Ex Parte Platz

Patent Trial and Appeal Board

Jul 31, 2017

13754154 (P.T.A.B. Jul. 31, 2017)

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.
13/754,154 01/30/2013 Albin PLATZ 6570-P50045 7269
13897 7590 (
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
COHEN, BRIAN W
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBIN PLATZ1
Appeal 2016-000760
Application 13/754,154
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
MTU timely appeals under 35 U.S.C. § 134(a) from the Final
Rejection2 of all pending claims 21—40. We have jurisdiction.
35 U.S.C. § 6. We affirm-in-part.
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as MTU Aero
Engines GmbH (“MTU”). (Appeal Brief filed 24 April 2015 (“Br. 3.)
2 Office Action mailed 2 January 2015 (“Final Rejection”; cited as “FR”).
Appeal 2016-000760
Application 13/754,154
OPINION
A. Introduction3
The subject matter on appeal relates to electrode arrangements for the
defined rounding or deburring of edges of very hard electrically conductive
items such as turbine components by electrochemical machining (“ECM”).
(Spec. 1,11. 10-13.)
In ECM, a voltage is applied between a working electrode (the
cathode) and an electrically conductive workpiece (the anode), and a liquid
electrolyte is flowed between the working electrode and the workpiece.
Metal in the workpiece is oxidized, and the resulting metal ions dissolve in
the electrolyte and are swept away. The distribution and intensity of the
electric field may be adjusted by shaping the working electrode, as well as
by selectively masking the working electrode and the workpiece. In these
ways, ECM can remove burrs and can round edges of the workpiece.
(Matsui,4 col. 1,11. 58—63.)
MTU seeks patent protection for electrode arrangements that are said
to improve the accuracy of the edge radii produced, and to improve the
economy and efficiency of the process. (Spec. 1,11. 27—30.) These goals are
said to be accomplished by providing a working electrode having a
“negative shape” of the shape of the edge to be rounded or deburred.
3 Application 13/754,154, Electrode and installation for electrochemical
machining and method therefor, filed 30 January 2013, claiming the benefit
of an application filed in Germany on 31 January 2012. We refer to the
“’154 Specification,” which we cite as “Spec.”
4 A full citation for Matsui is given at n.9, infra.
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Such an electrode arrangement is covered by independent claim 21. Another
aspect of the invention is providing displaceable mounts for the working
electrode(s) or electrode carrier(s). These embodiments are covered by
independent claims 27 and 31, which do not include the negative shape
limitation required by claim 21.
Independent Claim 21 reads:
An electrode arrangement for the defined rounding or
deburring of an edge of an electrically conductive component
by electrochemical machining with at least one working
electrode, wherein the at least one working electrode comprises
[a] a tubular electrode carrier through which
an electrolyte inflow line is provided,
[b] the electrode carrier having on a front end thereof
a closure that is arranged such that
the electrolyte inflow line in an axial direction of
the electrode carrier is closed,
[c] at least one outlet opening being arranged in a
radial direction, and wherein
[d] the at least one working electrode has a negative shape
of a shape of the edge to be rounded or deburred.
(Claims App., Br. 30; indentation, paragraphing5, emphasis, and bracketed
labels added.)
Interpreting this claim requires a determination of: what is the
working electrode recited in the preamble and in limitation [d]; and how
does the working electrode comprise the tubular electrode carrier recited in
limitation [a] (and by abbreviated reference in limitation [b]).
5 In compliance with 37 C.F.R. §1.75(i) (2014): “Where a claim sets forth a
plurality of elements or steps, each element or step of the claim should be
separated by a line indentation.”
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Application 13/754,154
Two central terms, namely, “working electrode” and “electrode
carrier,” are not defined expressly in the ’154 Specification, although
examples are provided. The term “working electrode” appears to have a
more or less standard meaning in the art that corresponds to the functional
character of the name, i.e., it refers to the electrode at which the
electrochemical transformation of interest occurs. The term “electrode
carrier,” however, does not appear to be a standard term of art. The term
may be interpreted, reasonably, as anything that carries an electrode, or as an
electrode that carries something else. These characterizations are not
mutually exclusive, and thus lead to a broad scope for the subject matter of
the claims.
