Scott Turner et al.

Patent Trials and Appeals Board

Aug 2, 2021

2020004779 (P.T.A.B. Aug. 2, 2021)

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.
12/784,697 05/21/2010 Scott S. Turner PMF 103 9353
22222 7590 08/02/2021
GEORGE R CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
EXAMINER
CHUNG, HO-SUNG
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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):
gcorrigan@new.rr.com
george.corrigan@corrigan.pro
kari.brekke@corrigan.pro
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT S. TURNER and KARSTEN V. NIELSEN
Appeal 2020-004779
Application 12/784,697
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JANE E. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 7–28. The Examiner has
withdrawn from consideration pending claims 29–38. Final Office Action
(“Final Act.”) dated September 10, 2019, 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Pioneer Metal Finishing, LLC as the
real party in interest. Appeal Brief (“Appeal Br.”) filed February 11, 2020, 3.
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CLAIMED SUBJECT MATTER
The invention relates to electrolytic formation of coatings on metallic
parts. Specification (“Spec.”) filed May 21, 2010, ¶ 1.2
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, illustrates the claimed subject matter:
1. An apparatus for electrolytically treating a surface of a
component comprising:
a reaction chamber, adapted for placing at least a portion
of the component therein, and for holding a reaction fluid;
a transport chamber in fluid communication with the
reaction chamber, wherein the reaction fluid enters the reaction
chamber from the transport chamber through a plurality of inlets
directed toward the component, wherein each of the plurality of
inlets is disposed to direct the reaction fluid toward the
component at at least one non-zero vertical angle and wherein
the reaction fluid follows a path through the inlets into the
reaction chamber that does not include passing through at least
one of a cathode and an anode; and
a fluid return path, wherein the reaction fluid returns from
the reaction chamber to the transport chamber.
Appeal Br. 14 (Claims Appendix).
Independent claim 17 recites a fixture for anodizing a component
comprising a reaction chamber with a plurality of inlets disposed to direct
electrolyte toward the component at at least one non-zero vertical angle
along a path through the inlets that does not include passing through “[at]
least one of a cathode and an anode.”

2 This Decision also cites to the Examiner’s Answer (“Ans.”) dated April 7,
2020, and the Reply Brief (“Reply Br.”) filed June 8, 2020.
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Application 12/784,697

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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Schaedel US 4,152,221 May 1, 1979
Rasmussen US 2006/0113193 A1 June 1, 2006
Edamura et al.
(“Edamura”)
JP 58-167777 A Oct. 4, 1983

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 1–5 and 7–28 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
2. Claims 1–5, 7–12, and 17–26 under 35 U.S.C. § 103(a) as
unpatentable over Rasmussen in view of Schaedel;
3. Claims 13–16, 27, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Rasmussen in view of Schaedel, and further
in view of Edamura; and
4. Claims 1–5 and 7–28 under 35 U.S.C. § 103 as unpatentable
over Rasmussen in view of Schaedel and Edamura.3

