Hanita Metal Factory ltd. applied for Israel Patent Application No. 177336 and, on allowance, it published for opposition purposes. Isscar opposed the patent issuing. The applicant requested to amend the specification and neither Isscar, nor the public opposed, so the opposition concerns the amended specification.
The parties submitted their statements of case and evidence and then a hearing was held on 10 January 2017. The parties then submitted summaries and the Opposer filed their response to the summary.
The Application in question is titled “Chatter resistant end mill” and has one independent claim with seven dependent claims. The independent Claim 1 of the Application is as follows:
“A chatter-resistant end mill or shell mill or burr, comprising a shank portion and at least one cutting portion divided into a plurality of teeth by flutes disposed between said teeth, each tooth having at least one cutting edge,
Wherein a first angle separating said cutting edge of a first tooth from the cutting edge of a second tooth adjacent to said first tooth in a first direction is different from a second angle separating second cutting edge of said first tooth from the cutting edge of a third tooth adjacent to said first tooth in a second direction opposite the first direction,
Wherein a third angle separating the cutting edge of said second tooth from the cutting edge of a fourth tooth adjacent to said second tooth in said first direction is equal to an equal spacing angle defined by a value of 360 degrees divided by the number of said plurality of teeth,
Wherein one flute of the flutes is disposed between two adjacent teeth which are spaced apart at an angle exceeding said equal spacing angle, the one flute being wider and deeper than another one of the flutes.”
Thus the claimed invention includes a shank portion, a cutting portion, flutes, a tooth, a cutting edge, and various spaced apart cutting elements having angles defined in the dependent claims which are fairly clear when read together with the figures shown below.
The basis of the Opposition was various patents, catalogues and Russian metalworking standards. The claims were considered as claiming more than the disclosure deserved and that they were insufficiently supported. The Opposers also claimed that the effective date of the Application should be post-dated to the date of the claim amendment and then the claims could be disqualified by the Applicant’s own prior art.
The cutting tools claimed were carbides and the Russian standards were for Stainless steel cutting tools. The Applicant considered the standards were therefore irrelevant.
The burden of proof in patent opposition procedures is initially on the Applicant, see 665/84 Sanofi vs. Unipharm ltd. and 645-06-13 Unipharm vs. lilly Icos 25 January 2014. The Opposer does have to bring evidence to support their challenge (see Il 143977 Astra Zeneca vs. Unipharm, but then the Applicant has to prove that the claims are patentable.
In this instance, the grounds of the Opposition are lack of novelty, lack of inventive step, and insufficient disclosure as required by Sections 4, 5 and 13 respectively.
Section 4 defines the novelty requirement as follows.
- An invention is deemed new if it was not published, in Israel or abroad, before the application date—
(1) by written, visual, audible or any other description, in a manner that enables a skilled person to make it according to the particulars of the description;
(2) by exploitation or exhibition, in a manner that enables a skilled person to make it according to the particulars thus made known.
To cancel the Novelty of an Application a single piece of prior art has to fully describe the elements of the invention in a manner that enables persons of the art to make the invention. See Appeal 345/87 Hughes Aircraft vs. State of Israel p. d. 44(4) 45 (page 105 of the ruling).
The first rule is that to prove novelty destroying prior publication one has to identify a single document that describes the invention in its entirely and it is not sufficient to create a mosaic of different documents to create a general picture.
Hughes also states that:
A general description is insufficient to remove novelty if it is not enabling and does not provide enough signposts leading to the invention of the patent.
The requirement for showing the invention is explained in Appeal 4867/92 Sanitovsky vs. Tams ltd et al, p.d. 50(2), 509:
On one hand, the defense of a patent includes not just that described in the claims, but also the core of the invention [MF – what the British case-law refers to as the pith and marrow in a somewhat odd mixed metaphor] (section 49). On the other hand one can claim a lack of novelty when accused of infringement (section 4) not just when a piece of prior art describes all the elements of the invention, but also then the prior discloses the core of the invention.