In the embodiments described in the Specification, the working
electrode 56 is said to comprise a” tubular electrode carrier” (Spec. 2.11. 4—
5), as shown in Figure 1, which is reproduced on the following page. It
should be noted that no structure in Figure 1 is identified specifically as the
tubular electrode carrier. However, the tubular electrode carrier of working
electrode 5 is said to serve “as a carrier for a correspondingly formed shaped
electrode or sinker plate electrode 11.” {Id. at 10,11. 18—19.) Sinker
electrode 11 has a negative shape 17, corresponding to the shape intended to
be formed on the edges of the blade root groove in workpiece 16.
{Id. at 11. 17—29; see also Figure 5 (not reproduced here), for an enlarged
view of the negatively curved electrode and the edges of the workpiece to be
rounded.)
6 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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{Figure 1 is reproduced below}
{Figure 1 shows a cross section of a self-centering electrode for defined
edge rounding by ECM}
The tubular electrode carrier is described as having an end on which
“is arranged an end terminating plate 18.” (Spec. 10,11. 18—19.) The
Specification discloses that end terminating plate 18 may bear a sealing and
guiding piece 13 with sealing rings 14, and an attachment element 15, which
serves to center sinker electrode in the middle of the structure 16 (e.g., a
turbine blade root groove), the edges of which are to be rounded. {Id. at 10,
1. 24 to 11,1. 4.) The material of terminal plate 18 is not specified, although
the hatching in Figure 1 indicates it may be metal. Guiding piece 13 is said
to be preferably ceramic or plastic {id. at 10,11. 23—24), while attachment
element 15 is preferably formed from cemented carbide {id. at 11. 23—24).
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In embodiments in which the working electrode 5 comprises a tubular
electrode, the Specification reveals that “[t]he electrode carrier of the
working electrode 5 . . . has between the terminating plate 18 and the sinker
electrode 11 outlet openings 19 through which the electrolyte . . . can
emerge in order to fill the gap between the sinker electrode 11 and the blade
root groove in the disk 16.” (Spec 11,11. 24—28; emphasis added.) Thus,
outlet openings 19 correspond to the outlet opening recited in limitation [c].
In all embodiments in which the electrode carrier is an electrode, the outlet
openings may be regarded as being in the electrode carrier or in the working
electrode.
We defer discussion of the mounting arrangements recited in
limitations [e] (claim 27) and [f] (claim 31) to the discussions of
Rejections B, C, and D, infra.
The Examiner maintains the following grounds of rejection7,8:
A. Claims 21—24 and 26 stand rejected under 35 U.S.C. § 102(b)
in view of Matsui.7 8 9
Al. Claims 25 stands rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Matsui and Farin.10
7 Examiner’s Answer mailed 31 August 2015 (“Ans.”).
8 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
9 Yukio Matsui and Mitsuo Uchiyama, Method of electrolytically finishing
spray-hole of fuel injection nozzle, U.S. Patent No. 4,578,164 (1986).
10 William G. Farin et al., U.S. Patent No. 2,764,540 (1956).
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A2. Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Matsui and Gauthier.11
B. Claims 27—30 and 37 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Matsui and Mielke.12
B1. Claim 38 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Matsui, Mielke, and Gauthier.
C. Claims 31, 32, 39, and 40 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Gauthier and Taylor.13
Cl. Claim 34 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Gauthier, Taylor, and Abt.14
D. Claims 31,33, and 34 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Ziegler15 and Abt.
11 Lucien Gauthier, Electrolytic machining system and method, U.S. Patent
No. 3,247,087 (1966).
12 Rainer Mielke, Method and apparatus for forming by electrochemical
material removal, U.S. Patent Application Publication 2006/0131184 A1
(2006).
13 John Taylor, Method of radiusing the edge of an aperture electrolytically,
U.S. Patent No. 3,384,563 (1968).
14 Ronald C. Abt, Portable manifold for electro-erosive machines, U.S.
Patent No. 3,594,298 (1971).
15 Gerhard Ziegler et al., Electrode for electrochemical material processing,
DEI9929023 Al (2000) (EPO machine translation).
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B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Rejection A: claim 21; anticipation by Matsui
MTU urges, inter alia, that the Examiner erred harmfully in finding
that Matsui describes a working electrode that has a “negative shape of the
edge to be rounded or deburred,” as required by limitation [d] of claim 1.
Because, as discussed infra, the Examiner has interpreted the term “working
electrode” unreasonably broadly, we reverse the rejection for anticipation.
Because the rejections for obviousness of the subject matter of claims
dependent on claim 21 also rely on this erroneous interpretation, we reverse
those rejections as well.