3 The Examiner’s Answer states that “[e]very ground of rejection set forth in
the Office action dated from 09/10/2019 which the appeal is taken is being
maintained by the examiner except for the grounds of rejection (if any) listed
under the subheading ‘WITHDRAWN REJECTIONS.’” Ans. 2. The
Answer then states that there are no withdrawn rejections. Id. at 8. The
September 10, 2019 Office action set forth an obviousness rejection of
claims 1–5 and 7–28 over a combination of Rasmussen, Schaedel, and
Edamura. Final Act. 4–9.
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OPINION
Rejection 1: Written Description
The Examiner set forth, as a new ground of rejection in the Answer, a
rejection of claims 1–5 and 7–28 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 2–4. The
Examiner finds that the negative limitation, “wherein the reaction fluid
follows a path through the inlets into the reaction chamber that does not
include passing through at least one of a cathode and an anode,” in claims 1
and 17 lacks adequate written description support in the originally-filed
disclosure and, therefore, constitutes new matter. Id. at 3–4. The Examiner
notes that this negative limitation covers three possible scenarios including:
1) a fluid path that passes through the anode, but not the cathode; 2) a fluid
path that passes through the cathode, but not the anode; and 3) a fluid path
that does not pass through either the cathode or the anode. Id. at 3. The
Examiner finds that there is no written description describing scenario (1)
wherein the fluid path goes through the anode, but not through the cathode.
Id. In particular, the Examiner finds that the Specification does not mention
inlets or fluid paths going through the anode or being excluded from going
through the anode. Id. The Examiner finds that although Figure 2 shows a
piston as working electrode 102 and, though not depicted in this figure,
pistons are known to have holes such as oil holes in their ring grooves. Id. at
3–4. As such, the Examiner speculates that “it is possible that the depicted
piston has holes that form inlets that would allow reaction fluid passing
through,” contrary to the claim limitation with respect to excluding flow
passing through the anode. Id. at 4. However, the Examiner finds that, at
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best, “Appellant is merely drawing on support from an incomplete figure.”
Id.
Appellant interprets the limitation at issue in this rejection, “a path
through the inlets into the reaction chamber that does not include passing
through at least one of a cathode and an anode,” as requiring a teaching that
the path is not through the anode and the cathode. Reply Br. 4. Appellant
asserts that “the [S]pecification teaches the inlets are through a non-
conductive portion of an injection ring, and the cathode (a conductive
material) is located below the inlets,” and as such, the flow path does not
pass through the cathode. Id. at 4–5. Appellant also asserts that because the
anode is always the piece to be anodized, the path never passes through the
anode. Id. at 4. Because the Specification teaches a path that does not pass
through either the cathode or the anode, Appellant argues that the rejection
should be reversed. Id.
Appellant’s argument is not persuasive of reversible error because
Appellant misinterprets the scope of the limitation at issue in this rejection
and fails to address the specific scenario which the Examiner finds lacks
written description support in the original disclosure. The limitation at issue
states that the path does not include passing through at least one of a cathode
and an anode. See claims 1 and 17. As the Examiner correctly determines,
this limitation covers the three possible scenarios listed in the Examiner’s
Answer. See Ans. 3. Appellant’s argument is directed to scenario (3),
wherein the path does not extend through the cathode and the anode.
However, the Examiner does not find this scenario lacks written description
in the original disclosure. Indeed, neither does the Examiner find scenario
(2) lacks written description support, perhaps because Appellant appears to
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admit that this scenario was known in the art. Spec. ¶¶ 9, 10. The rejection is
based on scenario (1), wherein the fluid path goes through the anode, but not
through the cathode. Ans. 3. Not only does Appellant fail to respond to or
otherwise address this scenario, Appellant admits that the path never passes
through the anode. Accordingly, we sustain the Examiner’s written
description rejection of claims 1–5 and 7–28.
Rejections 2–4: Obviousness
The Examiner rejects claims 1–5, 7–12, and 17–26 under
35 U.S.C. § 103(a) as unpatentable over Rasmussen in view of Schaedel;
claims 13–16, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over
Rasmussen in view of Schaedel, and further in view of Edamura; and claims
1–5 and 7–28 under 35 U.S.C. § 103 as unpatentable over Rasmussen in
view of Schaedel and Edamura. These rejections are set forth in the Final
Office Action, pages 4–9, and the Examiner’s Answer, pages 4–7.
Appellant argues claims 1 and 17 separately, but does not separately
argue any of the dependent claims. In addition, Appellant’s arguments
regarding each of claims 1 and 17 are substantively similar. Accordingly, we
select claim 1 to address Appellant’s arguments; remaining claims 2–5 and
7–28 stand or fall with claim 1.
Appellant argues that claim 1 is patentable because the prior art fails
to show a fluid path through inlets into the reaction chamber that does not
pass through at least one of a cathode and an anode. Appeal Br. 10.
Appellant admits that prior art systems inject the electrolytic fluid through
nozzles or inlets in the cathode, but that such nozzles or inlets could become
clogged. Id. To solve this clogging problem, Appellant asserts that the
invention injects the fluid through inlets that are not in the cathode. Id. at 11.
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Appellant contends that “[b]ecause the prior art shows a path through the
cathode[,] it fails to teach the claimed invention.” Reply Br. 10. Appellant
also asserts that injecting the fluid at non-zero vertical angles provides an
improved solution for heat control. Appeal Br. 11.
Appellant further argues that Edamura, contrary to the Examiner’s
findings, teaches fluid flowing through cathode 123. Appellant contends that
Edamura’s inlets 120 extend through the upper end of cathode 123, as shown
in an annotated version of Edamura’s Figure 7, reproduced below.

