Ex Parte Ben Salah et alDownload PDFPatent Trial and Appeal BoardMay 24, 201812181597 (P.T.A.B. May. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/181,597 07/29/2008 Nihad BEN SALAH 32292 7590 05/29/2018 NORTON ROSE FULBRIGHT CANADA LLP (PWC) 1, PLACE VILLE MARIE SUITE 2500 MONTREAL, QC H3B IRI CANADA UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 15012800 US JR/njp 2200 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 05/29/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipcanada@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIHAD BEN SALAH, ALAIN BOUTHILLIER, MICHEL FREDERICK, and JEAN FOURNIER Appeal 2017-009001 1 Application 12/181,5972 Technology Center 3700 Before ANTON W. PETTING, BRUCE T. WIEDER, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 47-51, 54, and 56-63. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appeal Brief ("Br.," filed Mar. 6, 2017), and the Examiner's Answer ("Ans.," mailed Apr. 6, 2017), and the Non-Final Office Action ("Non-Final Act.," mailed May 19, 2016). 2 According to Appellants, the real party in interest is Pratt & Whitney Canada Corp. Br. 2. Appeal2017-009001 Application 12/181,597 BACKGROUND "The technical field [ of the Application] relates generally to a method for wire electro-discharge machining parts." Spec. ,r 1. ILLUSTRATIVE CLAIM Claim 47 is the only independent claim on appeal. It recites: 4 7. A method for machining a part, comprising, in sequence: wire electro-discharge machining the part using a wire electrode having a zinc component to create a recast layer having an initial composition make-up including a zinc content and at least one other material content in an outer surface thereof as a result of wire electro-discharge machining the part; and removing at least a portion of the zinc content from the outer surface of the recast layer without substantially altering the remainder of the initial composition make-up of the recast layer by submersing the part in a zinc-removing solution to remove the zinc content that is free within the recast layer and to produce a final composition make-up of the recast layer, the zinc-removing solution dissolving the zinc content that is free for removal from the outer surface and into the zinc-removing solution, the final composition make-up being substantially identical to the initial composition make-up except for the removed zinc content. Br. 15. REJECTIONS 1. The Examiner rejects claims 47-51 and 54 under 35 U.S.C. § 102(b) as anticipated by Ito. 3 3 Ito et al., US 4,806,721, iss. Feb. 21, 1989. 2 Appeal2017-009001 Application 12/181,597 2. The Examiner rejects claims 47--49, 54, 56, and 61---63 under 35 U.S.C. § I03(a) as unpatentable over Tang4 in view of Ito. 3. The Examiner rejects claims 47--49, 54, 56, and 60---63 under 35 U.S.C. § I03(a) as unpatentable over Fishter5 in view of Ito. 4. The Examiner rejects claims 47--49, 54, 56, and 60---63 under 35 U.S.C. § I03(a) as unpatentable over Howley6 in view ofLee7 and Stinson. 8 5. The Examiner rejects claims 47--49, 54, 56, and 61---63 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Ito. 6. The Examiner rejects claim 60 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Ito and Fishter. 7. The Examiner rejects claims 50 and 51 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Lee, Stinson, and Boord. 9 8. The Examiner rejects claims 50 and 51 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Ito and Boord. 9. The Examiner rejects claim 57 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Lee, Stinson, and Cuneo. 10 IO.The Examiner rejects claim 57 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Ito and Cuneo. 4 Tang, US 2007/0298173 Al, pub. Dec. 27, 2007. 5 Fishter et al., US 4,411,730, iss. Oct. 25, 1983. 6 Howley, US 2004/0064945, pub. Apr. 8, 2004. 7 Lee, US 2006/0138091 Al, pub. June 29, 2006. 8 Stinson, US 2006/0222844 Al, pub. Oct. 5, 2006. 9 Boord et al., US 4,759,595, iss. July 26, 1988. 1° Cuneo et al., US 4,080,513, iss. Mar. 21, 1978. 3 Appeal2017-009001 Application 12/181,597 I I.The Examiner rejects claims 58 and 59 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Lee, Stinson, and Hsu. 11 12.The Examiner rejects claims 58 and 59 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Ito and Hsu. 13.The Examiner rejects claims 58 and 59 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Lee, Stinson, and Reinhold. 