Matsui discloses an electrode assembly and a process for
electrolytically finishing spray holes of a diesel fuel injection nozzle, such as
the nozzle 10 illustrated in Figure 1, which is reproduced below.
{Matsui Fig. 1 shows a diesel fuel injection nozzle}
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Nozzle 10 has a nozzle body 12, which receives needle valve 20 in
generally cylindrical needle chamber 14 at the rear end and conical valve
seat 16 at the forward end, with a plurality of spray-holes 18 in the conical
wall that provides valve seat 16. A fuel injection pump (not shown)
provides fuel through oil passage 28 to oil chamber 30, applying hydraulic
pressure to frustum surface 22 of needle valve 20, lifting valve 20 from
valve seat 16, allowing the fuel to be injected into the combustion chamber
(not shown) through spray holes 18. Spray holes 18 are said to be formed by
drilling from the outside of nozzle body 12, resulting in burrs 15 at the edge
between conical surface 16 and the inside mouth of each spray hole 18 (see
Figure 3, reproduced on the following page). The burrs are removed by
fitting an electrode assembly 40 into the injection nozzle body, as shown in
Figures 2A (left), and Figure 2B (right), below, and performing ECM.
(Fig. 2A shows injection nozzle body 12 Fig. 2B shows electrode 40}
Electrode assembly 40 comprises a tubular conductor 42 and a
generally cylindrical insulator 44 covering the entire length of conductor 42
(Matsui col. 4,11. 41—45.) To ensure that radial passages 47 in electrode 40
are aligned with spray holes 18 of nozzle body 12, an electrode-supporting
part 50 has positioning pin 52, which mates with positioning hole 54 in
nozzle body 12. (Id. at col. 5,11. 11—22.)
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Application 13/754,154
As shown in Figure 3, below,
{Matsui Fig. 3 shows a sectional view of an electrode in an injection nozzle}
forward end 46 of insulator 44 is shaped conically to fit valve seat 16.
{Id. at col. 4,11. 45—47.) The central bore 43 of tubular conductor 42 is used
as an electrolyte liquid passage. {Id. at 11. 51—52.) Tubular conductor 42
does not extend to the tip of conical end portion 46 of insulator 44, but
terminates, leaving a small chamber 45 as an extension of liquid passage 43.
{Id. at 11. 52—56.) From chamber 45, a passage 47 extends through
insulator 44 generally radially to each spray hole 18 of nozzle body 12.
{Id. at 11. 56—60.) The diameter of passage 47 is somewhat enlarged at the
outer portion so it is slightly larger than the diameter of the inner mouth of
spray-hole 18. {Id. at 11. 60-63.) In the words of Matsui, the burrs 15 “do
not offer obstruction to close contact of the conical end portion 46 of
insulator 44 with the valve seat 16.” {Id. at 11. 64—66.)
The working electrode in this embodiment is tubular conductor 42.
No part of insulator 44 participates in the electrolytic reactions, although it
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does isolate the electrodes from the electrolyte, and thus blocks places where
the electrolytic reactions may occur. As Figure 3 shows, working
electrode 42 is not proximate to the anode, workpiece 12, and the working
electrode does not have a negative shape of an edge of the interior opening
of spray hole 18, which is to be deburred.
The Examiner’s identification of the enlarged portion of passage 47 as
the negatively shaped part of the working electrode (FR 4,111; Ans. 3,
enlarged figure portion) relies on an overly expansive interpretation of the
“working electrode” as comprising nonconductive elements. {Id. at 21,199,
“[t]he material 44, which is part of the ‘working electrode,’ has the negative
shape of the edge to be rounded/deburred.”) This interpretation is not
supported by evidence that persons having ordinary skill in the art (e.g., as
revealed by the prior art of record) would have regarded the “working
electrode,” as recited in claim 21, as including nonconductive elements. Nor
has the Examiner directed our attention to disclosure in the Specification
indicating that such a broad interpretation was intended or would have been
understood by the routineer. For example, MTU does not identify the
insulating covering elements 62 and 66 in Figures 5 and 6 as parts of
electrode 61.
We therefore reverse the rejection of independent claim 21 and the
dependent claims as anticipated by the electrode assembly illustrated in
Figure 3 of Matsui. Because the additional findings in obviousness
Rejections A1 and A2 do not cure this fundamental defect, we reverse those
rejections as well.