The essence of the invention is that part that is central and essential to the workings of the invention in contradistinction to elements that can be substituted for or left out entirely. the main core will remain protected even if an essential element is switched for another that performs the identical function. Page 515-516.
See also See also Appeal 793/86 Michael Porat. vs. Z.M.L. Modern Medical Equipment, p.d. 44(4); 578 pages 583-584.
The Opposer considers that the claimed elements are described in the prior art. A brief summary of the art cited by the Opposers follow’s.
F10 is a “Drilling Groove Milling Cutter” that relates to a four-edged drilling groove milling cutter having end and peripheral cutting edges.”
F13 is titled “Roughing and Finishing Rotary Tool Apparatus and Method” and is described as follows:
“The rotary cutting tool of the present invention employs roughing and finishing blades on the same tool to produce roughing and finishing cuts in one cutting operation. The rotary cutting tool preferably has a roughing flute adjacent to each roughing blade and a finishing flute adjacent to each finishing blade. In highly preferred embodiments, the finishing flutes are smaller than the roughing flutes… The flutes are therefore preferably unequally spaced. In some highly preferred embodiments, the blades are unequally circumferentially spaced and are immediately behind the flutes. At least one finishing blade preferably extends radially farther than at least one roughing blade.”
Witness for the Applicant, Mr Hina admitted that element j of the application is mentioned in both F10 and F13:
Commissioner: … to the best of my understanding, we have just asked a very simple question, does F10 as translated into English in F10A show the 360 degree divided into sections, yes or no? If so, please refer to where it shown in this publication.
Mr Hina responded No.
Patent Attorney Luzzatto : you write that element j is not found in F13, correct?
Mr Hina: I repeat there is something not defined in the indices.
The test explained in Hughes Aircraft requires one publication to teach all elements. Since this is not the case, the claimed invention is novel.
The second grounds for cancellation was a lack of inventive step contrary to Section 5 which states:
An inventive step is a step which does not, to an average skilled person, appear obvious in the light of information published before the application date in ways said in section 4.
Unlike Novelty which requires a single document to teach an invention, an Inventive Step can be disqualified by a number of citations that provide a picture of what was known at the Application date:
The basic question of inventive step is determined by considering the total professional knowledge in the relevant field, and to do so it is legitimate to join different publications into a general picture Appeal 3314/77  page 209. However, one must always bear in mind that the joining together of the disparate documents must be obvious to persons of the art at the date in question; for if it requires an inventiveness to do so, particularly where scattered crumbs of knowledge are gathered together – the general picture obtained is not obvious and one cannot say that the patent has no inventive step.” –page 111.
See also Sanitovsky pages 515-516 and Appeal 793/86 Michael Porat vs. Tzamal Modern Medical Equipment, p.d. 44(4) 578, 585.
Thus unlike novelty where a single document is required to teach an invention, as far as Inventive Step is concerned, one can combine disparate documents so long as it would have been obvious to an average person of the art to do so.
Appeal 47/87 Hasam Reliable Defense Systems vs. Abraham Bahri, p.d. 45(5) 194 states that to show a lack of inventive step, one may cobble together different pieces of prior art.
The question of inventive step is determined by comparison to professional knowledge in the relevant field by combining disparate references without forgetting that their combination has to, itself, be obvious, so that if it requires an inventive step to combine the publications, particularly where disparate elements are collected from all over the place, the picture is not obvious and one cannot state that the invention lacks an inventive step.
Thus one has to consider whether persons of the art would have a motivation to combine the publications at the relevant date. See Opposition to IL 138347 Sarin Technologies ltd. vs. Ugi Technologies, 14 January 2008.
The US case-law developed a thumb rule for inventive step by combining publications or known elements under which one has to consider the teaching, suggestion or motivation to make the combination (see Section 51 of the ruling).
Further on (paragraph 51):
The Board of Appeals of the European Patent Office takes an approach known as the “could/would approach” to consider if a combination includes an inventive step. A combination of known elements is not considered obvious merely because a person of the art could have combined them, unless he would have been motivated to combine them to achieve some advantage.