12 14.The Examiner rejects claims 58 and 59 under 35 U.S.C. § I03(a) as unpatentable over Howley in view of Ito and Reinhold. DISCUSSION Anticipation With respect to claim 4 7, we are persuaded by Appellants' argument that Ito does not disclose a method as claimed. See Br. 6-9. Specifically, we agree with Appellants that Ito does not disclose "removing at least a portion of the zinc content from the outer surface of the recast layer without substantially altering the remainder of the initial composition make-up of the recast layer" as required by claim 4 7. The Examiner finds that Ito discloses a method as claimed, and with respect to the limitation quoted above, the Examiner quotes the claim language and points to Ito column 2, lines 1-25. Non-Final Act. 3; see also Ans. 3, 17-18. However, we agree with Appellants that this portion of Ito fails to explicitly or implicitly disclose the step of removing at least a portion of the zinc content from the outer surface of the recast layer as claimed. Ito discloses: 11 Hsu et al., US 6,177,299 Bl, iss. Jan. 23, 2001. 12 Reinhold, US 3,468,724, iss. Sept. 23, 1969. 4 Appeal2017-009001 Application 12/181,597 When a conventional wire electrode 1 of copper, brass or steel is fed along upwardly or downwardly with respect to a workpiece during machining as shown in FIG. 3, portions of the wire electrode 1 are often scattered and deposited on an upper or lower end of a groove 4 cut in the workpiece 2. The deposited material 5 is mainly composed of copper or steel, and it has been observed that the material is deposited behind the wire electrode 1 as it cuts into the workpiece 2 as illustrated in FIGS. 3A. The deposit 5 on the machined surface tends to impair the dimensional accuracy of the cut groove 4. Such a deposited layer 5 has a thickness in the range of about 10 to 100 microns in areas where large machining energy is applied. As the machining energy is increased, the cut groove 4 is sometimes filled with the deposited material as shown in FIG. 4. This undesirable phenomenon results in various drawbacks. The workpiece having been machined cannot be removed from the wire electrode. During machining, the machining solution 3 ejected coaxially with the wire electrode 1 does not enter the electrode-to-workpiece gap, causing a gaseous electrical discharge to lower the cutting speed and resulting in a danger of breaking the wire electrode 1. The deposit 5, mainly of copper, iron or the like, can only be removed with a dangerous chemical such as fuming nitric acid, a procedure which is tedious, time-consuming, and dangerous. Therefore, conventional wire electrodes have suffered from many drawbacks and have proven unsatisfactory. SUMMARY OF THE INVENTION The present invention has been made in view of the above-discussed drawbacks of the conventional electrodes. It is an object of the present invention thus to provide a wire electrode which has a high tensile strength, results in the deposition of no appreciable amount of its own material on a workpiece, and can machine a workpiece at an increased speed and a high accuracy. 5 Appeal2017-009001 Application 12/181,597 Ito col. 1, 1. 56-col. 2, 1. 28. Even if we were to agree with the Examiner that Ito contemplates a recast layer including zinc based on the language "or the like" found in the quote above (see Non-Final Act. 17), the Examiner does not adequately explain how Ito discloses removing at least a portion of the zinc content without substantially altering the remainder of the initial composition of the recast layer as required by claim 4 7. The Examiner merely addresses this issue by stating "[ w ]ith regards to [Appellants'] arguments concerning Ito failing to disclose removing zinc, Ito teaches the use of nitric acid which will remove copper, iron or the like where the like would include zinc." Non-Final Act. 17. However, the claim requires more than the mere removal of zinc and requires that the recast layer include zinc and at least one other material content and that the removal of zinc be done without substantially altering the remainder of the initial composition of the recast layer. The rejection does not appear to address these additional requirements in the claim. Based on the foregoing, we are persuaded of reversible error in the anticipation rejection of claim 4 7. Accordingly, we do not sustain the rejection of claim 47 here. For the same reasons, we also do not sustain the rejection of dependent claims 48-51 and 54 here. Obviousness over Tang and Ito With respect to claim 47, the Examiner finds, inter alia, that "Tang discloses the claimed invention except explicitly that the EDM wire contains zinc that produces a recast layer containing zing which is then removed." Non-Final Act. 5 ( citing Tang ,r,r 4--12, 36). Further, the Examiner finds that Ito discloses an EDM wire that contains zinc and produces a recast