability of the
remaining claims.
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 13
Kennametal is correct. “[A]rguments . . . cannot be
deemed waived if they were not previously required to
have been made.” Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008). At the Board, Kennametal was facing a
different set of rejections than it is now. Accordingly, we
see no reason to foreclose Kennametal from independently
challenging the obviousness determinations of these
claims.
2. Analysis
“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). The Patent Office “bears
the initial burden of showing a prima facie case of obvi-
ousness. When a prima facie case of obviousness is made,
the burden then shifts to the applicant to come forward
with evidence and/or argument supporting patentability.”
Giannelli, 739 F.3d at 1379 (citations omitted).
Kennametal claims that the Board failed to establish
a prima facie case of obviousness. Because of the prob-
lems relating to cobalt capping, Kennametal contends, it
would not have been obvious to combine ruthenium
binders with PVD coating. It cites the declarations of Dr.
Gilles Festeau, one of the named inventors on the ’519
patent, and Dr. Craig Morton, who claim that prior to
14 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
the ’519 patent it was difficult to manufacture PVD-
coated ruthenium-featured cutting tools, at least partially
because of cobalt capping effects. Dr. Morton claims that
“[t]he inventors listed on the ’519 patent discovered”
treatment conditions that unexpectedly allow for effective
PVD-coating.
Kennametal further claims that the Board erred in re-
jecting its evidence of secondary considerations. The ’519
patent compares the performance of various carbide
cutting inserts. See ’519 patent Figure 2; id. col.9 l.33–
col.10 l.23. According to Kennametal, the data demon-
strate that the combination of PVD-coating and rutheni-
um binders achieves a “surprising and unexpected” tool
lifetime. Kennametal claims that because the Board
rejected the independent claims as anticipated by Grab, it
never considered whether those claims would also be
obvious. According to Kennametal, this is especially
problematic for obviousness rejections of claims such as
claim 33, which were not based on Grab at all.
Ingersoll responds that the Examiner’s Right of Ap-
peal Notice (“Notice”) explained that both Grab and
Leverenz disclosed a finite number of possibilities, so that
it would have been obvious to try ruthenium binders and
PVD coatings, both of which were expressly taught.
Ingersoll relies on the declarations of Dr. Dennis Quinto,
who opined that the invention was obvious because there
were a finite number of solutions, and Mr. Kenneth
Brookes, who opined that the problem of cobalt capping
and solutions to it have long been known, and these
solutions are independent of the presence of ruthenium.
Ingersoll argues that the Board correctly found that
the unexpected results touted by Kennametal would have
been present in the inserts made according to Grab and,
therefore, lacked any nexus to a novel feature of the
invention. Ingersoll further contends that by adopting the
Notice, the Board adopted the Examiner’s reasoned
KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY 15
explanation that there was insufficient evidence to
demonstrate that the unexpected results were due to the
combination of PVD and ruthenium.
As discussed earlier, infra at 10–11, substantial evi-
dence 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 expecta-
tion 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.
Substantial evidence also supports the Board’s deter-
mination that there was “factual[] support[]” for the
Examiner’s conclusion in the Notice that the limitations
of claims 33, 34, 37–44, 47, 48 and 84 were taught in
Leverenz. Initial Board Decision, at *8 (citing Notice at
18–20). The Notice states that Leverenz teaches produc-
ing cutting inserts using elements “within Group VIII of
the periodic table (elements having atomic numbers 26–
28, 44–46, and 76–78),” and that ruthenium has atomic
number 44. Notice at 19 (quoting Leverenz col.5 ll.46–
48). The Notice also remarks that Leverenz teaches that
the inserts can be coated using PVD. Id. (citing Leverenz
col.8 ll.47–51). These teachings provide substantial
evidence to support the Board’s legal conclusion of obvi-
ousness.
Kennametal’s claim of unexpected results is unavail-
ing. Kennametal cites to the ’519 patent that, allegedly,
shows that the combination of ruthenium binder and PVD
16 KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL COMPANY
coating results in unexpected tool lifetimes. As discussed
above, the precise combination of ruthenium binders and
PVD coatings was taught in Grab. Accordingly, “the
offered secondary consideration actually results from
something other than what is both claimed and novel in
the claim, [so] there is no nexus to the merits of the
claimed invention.” In re Huai-Hung Kao, 639 F.3d 1057,
1068 (Fed. Cir. 2011). Thus, Kennametal’s secondary
consideration argument falls short.
In its opening brief, Kennametal did not argue for the
independent patentability of any of pending claims 2–14,
16–31, 33–52, 56–59, 84–88, 90 and 93. It only contested
that the combination of ruthenium as a binder and PVD
as a coating was non-obvious. In its reply brief, Ken-
nametal claimed that the prior art did not teach the
limitations found in certain dependent claims regarding
the specific amounts of ruthenium in the binder. Reply
Br. at 22–23. It raised this argument too late.
“[A]rguments not raised until [the] reply brief are
waived.” Lifestyle Enter., Inc. v. United States, 751 F.3d
1371, 1377 (Fed. Cir. 2014) (citing Becton Dickinson & Co.
v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir. 1990)).
Accordingly, we need not, and do not, separately analyze
whether the Board correctly found obviousness even as to
the additional limitations recited in these claims. Thus,
we affirm the Board’s finding that claims 2–14, 16–31,
33–52, 56–59, 84–88, 90 and 93 would have been obvious.
III. 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.
AFFIRMED