Ex Parte LyDownload PDFPatent Trial and Appeal BoardFeb 22, 201310332672 (P.T.A.B. Feb. 22, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/332,672 01/10/2003 Michel Ly DEB-736US 8132 7590 02/22/2013 Allan Ratner RatnerPrestia Suite 301 One Westlakes Berwyn P O Box 980 Valley Forge, PA 19482-0980 EXAMINER ELVE, MARIA ALEXANDRA ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 02/22/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHEL LY ____________ Appeal 2010-006571 Application 10/332,672 Technology Center 3700 ____________ Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and GAY ANN SPAHN, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michel Ly (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2010-006571 Application 10/332,672 2 The Claimed Subject Matter The claimed subject matter relates to “electrode wires for spark erosion machining,” having a structure that “combine[s] fast erosion, very accurate machining, and reduced electrode wire manufacturing cost.” Spec. 1, ll. 5-6; Spec. 4, ll. 18-21. Claims 1, 5, 6, 7, and 9 are independent and claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An electrode wire for spark erosion machining comprising a metal core coated with a surface layer of zinc, wherein the thickness of the surface layer of zinc is from approximately 2 μm to approximately 4 μm and the zinc layer comprises at least 90% by weight zinc. The Rejections The following Examiner’s rejections, under 35 U.S.C. § 103(a), are before us for review: I. claims 1, 3, 4, and 16 as unpatentable over Tominaga (US 4,686,153, issued Aug. 11, 1987); II. claims 2 and 5 as unpatentable over Tominaga and Briffod (US 4,977,303, issued Dec. 11, 1990); III. claims 2 and 5 as unpatentable over Tominaga, Briffod, and Mukherjee (US 5,808,262, issued Sep. 15, 1998); IV. claims 6, 12, and 13 as unpatentable over Tominaga and Tomalin (US 4,717,804, issued Jan. 5, 1988); V. claim 11 as unpatentable over Tominaga, Tomalin, and Briffod; VI. claims 14 and 15 as unpatentable over Tominaga, Tomalin, and Mukherjee; Appeal 2010-006571 Application 10/332,672 3 VII. claims 7-10, 17, 18, and 20 as unpatentable over Mukherjee and Tominaga; and VIII. claim 19 as unpatentable over Mukherjee, Tominaga, and Briffod. OPINION Rejection I – Obviousness based on Tominaga Appellant argues claims 1, 3, 4, and 16 as a group and we select independent claim 1 as the representative claim. See App. Br. 8-11; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 3, 4, and 16 fall with claim 1. The Examiner finds that Tominaga discloses the intermediate product of an EDM or electric discharge machining wire having a steel, brass or copper clad steel core and a two micron thick zinc surface layer that is approximately 100% zinc. Ans. 3-4 (citing Tominaga, col. 5, ll. 49-54). Appellant argues that “the prior art must not be parsed, but considered as a whole,” and when “[v]iewed as a whole, Tominaga does not, as the rejection alleges, teach an EDM wire having a 2 μm thick surface layer of approximately 100% zinc.” App. Br. 9. Rather, “Tominaga discloses an electrode wire for electric discharge machining comprising a core wire made of copper-clad steel wire, 10% to 70% of the sectional area of the copper- clad steel wire being occupied by copper, and a copper-zinc alloy layer covering the core wire,” wherein “[t]he preferable thickness of the copper- zinc alloy layer ranges from 0.1 to 15 μm, and the average concentration of zinc in the copper-zinc alloy layer is preferably less than 50% by weight but not less than 10% by weight.” Id. It has long been held that an intermediate product or article can anticipate a claimed article even if the intermediate product is merely a stage Appeal 2010-006571 Application 10/332,672 4 in the final production of a non-anticipatory article. See In re Mullin, 481 F.2d 1333, 1335-6 (CCPA 1973) (an article that is intended and appreciated is no less anticipatory be it an intermediate structure rather than an end use item) (citing In re Herbert, 461 F.2d 1390, 1394 (CCPA 1972)). With regard to obviousness and an intermediate product, the court in Mullin held that the Board erred by affirming an obviousness rejection because the reference did not indicate that the intermediate product could be utilized as proposed by the Examiner. Mullin at 1337. In other words, the rationale for the rejection was based upon a use that was not disclosed by the reference. Here, in contrast, Tominaga recognizes that the intermediate product can be utilized for EDM, as in the Examiner’s proposed combination. See Tominaga, col. 1, ll. 61-67. Thus, we are not persuaded that the Examiner erred in relying on Tominaga’s intermediate product even though that product is merely a stage in the final production of the wire having a surface layer of copper-zinc alloy. Appellant also argues that “Tominaga expressly disparages zinc- coated, as opposed to its copper-zinc alloy-coated, wires for electric discharge machining” and “the copper-zinc alloy is critical to Tominaga’s teachings and to achieving the object of its teachings, i.e.