Mr Bulhov testified that when designing a new tool bit, persons of the art deal with two issues” judder and removal of the scrap. There is no dispute that cutting tools with different angles were known and that the angle separation could provide stability. Mr Bulhov testified admitted that prior to the filing date, milling at two different angles was known.
The first piece of prior art cited, which was a catalogue from 2003, shows that Applicants were marketing a four angled milling bit, where two of the angles were different. The accompanying text stated “Chatter-free machining, avoids resonance vibration due to patent pending flute form design and constant, unequal flute spacing.”
Publications F18 and F19 are Russian standards titled “End Mills with Cylindrical Shank” and ” End Mills with Tapered Shank” respectively.
The Commissioner rejects Applicant’s claim that the standards merely recommend the invention but do not require it, since that is not sufficient to make the invention non-obvious, and establishes that the relevant features were known in the art. See Opposition to IL 166626 Teva Pharmaceuticals vs. Astra Zeneca LTD, 11 March 2017. https://blog.ipfactor.co.il/2017/04/20/patent-to-astrazeneca-successfully-opposed-by-teva/
F18 and F19 are Russian language documents that are difficult to date, but the most recent versions are 1996 which was 10 years before the filing date of the present invention. Although in Russian, the documents are directed to tool makers and are prior art in all respects Page 21 of F18 and page 4 of F18 states that “Mills shall be manufactured with non-uniform circumferential tooth pitch as shown in Fig. 3 and Table 3.”
Specific cutting angles are given for the various grooves.
The Applicant argues that since these specifications relate to high-speed steels and not carbides, they are not relevant. The Applicant considers that judder in carbides is a more serious problem. The Commissioner considers that the Applicant’s claim is weak as the claims and indeed the specification are not limited to carbides or indeed, to other specific materials. The Applicant has not explained why the choice of cutting tool material would lead to the assumption that the angles are different and the publications themselves, though directed to HSS do not teach away from other materials.
Thus element J is taught by F18 and F19 and persons of the art could be expected to combine this with other elements to reduce judder.
Publication 10 teaches a milling tool with two pairs of flutes, such that each pair of flutes has the same angle. The Applicant alleges that this teaches against having three separate angles as claimed, and thus F10 cannot be combined with F18 and F19 and does not teach the claimed invention.
It appears that the invention described in F10 combines two properties: the cutting surfaces are of different lengths and the angles of the flutes. The invention claimed in F10 directs persons of the art to combine wide flutes with long cutting surfaces:
“Therefore, according to the invention, larger chip spaces are provided for the long cutting edges having the unfavorable chips than for the short cutting edges having the favorable chips… By the interaction of the two features, the invention provides the possibility of optimum coordination of cutting edge length and chip space on the drilling groove milling cutter.”
The large scraps created by the large cutting edges require large flutes. Thus flutes 10 and 11 in Figures 2 and 3 of F10 are larger than flute 12 and 13. Thus F10 teaches the additional element claimed:
“On account of their width, the chips produced by the main drilling cutting edges require larger chip grooves than the chips of the intermediate drilling cutting edges. For this reason, the pitches 10, 11, located in each case in front of the rake faces of the main drilling cutting edges, as far as the next intermediate drilling cutting edge are configured to be greater than the pitches 12, 13 in front of the rake faces of the intermediate drilling cutting edges.”
A publication is considered as being prior art that may be combined with other publications if a person of the art would consider it obvious to do so. Citing R. Carl Moy, “Moy’s Walker on Patents”, 4th ed. 2009, p. 9-48 – 9-50 the Commissioner concludes that where the publications are trade publications in the field of interest one can assume that persons of the art would know about them, and the publication in question relates to milling tools with different sized flutes to minimize judder.
In light of the above, the Commissioner considers that the principles of reducing judder by different width flutes are known and together with F19 and F19, 4 and 5 fluted milling tools are known.