layer containing zinc that is removed with nitric acid, and the Examiner concludes 6 Appeal2017-009001 Application 12/181,597 that "[i]t would have been obvious ... to have modified the EDM process by using a wire that contains zinc and then removing any zinc in the recast layer with a nitric acid in order to target the zinc component." Id. We are persuaded by Appellants' arguments that the rejection contains reversible error. Appellants note, and we agree, that even though Tang discloses that a master may be formed using wire EDM, Tang is silent regarding the formation of a recast layer. Br. 10. Further, as discussed above, Ito fails to disclose removing at least a portion of the zinc content from the outer surface of the recast layer without altering the initial composition make-up of the recast layer. Thus, neither Tang nor Ito individually disclose removing zinc content from a recast layer as claimed and the Examiner does not adequately explain how the combination of Tang and Ito would lead to the claimed method. Based on the foregoing, we are persuaded of reversible error in the rejection of claim 47 over Tang in view Ito. Accordingly, we do not sustain the rejection. We also do not sustain the rejection of dependent claims 48, 49, 54, 56, and 61---63 for the same reasons. Obviousness over Fishter and Ito Here, the Examiner finds that "Fishter discloses the claimed invention except explicitly that the EDM wire contains zinc and produces the recast layer containing zinc which is then removed." Non-Final Act. 6 (citing Fishter Fig. 3a; col. 2, 11. 4--27; col. 5, 11. 23--44; col. 5, 1. 64--col. 6, 1. 2). The Examiner relies on Ito for the same reasons discussed in the previous rejection and concludes that "[i]t would have been obvious ... to have modified the EDM process by using a wire that contains zinc and then 7 Appeal2017-009001 Application 12/181,597 removing any zinc in the recast layer with a nitric acid solution in order to target the recast layer and/or zinc component." Id. We are persuaded of reversible error by Appellants' arguments regarding this rejection. First, we note that although Fishter discloses producing a recast layer, Fishter discloses completely removing the recast layer and does not disclose that the recast layer includes zinc. See, e.g., Fishter col. 4, 11. 56-67; see also Br. 11. Further, as discussed above, Ito does not disclose removing a portion of the zinc content from the outer surface of the recast layer without substantially altering the remainder of the initial composition of the recast layer. Thus, neither Fishter nor Ito individually disclose removing zinc content from a recast layer as claimed and the Examiner does not adequately explain how the combination of Fishter and Ito would lead to the claimed method. Based on the foregoing, we are persuaded of reversible error in the rejection of claim 47 over Fishter in view Ito. Accordingly, we do not sustain the rejection. We also do not sustain the rejection of dependent claims 48, 49, 54, 56, and 60-63 for the same reasons. Obviousness over Howley, Lee, and Stinson Here, the Examiner finds: Howley discloses the claimed invention except explicitly that the electrode wire contains zinc component; that the recast layer has a zinc component that should be removed; wherein removing the at least portion of the zinc content from the outer surface of the recast layer comprises removing at least a portion of non-alloyed zinc content from the outer surface of the recast layer; the final composition make-up being substantially identical to the initial composition make-up except for the removed zinc content. 8 Appeal2017-009001 Application 12/181,597 Lee discloses that the electrode wire contains zmc component (par. 40-44) and is used for EDM (Fig. 9). Stinson discloses that a zinc component (may be removed by acid bath) (par. 36); wherein removing the at least a portion of the zinc content from the outer surface of the recast layer comprises removing at least a portion of non-alloyed zinc content from the outer surface of the recast layer (par. 36); the final composition make-up being substantially identical to the initial composition make-up except for the removed zinc content whereby the zinc portion is eliminated (par. 36, note that Stinson states that the zinc layer is "removable" which is taken to mean that it is removable completely); the zinc- removing solution is a nitric acid solution (par. 36); at least [a] portion of the zinc layer may be removed by grinding (par. 36). Non-Final Act. 8-9. The Examiner concludes that it would have been obvious to modify Rowley's process "by utilizing an electrode wire containing zinc as disclosed by Lee due to the fact that the spark quality is improved and to remove the zinc content as disclosed by Stinson in order to reduce the chance of corrosion." Id. at 9. We are persuaded of reversible error in the rejection here at least to the extent that the Examiner relies on the art to teach removing zinc content from the outer surface of a recast layer without substantially altering the remainder of the composition make-up of the recast layer. Stinson discloses the use of a substrate, which may include zinc, on which material for the formation of a stent is deposited. Stinson ,r 36. After the tubular member of the stent is formed, the substrate is removed by dissolution by immersion in nitric acid. Id. Although Stinson teaches the removal of zinc using nitric acid, Stinson does not disclose the removal of zinc from a recast layer or even the removal of zinc from a substrate without altering a remaining initial composition of the substrate. As Appellants note, Stinson only discusses the 9 Appeal2017-009001 Application 12/181,597 possible formation of a recast layer after the substrate is removed and Stinson is silent regarding the removal of zinc from the recast layer. See Stinson ,r,r 39, 40. Further, although Howley discusses the potential formation of a recast layer, Howley discloses the complete removal of such a recast layer. See Howley at ,r 44. Finally, Lee discloses manufacturing a zinc-coated electrode wire, but Lee fails to disclose anything regarding the creation or removal of a recast layer in the portions cited by the Examiner. See Lee ,r,r 40-44. Based on the evidence cited in the record before us, and without further substantive explanation from the Examiner, we agree with Appellants that the art fails to teach or otherwise make obvious the claim requirement of removing a portion of the zinc content from the outer surface of a recast layer without substantially altering the remaining initial composition make-up of the recast layer. See Br. 12-13. Based on the foregoing we are persuaded of reversible error in the rejection of claim 4 7 over Howley, Lee, and Stinson. Accordingly, we do not sustain the rejection of claim 47 here. For the same reasons, we also do not sustain the rejection of dependent claims 48--49, 54, 56, and 60-63. Obviousness over Howley and Ito Here, the Examiner finds: Howley discloses the claimed invention except explicitly that the electrode wire contains zinc component; that the recast layer has a zinc component that should be removed; wherein removing the at least portion of the zinc content from the outer surface of the recast layer comprises removing at least a portion of non-alloyed zinc content from the outer surface of the recast layer; the final composition make-up being substantially identical to the initial composition make-up except for the removed zinc content. 10 Appeal2017-009001 Application 12/181,597 Non-Final Act. 10-11 (citing Howley Figs. 10, 12; Abstract; ,r,r4, 26, 44, 460). Thus, the Examiner relies on Ito as disclosing "wherein removing the at least a portion of the zinc content from the outer surface of the recast layer comprises removing at least a portion of non-alloyed zinc content from the outer surface ... the final composition make-up being substantially identical to the initial composition make-up except for the removed zinc content. ... " Id. 11. As found above, the portions of Ito relied upon by the Examiner do not disclose a recast layer including zinc and at least one other material content and the removal of zinc from the recast layer without substantially altering the remainder of the initial composition of the recast layer. Here, the Examiner does not otherwise explain why these limitations would have been obvious in light of Ito's disclosure. For this reason, we are persuaded of reversible error in the rejection of claim 47 here. Accordingly, we do not sustain the rejection of claim 47 as obvious over Howley and Ito. For the same reasons, we do not sustain the rejection of dependent claims 48, 49, 54, 56, and 61---63. Remaining Obviousness Rejections With respect to the remaining rejections of claims 50, 51, and 57-60, the Examiner does not rely on the art of record in a manner that cures the deficiency in the rejections of independent claim 47 as discussed above. Accordingly, we do not sustain the remaining rejections of dependent claims 50, 51, and 57---60 for the reasons discussed above. 11 Appeal2017-009001 Application 12/181,597 CONCLUSION We REVERSE the rejections of claims 47-51, 54, and 56-63. REVERSED 12 Copy with citationCopy as parenthetical citation