[,] the formation of a wire for use in EDM.” App. Br. 10 (citing Tominaga, col. 1, ll. 61-67, col. 5, l. 65 to col. 6, l. 17, and col. 7, ll. 9-18). More particularly, Appellant argues that a person of ordinary skill in the art would have been dissuaded by Tominaga’s teachings as a whole from making a zinc-coated wire for electric discharge machining and modifying Tominaga’s copper-zinc alloy coating to produce a wire with a zinc-coating that would make the wire unsatisfactory for use in EDM. App. Br. 11 (citing Tominaga, col. 2, ll. 3-3 Appeal 2010-006571 Application 10/332,672 5 and the Manual of Patent Examining Procedure (MPEP) § 2143.01 V (citing In re Gordon, 733 F. 900 (Fed. Cir. 1984) (“If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”). Although Tominaga acknowledges that the use of zinc for the surface layer of an electric discharge machining wire requires lesser machining speeds, we do not agree that Tominaga criticizes, discredits or otherwise discourages using a zinc surface layer for electric discharge machining in order to teach away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Further, the Examiner is not “modifying Tominaga’s copper-zinc alloy coating to produce a wire with a zinc-coating” as stated by Appellant, but rather is simply pointing to an intermediate product disclosed in the Tominaga reference, wherein the wire has a zinc-coating. Thus, there is no modification rending the prior art unsatisfactory for its intended purpose. Accordingly, we sustain the Examiner’s rejection of independent claims 1, and claims 3, 4, and 16 which fall therewith, as unpatentable over Tominaga. A disclosure that anticipates renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of obviousness.” Connell v. Sears Roebuck & Co., 722 F.3d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982)). Appeal 2010-006571 Application 10/332,672 6 Rejection II – Obviousness based on Tominaga and Briffod Dependent claim 2 Claim 2 depends from claim 1 and recites that “for an outside diameter from approximately 0.25 mm to approximately 0.30 mm, the thickness of the surface layer of zinc is from 3 μm to 4μm.” The Examiner finds that Tominaga’s intermediate product as discussed supra for claim 1 does not have a zinc thickness of from 3 μm to 4μm. Ans. 4. To cure the deficiency of Tominaga, the Examiner turns to Briffod’s disclosure of an intermediate product EDM wire having a copper, steel, brass or carbon core with a surface layer of zinc ranging from 5 to 20 μm and having approximately 100% by weight zinc. Id. (citing Briffod, col. 3, ll. 29-31 and 49-54). The Examiner acknowledges that Briffod does not teach a zinc layer within claim 2’s range, but concludes that it would have been obvious to one of ordinary skill in the art to modify Tominaga by the teaching of Briffod “to form a slightly thicker zinc coating . . . because this is merely a variation of an already known zinc surface thickness.” Ans. 4-5. Appellant argues that neither Tominaga’s intermediate product nor Briffod’s intermediate product disclose a wire having a zinc coating thickness of 3 to 4 μm. App. Br. 12. We agree with Appellant that neither Tominaga nor Briffod teaches claim 2’s 3 to 4 micron thickness for the zinc layer. More particularly, as the intermediate product of Tominaga has 2 micron thick zinc coating layer (Tominaga, col. 5, l. 53) and the intermediate product of Briffod has a 5 to 20 micron zinc coating layer (Briffod, col. 3, ll. 50-52), we do not sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Tominaga and Briffod. Appeal 2010-006571 Application 10/332,672 7 Independent claim 5 Independent claim 5 is identical to claim 1 as quoted supra, but additionally recites that “the surface layer of zinc is substantially free of oxidized surface areas, and consequently has a bright metallic appearance.” The Examiner concludes that “it would have been obvious to one of ordinary skill in the art to note that the intermediate product does not use a heat treatment and thus an oxide layer would not be formed.” Ans. 5. Appellant argues that “in order to achieve a surface layer of zinc that is substantially free of oxidized surface areas and has a bright metallic appearance, one of skill would have to ignore Briffod’s central teaching – the heat treating step, intended to produce a zinc oxide outer layer.” App. Br. 15. We are not persuaded by Appellant’s argument as Briffod discloses that it is known to heat a zinc-coated copper wire in an inert atmosphere which does not oxidize either the copper or the zinc. Briffod, col. 4, ll. 51- 56. Accordingly, we