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The Examiner also finds that the embodiment illustrated in Matsui
Figure 5, shown below, anticipates. (FR 8,131; 9, 33—34; Ans. 5—10.)
(Matsui Fig. 5 shows a prior art ECM electrode in a fuel injection nozzle}
In Figure 5, conventional electrode 40A is shown positioned in fuel
injector nozzle body 12. (Matsui col. 5,11. 56—58.) Tubular conductor 42 is
surrounded by insulator 44, the upper end of which has a conical shape that
fits into conical valve seat 16; but conical end portion 46A of insulator 44
“is made short so as not to block the spray holes 18.” {Id. at col. 5,11. 63—
64.) Tip end portion 42a of tubular conductor 42 projects from the end face
of insulator 44, and “radial through-hole 49 is bored in this portion 42a of
the conductor 42 at the location of each spray hole 18.” {Id. at col. 5,1. 65,
to col. 6,1. 1.) The open end of tubular conductor 42 is closed by
insulator 56, leaving space 58 “around the protruding end portion 42a of the
conductor 42.” {Id. at col. 6,11. 2-4.)
MTU urges, inter alia, that “it is not even theoretically possible for an
(any) opening of a passage for the outflow of electrolyte such as the opening
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of the passage 47 of the insulator 44 of MATSUI to have a negative shape of
the shape of the inner mouth of the spray-hole 18 to be deburred.” (Br. 10,
11. 17—20, citing ’154 Specification Figure 1.) MTU urges that “even . . .
outlet opening 19 does not have a negative shape of the edge to be deburred.
Rather, the electrode 11 does.” {Id. at 11. 20—22, emphasis omitted.)
These arguments apply with equal force to passage 49 through end
portion 42a of conductor 42 in Figure 5.
While we can imagine a stepped opening for an outflow passage of
electrolyte having a portion with a negative shape of the inner mouth of a
spray hole that is to be deburred, such a specially-shaped opening would
have to be prepared. MTU’s point that such a special shape would not result
from a simple preparation such as the boring operation described by Matsui
(Matsui, col. 5,1. 67—68) is well-taken. The Examiner’s response, that “the
working electrode as per Matsui contains a negative shape of the shape of
the edge being deburred or rounded” (Ans. 5,11. 16—18), is not supported by
substantial evidence of record. Nor has the Examiner explained why, on the
present record, the routineer would have been motivated to provide a
working electrode having the required negative shape of the edge of the
workpiece.
In summary, we are persuaded of harmful error in the anticipation of
claim 21. It follows that the remaining claims rejected as anticipated fall
with claim 21, as the additional findings adduced in support of those
rejections do not cure the defects of the base rejection. Similarly, the
Examiner does not make any findings in obviousness Rejections A1 or A2
of claims dependent on claim 21. Accordingly we reverse Rejections A, A1,
and A2 based on Matsui.
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Rejection B: claim 27, based on Matsui
Claim 27 is identical to claim 21 in the preamble and in limitations [a]
through [c]; but limitation [d] is not present, and it is replaced by
limitation [e], which reads:
[e] the at least one working electrode or the electrode carrier
is mounted displaceably along more than one axis or
spatial direction.
(Claims App., Br. 31; indentation, paragraphing, emphasis, and bracketed
label added.)
Claim 27 stands rejected as obvious in view of the combined
teachings of Matsui and Mielke.
MTU urges that Matsui does not teach a working electrode and a
tubular electrode carrier as recited in claim 27 (Br. 16, 14—16); that Mielke
does not cure the deficiencies of Matsui in these regards {id. at 11. 17—18),
and further, that there would have been no reason to combine the teachings
of Matsui with those of Mielke {id. at 16—18).
Although we have concluded that the embodiments illustrated in
Matsui figures 3 and 5 do not disclose or suggest limitation [d], we have yet
to consider whether limitations [a]—[c], in the context of the preamble, are
taught (or would have been suggested) by Matsui. For the reasons that
follow, we conclude that the Examiner did not err harmfully in concluding
that limitations [a]—[c] are met or would have been obvious.
Limitation [a] specifies that the working electrode comprises
“a tubular electrode carrier through which an electrolyte inflow line is
provided.” (Claims App., Br. 31.) Limitation [a] is met by tubular
electrode 42 in Matsui Figures 3 and 5. Limitation [b], which specifies a
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closure in the axial direction of the electrolyte inflow line, is met in the
embodiment in Figure 3 by conical portion 46 of insulator 44, in which is
formed chamber 45. In the embodiment in Figure 5, limitation [b] is met by
closure element 56. Limitation [c] is met by radial through-holes 47 in the
embodiment of Figure 3, and by radial through-holes 49 in the embodiment
of Figure 5.