Appellant’s annotated version of Edamura, Figure 7,
showing a cross section of a surface treatment apparatus

In support of this interpretation of Edamura’s Figure 7, Appellant provides
an arrow pointing to a line extending across the opening of one inlet 120 and
asserts that this line is a continuation of cathode 123. Id. at 12. Appellant
also provides an arrow pointing to a line extending across the opening of one
inlet 84 on the left side of Figure 4, reproduced below, for this same
purpose. Reply Br. 3.
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Appellant’s annotated version of Edamura, Figure 4,
showing a cross section of a second surface treatment apparatus

Appellant notes that Edamura neither teaches that fluid does not flow
through the cathode nor explains these lines. Id.; Appeal Br. 12. To the
contrary, Appellant asserts that Edamura “states that the electrode is carried
out to the portion above the passage in Figure 4,” because electrode 97
continues up to part 74’ which is above passage 84. Id. Because passages
120 of Figure 7 are like passages 84 of Figures 4 and 5, Appellant contends
that Edamura’s passages 120 must be through cathode 123. Id. at 12–13.
Further, Appellant argues that Rasmussen shows a fluid path that is
always through the inlets into the reaction chamber that includes passing
through the cathode. Reply Br. 10–12.
Appellant’s arguments are not persuasive of reversible error because
Appellant misinterprets the scope of the negative limitation at issue in the
obviousness rejections. Specifically, Appellant interprets the limitation,
“does not include passing through at least one of a cathode and an anode,” as
excluding the possibility of the inlet passing through the cathode. However,
because of the phrase, “at least one of,” this limitation may be met by prior
art teaching inlets passing through the cathode, but not the anode, such that
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these inlets do not pass through at least one of the cathode and the anode.
This interpretation is consistent with the Examiner’s interpretation as set
forth in the written description rejection, wherein this limitation includes
three possible scenarios, any of which if disclosed in the prior art would
meet this limitation. See Ans. 3. Thus, even if Appellant were correct that
Rasmussen and Edamura each teach inlets passing through the cathode, this
limitation is met because neither reference teaches inlets passing through the
anode (part being treated). Accordingly, we sustain each of the Examiner’s
obviousness rejections for this reason.
Notwithstanding the above, we further determine that the Examiner’s
interpretation of Edamura (teaching inlets that do not pass through the
cathode) is reasonable and, therefore, also sustain the Examiner’s
obviousness rejection over the combination of Rasmussen, Schaedel, and
Edamura on this basis as well. Appellant directs attention in Edamura’s
Figures 4 and 7 to lines extending across the opening of inlets or passages
84, 120 in support of the position that cathodes 97, 123 must extend to the
top of fixtures 74, 113, respectively. Moreover, Appellant asserts that
Edamura discloses that cathode 97 extends to the side wall of 74’.
We disagree with both interpretations of Edamura. The lines to which
Appellant refers are necessary to demarcate the openings of inlets 84, 120
into the cylindrical chamber, similar to the lines on the opposite side of each
inlet 84, 120. Also, we note that these lines are not as thick or bold as the
lines demarcating cathodes 97, 123, indicating that cathodes end at the level
of the openings of the inlets.
Further, we note that the portion of the machine translation on which
Appellant relies for disclosing cathode 97 extending to the side wall of 74’ is
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difficult to understand. However, the human translation of this same portion
(page 16, lines 14–15) recites that cylindrical electrode 97 is fitted and fixed
to the side wall of cylindrical hole 74’. Thus, this portion does not recite or
support that cathode 97 extends to the side wall of 74’, but that it is fitted
and fixed thereto. Indeed, given the proximity of anode 96 at the top the side
wall of hole 74’ in Figure 4, an ordinary artisan would not have expect
cathode 97 to extend to the top as such would create a short circuit
preventing operation of the treatment apparatus.
Accordingly, we sustain the Examiner’s obviousness rejections that
rely on Edamura as teaching inlets that do not pass through the cathode or
the anode.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–5
and 7–28 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–28 112 ¶ 1 Written Description 1–5, 7–28
1–5, 7–12,
17–26
103(a) Rasmussen, Schaedel 1–5, 7–12,
17–26

13–16, 27,
28
103(a) Rasmussen, Schaedel,
Edamura
13–16, 27,
28

1–5, 7–28 103(a) Rasmussen, Schaedel,
Edamura
1–5, 7–28
Overall
Outcome
1–5, 7–28

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TIME PERIOD FOR RESPONSE
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