sustain the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Tominaga and Briffod. Rejection III – Obviousness based on Tominaga, Briffod, and Mukherjee Dependent claim 2 Claim 2 is discussed supra. The Examiner makes the same findings and conclusion as discussed supra (Ans. 5-6), and Appellant presents the same arguments as discussed supra. App. Br. 15-16. For the same reasons as discussed supra, we do not sustain the Examiner’s rejection of claim 2 Appeal 2010-006571 Application 10/332,672 8 under 35 U.S.C. § 103(a) as unpatentable over Tominaga, Briffod, and Mukherjee. Independent claim 5 Independent claim 5 was discussed supra. The Examiner makes the same findings as discussed supra, but additionally finds that “Mukherjee discloses an edm wire and its associated zinc plating and wire treatment using a vacuum” and “[i]t is well known in the art that processing in a vacuum negates the formation of oxides.” Ans. 5-6. The Examiner concludes that “it would have been obvious to one of ordinary skill in the art to form an edm wire with an oxide free zinc coating as taught by Mukherjee in the Briffod edm wire.” Ans. 6. Appellant argues that “[m]odifying Briffod’s oxide-coated wire to omit the oxide coating allegedly according to Mukherjee would again directly contradict Briffod’s most basic teaching of the necessity of its heat treatment and resultant oxide coating,” and “[t]hus the proposed modification of Briffod according to Mukherjee would entirely negate the teachings of Briffod and cannot form a proper basis for prima facie obviousness of claim 5.” App. Br. 18. Emphasis omitted. We are not persuaded by Appellant’s arguments with respect to Briffod’s final product as Briffod discloses that it is known to heat a zinc- coated copper wire in an inert atmosphere which does not oxidize either the copper or the zinc. Briffod, col. 4, ll. 51-56. Additionally, we note that the Examiner is not modifying Briffod by the teachings of Mukherjee as suggested by Appellant, but rather the Examiner is modifying Tominaga. Accordingly, we sustain the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Tominaga, Briffod, and Mukherjee. Appeal 2010-006571 Application 10/332,672 9 Rejection IV – Obviousness based on Tominaga and Tomalin Independent claim 6 Independent claim 6 is directed to a method of machining a part by spark erosion, the method including the step of finishing the part to be machined in which an electrode wire is moved, wherein the electrode wire includes a metal core coated with a surface layer of zinc having thickness of approximately 2 to 4 microns and at least 90% by weight zinc. The Examiner makes essentially the same findings and conclusion as discussed supra with respect to claim 1 (Ans. 6), Appellant presents essentially the same arguments as discussed supra for claim 1, and for the reasons discussed supra, these arguments are unpersuasive. See App. Br. 19-22. Additionally, Appellant argues that Tomalin teaches away from the subject matter of claim 6. Specifically, according to Appellant, Tomalin’s description of a carbon surface layer rather than zinc would have led a person or ordinary skill away from the subject matter of claim 6. App. Br. 22. This argument is not persuasive because the disclosure of one alternative does not constitute a teaching away. See Fulton at 1201. Therefore, we sustain the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Tominaga and Tomalin. Dependent claim 12 Claim 12 depends from claim 6 and calls for the wire to have an outside diameter of less than 0.25 mm and a thickness of the surface layer of zinc of from 2 μm to 3 μm. Appellant argues that neither the disclosure of Tominaga nor Tomalin teaches or suggests claim 12’s combination of wire diameter and zinc coating thickness. App. Br. 22-23. Appeal 2010-006571 Application 10/332,672 10 The Examiner found, and we agree, that Tominaga discloses wire diameters ranging from 0.05 to 0.3 mm (col. 1, ll. 40-41) and a 2 micron thick zinc layer (col. 5, ll. 53-54). Thus, we are not persuaded by Appellant’s argument and we sustain the Examiner’s rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Tominaga and Tomalin. Dependent claim 13 Claim 13 depends from claim 6 and recites that “the surface layer of zinc is continuous, so that it does not expose the metal core of the wire.” The Examiner finds that Tominaga discloses a zinc surface layer which is continuous by the nature of its formation, i.e., electroplating or dipping. Ans. 6-7. Appellant argues that “[t]he rejection’s reference to Tomalin’s discussion of a smooth surface is misplaced, as this clearly refers not to the wire surface but to the surface of the machined workpiece,” and therefore, “the combination of Tominaga with Tomalin fails to teach or suggest the claimed continuous surface layer of zinc.” App. Br. 