Furthermore, the dependent claims lack inventive step. These relate to difference cutting edge angles along the shank. Such variations are described in F13 and F13a and are referred to as unequal flute spacing. Thus the dependent claims are also not patentable. Claims 2and 4 claim standard ranges for the angles. Claim 4 claims different dimensions as described in F10 and claims 5 and 7 describe variations taught in F13 and F1a. Claim 8 relates to standard cutting edges.
Thus the Application lacks inventive step.
Section 13a of the Law states that:
the specifications shall end with a claim or claims that define the invention, on condition that each said claim reasonably arise out of the subject described in the specification.
This means that the claims define the scope of protection sought. The claims should be interpreted with respect to the specification taken as a whole, including the text and drawings. See Hughes 65.
In Appeal 8802/06 Unipharm vs. Smithkline Beecham from 18 May 2011 it is stated: that:
In accordance with Section 13 of the Patent Law, the protection of the invention is determined by the claims that define the invention, and not be the specification as understood in Section 12, which includes the title and description (see Hughes p. 68); however one can refer to the specification to explain the nature claims (see Appeal 2972/95 Yosef Wolf and Partners, ltd. vs Beeri Press Limited Partnership,
A ‘Greedy’ claim is one that attempts to protect more than it discloses. The extent that this term can be used with reference to the requirements of Section 13(a) is given in Appeal 1008/58 American Cyanamid vs. Lepitit et al. page 261 from 4 April 1960. See also Opposition by Teva to IL 142809 to Pharmacia AB from 26 February 2015. .
The Opposer claims that claim 1 is greedy in that it has much wider scope than is supported by the specification. The Applicant disputes this and argues that following the voluntary amendment, flute B is defined as the longest and deepest flute:
“Wherein one flute of the flutes is disposed between two adjacent teeth which are spaced apart at an angle exceeding said equal spacing angle, the one flute being wider and deeper than another one of the flutes.”
Page 8 does state that flute B is deeper and wider than flute A
“The flute 32 relating to angle B is wider and deeper than the flute 34 relating to angle A, so as to improve coolant feed and facilitate chip clearance and removal when teeth work with higher feed per teeth compared to equal tooth space dividing (by angle A).”
The specification provides that the angle of flute B is large than the angle of flute A. Amended claim 1 requires that the angle of flute B is the largest angle. This is not supported in the specification which only compares flute B with flute A. So amended claim 1 is not fairly supported by the specification.
Claim 1 is not-inventive and also is not adequately supported. The Opposition is accepted and IL 177336 is rejected. Costs may be claimed in accordance with circular MN 80.
I accept that the claims encompass combinations of known elements to create a cutting tool that is new. I also accept that unless one limits oneself to a specific tool design, the claims will always be wider than that demonstrated. My problem is that the type of features described are functional rather than aesthetic. At present, Israel design examiners consider functional features as non-patentable. We could even extend this and consider such cutting tool elements as replaceables and use public policy to restrict protection. If, however, we wish to encourage research and development of better performing cutting tools, we should provide some sort of protection for them to prevent immediate copying. Israel does not have a petty patent system or protection for purely functional design. It seems to me, therefore, that combining elements from different publications for tool bits to create a novel bit, should be patentable. We could limit the protection to combinations described and maybe the claims are overly wide. Perhaps what is missing here is dependent claims for specific tried and tested drill bits.
By training, I am a materials scientist and engineer. My PhD research was in hard metals and coatings. I did not study milling and though I understand the purpose of the various elements, I am inclined to agree with the Commmissioner that there is a rebuttable assumption that a design element known for a HSS tool would not be appropriate for a carbide tool. However, carbides are much harder and hence more brittle. Optimizing a new tool is not intuitive and probably is the result of much experimentation, but I don’t know if the combination has an inventive step. Shamgar’s guidelines in Hughes Aircraft are fine and dandy, but one really needs experts on cutting and milling to determine whether the combination of known elements in a new product of this type does or does not include an inventive step.