To the extent that the Examiner identifies insulator 44 as the
“electrode carrier” recited in limitation [b], we note that the Examiner relies
on Figures 3 and 5, which show tubular electrode 42 in the tubular passage
of insulator 44. Moreover, as discussed supra, Matsui discloses that
electrolyte flows through tubular electrode 42. Accordingly, we cannot say
that the Examiner erred harmfully to the extent that insulator 44 has been
labelled as an “electrode carrier” within the meaning of the appealed claims
We find the failure of Mielke to cure the alleged deficiencies of
Matsui with respect to limitations [a], [b], and [c] of claim 27 (Br. 16,11. 16—
17) is of no moment, as we have not found any deficiencies in Matsui in this
regard. Moreover, the Examiner does not rely on Mielke for that purpose.
Rather, the Examiner finds that Mielke describes, in paragraphs [0018]
and [0019], an apparatus that allows movement of an electrode in the X
and Z directions (illustrated in Mielke Figure 9, not reproduced here).
(FR 10,H37—39.) The Examiner concluded it would have been obvious to
provide such a mounting apparatus for the electrode assembly described by
Matsui “in order to facilitate machining at desired locations of the
component.” {Id. at 140.)
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MTU urges that there is no need in Matsui for such maneuverability
because “Matsui clearly is not a method ‘for electrochemically machining
complex shapes (as noted by the Examiner with respect to Mielke [FR 10,
137].” (Br. 17,11. 13—16; reference capitalization omitted.)
These arguments are not persuasive of harmful error because, at best,
they read limitations into claim 27 that are not there. Limitation [e] does not
state in what the working electrode or electrode carrier is mounted, or along
what axes or spatial directions they are to move, or under what conditions
the movement is to be done. If those movements were limited to the
positioning of the working electrode with respect to the workpiece during
the electrochemical machining process, i.e., while the electrolysis is
occurring, the objections might have merit. The ECM conducted by Matsui
is limited to a small region within a single fuel injection nozzle, for which
Matsui provides a pin-and-hole aligning system to prevent movement once
the electrode is seated in the working position.
But claim 27 contains no such limitations. Any multi-axis translation
and reorientation at any time for any purpose relevant to the ECM procedure
is encompassed by limitation [e], including moving the electrode assembly
from one fuel injection nozzle body to another. Accordingly, we hold that
the Examiner did not err in concluding that it would have been obvious to
provide the electrode assembly disclosed by Matsui with a multiaxis
translation and reorientation system as suggested by Figure 9 of Matsui.
MTU argues that the subject matter of claim 28, which depends from
claim 27, is not met or suggested by the combined teachings of Matsui and
Mielke. (Br. 18—19.) Claim 28 requires that “radially with respect to a
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longitudinal axis of the electrode carrier, the closure laterally has at least one
sealing body to bear against a part of a component to be machined.” (Claims
App., Br. 31.)
The Examiner (FR 10,141) directs us to Figure 3, reproduced supra,
which shows conical section 46 of insulator 44 at “a front end” of electrode
carrier 42; alternatively, conical section 46 is on the front end of
insulator 44, which carries electrode 42, and hence is an “electrode carrier.”
Conical section 46, when it contacts conical valve seat 16 of fuel injector
nozzle 12, provides a sealing body bearing against a part of the component
to be machined, i.e., fuel injector nozzle 12.
Accordingly, we are not persuaded of harmful error in the rejection of
claim 28 in view of Matsui Figure 3 and Mielke.
However, contrary to the Examiner’s unelaborated finding (id.) that
Matsui Figure 5, reproduced supra, shows such a structure, consideration of
that Figure indicates that sealing cap 56 does not contact the interior of fuel
injector nozzle 12. Moreover, sealing cap 56 is prevented from contacting
any part of the nozzle by the contact of truncated conical portion 46A
against valve seat 16, which prevents further movement forward. Thus, we
reverse the rejection of claim 28 based on Matsui Figure 5 and Mielke.
MTU urges that the subject matter of claim 29, which depends from
claim 27, is not suggested by Matsui and Mielke. Claim 29 requires “an
attachment element which is arranged in axial extension of the electrode
carrier at the closure end thereof and comprises a centering aid.”