23. We are not persuaded by Appellant’s argument as the Examiner relied upon Tominaga to teach that the surface layer of zinc is continuous. Accordingly, we sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Tominaga and Tomalin. Rejection V – Obviousness based on Tominaga, Tomalin, and Briffod Claim 11 depends from claim 6 and recites that “the thickness of the surface layer of zinc is from 3 μm to 4 μm.” The Examiner makes a finding and a conclusion similar to those discussed supra with respect to claim 2, and Appellant presents similar Appeal 2010-006571 Application 10/332,672 11 arguments to those discussed supra for claim 2. Ans. 7-8; App. Br. 23-25. For reasons similar to those discussed supra with respect to claim 2, we do not sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Tominaga, Tomalin, and Briffod. Rejection VI – Obviousness based on Tominaga, Tomalin, and Mukherjee Appellant argues claim 14 and 15 as a group and we select claim 14 as the representative claim. See App. Br. 26-28. Claim 15 falls with claim 14. Claim 14 depends from claim 13 and calls for similar subject matter to that of claim 5 discussed supra. The Examiner makes a similar finding and conclusion with respect to Mukherjee as those made for claim 5 supra (Ans. 8), and Appellant presents similar arguments with respect to Mukherjee as those discussed supra with respect to claim 5 (App. Br. 26-28). For the same reasons as discussed supra with respect to claim 5, we sustain the Examiner’s rejection of claim 14, and claim 15 which falls therewith, under 35 U.S.C. § 103(a) as unpatentable over Tominaga, Tomalin, and Mukherjee. Rejection VII – Obviousness based on Mukherjee and Tominaga Independent claims 7 and 9 and dependent claims 8, 10, 17, and 18 Appellant argues claims 7-10, 17, and 18 as a group and we select independent claim 7 as the representative claim. See App. Br. 29-30. Claims 8-10, 17, and 18 fall with claim 7. Independent claim 7 is directed to a method of manufacturing a wire and calls for the thickness of the final surface layer of zinc to be from 2 to 4 microns and include at least 90% by weight zinc. Appeal 2010-006571 Application 10/332,672 12 The Examiner finds that Mukherjee discloses “edm processing using [a] zinc coating (electroplating and/or dipping), drawing and annealing in a vacuum environment,” but does not disclose the 2 to 4 micron thickness of the zinc coating. Ans. 8-9. The Examiner makes essentially the same findings for Tominaga as discussed supra with respect to claim 1, and concludes that it would have been obvious to one of ordinary skill in the art to use the zinc coating thickness of Tominaga in Mukherjee “because these are merely manufacturing variations.” Ans. 9. Appellant presents essentially the same arguments as discussed supra for claim 1. App. Br. 29-20. For the same reasons as discussed supra, we sustain the Examiner’s rejection of claim 7, and claims 8-10, 17, and 18 which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Mukherjee and Tominaga. Dependent claim 20 Claim 20 depends from claim 18 and recites that “the thickness of the surface layer of zinc if from 2 μm to 3μm.” Appellant argues that the disclosures of Mukherjee and Tominaga do not teach or suggest claim 20’s combination of wire diameter and zinc coating thickness. App. Br. 30-31. The Examiner found, and we agree, that Tominaga discloses wire diameters ranging from 0.05 to 0.3 mm (col. 1, ll. 40-41) and a 2 micron thick zinc layer (col. 5, ll. 53-54), we sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Mukherjee and Tominaga. Appeal 2010-006571 Application 10/332,672 13 Rejection VIII – Obviousness based on Mukherjee, Tominaga, and Briffod Claim 19 depends from claim 18 and recites that “the thickness of the surface layer of zinc is from 3 μm to 4 μm.” For the same reasons as discussed supra with respect to claim 2, we do not sustain the Examiner’s rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Mukherjee, Tominaga, and Briffod. DECISION We affirm the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 1, 3, 4, and 16 as unpatentable over Tominaga; claim 5 as unpatentable over both the combination of Tominaga and Briffod and the combination of Tominaga, Briffod, and Mukherjee; claims 6, 12, and 13 as unpatentable over Tominaga and Tomalin; claims 14 and 15 as unpatentable over Tominaga, Tomalin, and Mukherjee; and claims 7-10, 17, 18, and 20 as unpatentable over Mukherjee and Tominaga. We reverse the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claim 2 as unpatentable over both the combination of Tominaga and Briffod and the combination of Tominaga, Briffod, and Mukherjee; claim 11 as unpatentable over Tominaga, Tomalin, and Briffod; and claim 19 as unpatentable over Mukherjee, Tominaga, and Briffod. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation