Ex Parte BEN SALAH et al

Patent Trial and Appeal Board

May 24, 2018

12181597 (P.T.A.B. May. 24, 2018)

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.
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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.
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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.
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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.
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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
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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
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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.
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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
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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.
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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.
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CONCLUSION
We REVERSE the rejections of claims 47-51, 54, and 56-63.
REVERSED
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