Conical section 46 contacts the center of fuel injector nozzle 12, and
hence acts as a centering aid in the embodiment shown in Figure 3. Thus,
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we are not persuaded of harmful error in the rejection of claim 29 in
Rejection B. We therefore affirm the rejection of claim 29 in view of Matsui
Figure 3 and Mielke.16
Claim 30 requires that the electrode arrangement of claim 27 meet
limitation [d] regarding the negative shape of the working electrode. For the
reasons given supra in Rejection A, we reverse the rejection of claim 30 in
Rejection B.
MTU does not contest separately the remaining claims rejected under
Rejection B. Accordingly, the rejection of those claims is affirmed.
Rejection C: claim 31, based on Gauthier and Taylor
Claim 31 is identical to claim 21 in the preamble and in
limitations [a] through [c]; but limitation [d] is not present, and it is replaced
by limitation [f], which reads:
[fl] the at least one working electrode or the tubular electrode
carrier is mounted in a floating manner, and
[f2] arresting elements are provided for a kinematically
determinate fixing of the at least one working electrode or
the electrode carrier.
(Claims App., Br. 32; indentation, paragraphing, emphasis, and bracketed
labels added.)
Specification Figure 1, reproduced supra at 5, shows an electrode
assembly in which tubular working electrode 5 is held via hydraulic
16 However, the rejection based on Matsui Figure 5 fails because, as
explained supra, sealing element 56 does not contact any portion valve
seat 16, and the Examiner has not come forward with any plausible reason to
provide such a contact.
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clamping disk 3, which in turn is help by clamping bearing 2 to mounting
plate 1 “by means of a screwed connection.” (Spec. 10,11. 4—6.) As
indicated by the double headed arrows, the position of tubular electrode 5
can be adjusted vertically and laterally within clamping bearing 2, as thus is
“mounted in a floating manner in the clamping bearing 2.” (Id. at 11. 6—7.)
The ’ 154 Specification also provides “arresting means, which allow a
kinematically determinate mounting of the working electrode or the
electrode carrier.” {Id. at 6,11. 16—17.) The arresting means “may be
clamping elements, in particular hydraulically or pneumatically actuable”
(Id. at 11. 17—18.) In Figure 1, such arresting means are membranes 8, which
are outwardly deformable against mounting plate 1, clamping bearing 2, and
the tubular electrode carrier of working electrode 5, by hydraulic oil pumped
into hydraulic clamping disk 3 through hydraulic feed 7. (Id. at 10,11.11. 7—
14.)
The Examiner finds, and MTU does not dispute, that Gauthier
describes, in Figure 2 (left) and in Figure 3 (right), reproduced below,
(Figures 2 (left) and 3 (right), show ECM electrode assemblies}
ECM systems that meet limitations [a], [b], and [c], but not limitation [f].
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The Examiner finds that Taylor shows in Figures 1 (left) and 2 (right),
s Nil :
(Fig. 1 shows the ECM assembly}
(Fig. 2 shows the mounting of
the ECM electrode by clamp 16}
an ECM electrode assembly held adjustably by clamp 16, which can be
tightened to hold the electrode assembly in a fixed position.
In light of the teachings of the ’ 154 Specification, we have no
difficulty finding that clamp 16 is a “kinematically determinate mounting of
the working electrode or the electrode carrier” as required by limitation [f2].
Moreover, the Examiner found correctly that clamp 16, when loose, allows
adjustment of the working electrode or electrode carrier in at least the
vertical direction, and hence provides a “floating mount,” as required by
limitation [fl]. Claim 31 requires no more.
MTU “submits” that the Examiner erred harmfully because “Taylor
neither teaches nor suggests that the clamp should not be fully tightened.”
(Br. 21,11. 18—19, capitalization omitted.)
This argument is not persuasive of harmful error, as the ordinary
function of a clamp is that it not be fully tightened at some stage of
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operation. Claim 31, like claim 27 supra, does not limit the state of
operation in which limitation [f] must be satisfied—and the loosened clamp
of Taylor corresponds to the non-clamped state of hydraulic clamp 3 in the
embodiment illustrated in Specification Figure 1.
MTU argues further that Figures 2 and 3 of Gauthier relate to
removing burrs at a junction between a duct 16 and a chamber 17 in a diesel
engine, whereas Figures 1 and 2 of Taylor relate to machining turbine blade
roots. (Br. 22,11. 12—16.) MTU therefore denies that there is any apparent
connection between the two disclosures, beyond the common field of
electrochemical machining. {Id. at 11. 19—20.)
As with the preceding argument (as well as the argument against the
combined teachings of Matsui and Mielke, supra), this argument assumes
limitations in the claims that are not present, e.g., that the working electrode
or electrode carrier be floating at some point during the ECM operation, and
that the position of the electrode be adjusted during that period. But
claim 31 contains no such requirements. In any event, it would have been
reasonable to provide a clamping mechanism in the embodiments shown in
both Figure 2 and Figure 317 of Gauthier for mechanical stability during the
ECM operation.
17 Contrary to MTU’s representation (Br. 22,11. 12—16), Figure 3 of Gauthier
does not describe a machining operation for removing burrs from a junction
between a duct and a cavity. Rather, Figure 3 illustrates an apparatus for
ECM of the inside of metal tube 23 to an accurately calibrated dimension.
(Gauthier col. 3,1. 64, to col. 4,1. 14.) It may be noted that Gauthier teaches
that “[djesirably, means are provided for imparting to the assembly . . .
a continuous or intermittent movement of axial translation and rotation so as
to effect a uniform treatment of the inner surface of the tube.” {Id. at col. 4,
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MTU urges that neither in Figure 2 nor in Figure 3 is any sealing body
evident, “wherein radially with respect to a longitudinal axis of the electrode
carrier, the closure laterally has at least one sealing body to bear against a
part of a component to be machined,” as required by claim 32, which
depends from claim 31. (Br. 23.)
As is evident from Figures 2 and 3, reproduced supra, and as the
Examiner emphasizes in the annotated figures reproduced in the Examiner’s
Answer (Ans. 14 and 15), the closure at the end of insulated dipper tube 21
(a tubular electrode carrier) in Figure 2, and the closure at the end of
insulator tube 27 (also a tubular electrode carrier), provide a seal that bears
against a part of the component to be machined, namely full injection
nozzle 16 (Fig. 2) and conductive tube 23 (Fig. 3), as required by claim 32.
MTU does not respond to this clarification in the Reply.
Accordingly, we are not persuaded of harmful error in the rejection of
claim 32.
MTU does not raise arguments for the separate patentability of any
other claims subject to Rejection C.
Accordingly, we affirm Rejection C
Rejection D: claim 31 based on Ziegler and Abt
MTU does not challenge any of the Examiner’s findings
regarding the teachings of Ziegler or Abt. Rather, MTU urges the Examiner
11. 10-14.) Hence, Gauthier provides ample motivation for a floating
mounting of the electrode, together with kinematic fixing elements.
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erred in combining the teachings of Ziegler, which discloses an ECM
electrode as shown in the Ziegler Figure, below,
{The Ziegler Figure shows ECM electrode 30 with workpiece 16}
with the teachings of Abt regarding a quick-change tool system manifold for
use with ECM systems, because there is “no motivation at all” for that
combination. (Br. 25,11. 22—24.)
In MTU’s view, “Ziegler is clearly and exclusively focused on the
electrode as such and in particular, the protective ceramic sleeve thereof.”
(Id. at 27,11. 11—12.) “[F]or this reason alone,” MTU continues, “there is no
motivation whatsoever to combine Ziegler with a document that is
concerned with the operation of an electrode (with or without a ceramic
sleeve).” (Id. at 11. 13—15.)
This argument is not persuasive of harmful error. A person having
ordinary skill in the art, being informed of an electrode disclosed as being
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Application 13/754,154
useful for ECM generally, would seek to find ways to use it in practice, and
hence would look to art relevant to holding the working electrode or
electrode relative to a workpiece.
MTU raises no other arguments for patentability of claims subject to
Rejection D.
Accordingly, we affirm Rejection D.
C. Order
It is ORDERED that Rejections A, Al, and A2 of claims 21—26, 35,
and 36 is reversed;
It is FURTHER ORDERED that Rejections B and B1 of claims 27—
29, 37, and 38 are affirmed;
It is FURTHER ORDERED that Rejection B of claim 30 is reversed;
It is FURTHER ORDERED that Rejections C and Cl of claims 31,
32, 34, 39, and 40 are affirmed.
It is FURTHER ORDERED that Rejection D of claims 31, 33, and 34
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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