WESTINGHOUSE ELECTRIC COMPANY LLC

Patent Trials and Appeals Board

Jun 29, 2020

14936751 - (D) (P.T.A.B. Jun. 29, 2020)

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.
14/936,751 11/10/2015 LYMAN J. PETROSKY RTU 2015-007 3821
26353 7590 06/29/2020
Westinghouse Electric Company LLC
K&L Gates LLP
210 Sixth Avenue
K&L Gates Center
Pittsburgh, PA 15222-2613
EXAMINER
WITTENBERG, STEFANIE S
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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):
USPatentMail@klgates.com
spadacjc@westinghouse.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LYMAN J. PETROSKY

Appeal 2019-004694
Application 14/936,751
Technology Center 1700
____________

Before JEFFREY R. SNAY, LILAN REN, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–11. 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 the real party in interest as Westinghouse
Electric Company LLC. Appeal Brief dated Feb. 4, 2019 (“Appeal Br.”) 1.
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CLAIMED SUBJECT MATTER

The present application generally relates to a modular electrochemical
machining apparatus. Specification filed Nov. 10, 2015 (“Spec.”) ¶ 1. An
electrochemical machining apparatus (ECM) “involves the application of a
potential difference between a metallic workpiece and an electrode plus the
application of an electrolyte between the workpiece and the electrode” and
thereby removes unwanted material from the workpiece. Spec. ¶ 4.
Conventional ECM apparatus are limited “because of the large number of
components that must cooperate with one another, the weight and size of
such components, and the complexity of their interconnections.” Id.
The Specification describes an apparatus where the “components are
modular and are mounted on separate supports.” Id. ¶ 5. The modular
components can be individually moved to a location within a facility where
a component is installed, and the modules can be interconnected to form the
modular electrochemical machining apparatus at the location of the installed
component. Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
1. A modular electrochemical machining
apparatus structured to be moved to a location within a facility
where a component is installed and to perform an
electrochemical machining operation on the component, the
modular electrochemical machining apparatus comprising:
a power module comprising a power supply and a first
support, the power supply being situated on the first support;
an electrolyte apparatus comprising an electrolyte
processing module, the electrolyte processing module
comprising a fluid circulation system structured to carry and
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circulate a quantity of electrolyte material and a second support,
at least a portion of the fluid circulation system being situated
on the second support, the second support being separate
from the first support;
a drive apparatus comprising an actuator module, the
actuator module comprising an actuator and a third support,
the third support being separate from the first support and
the second support and being structured to be affixed to at
least one of the component and another structure of the facility
that is situated in proximity to the component, the actuator
comprising a movable portion that is movable with respect to
the third support between a first position with respect to the
component and a second position with respect to the component
as a part of the electrochemical machining operation;
a control apparatus in operative communication with the
actuator; and
a connection apparatus structured to connect together the
power module, the electrolyte apparatus, and the drive
apparatus.
Appeal Brief dated Feb. 4, 2019 (“Appeal Br.”) 9 (Claims App.)
(reformatted for clarity).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Williams US 3,444,070 May 13, 1969
Asaoka US 4,863,579 Sept. 5, 1989
Edwards US 5,820,744 Oct. 13, 1998
Obara2 JP 2007-21632 A Feb. 1, 2007

2 The Examiner relies, in part, on the English language abstract of Obara.
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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–8, 10, and 11 are rejected under 35 U.S.C. § 103
as being unpatentable over Edwards in view of Obara. Final
Action dated Sept. 4, 2018 (“Final Act.”) 3–8.
2. Claim 3 is rejected under 35 U.S.C. § 103 as being
unpatentable over Edwards in view of Obara and further in
view of Williams. Id. at 8.
3. Claim 9 is rejected under 35 U.S.C. § 103 as being
unpatentable over Edwards in view of Obara and further in
view of Asaoka. Id. at 9–10.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–8, 10, and 11 as obvious
over Edwards in view of Obara. Id. at 3–8.
The Examiner finds that Edwards teaches an electrochemical
machining apparatus. Id. at 3. The Examiner finds, however, that “Edwards
does not disclose the separate supports[,] which the power supply, fluid
circulation and actuator module are situated on.” Id. at 4. The Examiner
further finds that the secondary reference, Obara, teaches an electrochemical
machining apparatus that includes “a base (12 = support) on a floor and a
support part (14) set up vertically on the base (12).” Id. at 5. Figure 1 of
Obara is reproduced below.
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Figure 1 depicts the electrochemical machining apparatus of Obara.
The Examiner finds that “[t]he supports (e.g. base, part, table, etc.) of
Obara are separate elements (i.e. they are distinct or different) and situated
in proximity with the workpiece component.” Id.; see also Examiner’s
Answer dated April 18, 2019 (“Answer”) 14 (annotated Figure 1 of Obara).
The Examiner determines that “[t]he claimed ‘support’ is not particularly
limiting” and “[a]ny support feature reads on the instant support.” Final Act.
5. The Examiner additionally determines that “the mere duplication of
individual supports would have been an obvious engineering design choice.”
Id. at 6.
Appellant argues that the rejection is in error. Appeal Br. 3–7. First,
Appellant contends that neither Edwards nor Obara teaches the three
separate supports required by claim 1. Id. at 4–5. We need not address
Appellant’s argument regarding Edwards as the Examiner did not rely on
Edwards as teaching the claimed supports. Final Act. 4. In regard to Obara,
Appellant argues that “the supporting part (14) is indisputably situated on
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the base (12). As such there can be no question whatsoever that the base
(12) and the alleged support part (14) are not separate from one another.”
Appeal Br. 4 (emphases in original).
Appellant’s argument implicates the claim construction of the term
“separate” as used in claim 1. In the Final Action, the Examiner determines
that “the term separate may be defined as individual or distinct.” Final Act.
12. Appellant argues that the Examiner’s proposed construction of the term
“separate . . . improperly renders meaningless the various recitations in
Claim 1 of the first, second, and third supports being separate from one
another.” Appeal Br. 4–5 (emphasis in original).
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant . . . because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id. Here, the Examiner has put forward a reasonable
proposed definition of “separate.” Appellant indicates its view that such
proposed definition would “render[] meaningless” the “support” limitations.
Appellant additionally indicates its view that structures that are “physically
affixed to one another” should not be seen as separate. Reply Brief dated
May 24, 2019 (“Reply Br.”) 2. Appellant, however, does not offer a
definition of its own nor direct us to any portion of the Specification
inconsistent with the Examiner’s proposed definition. Given the preceding,
we adopt the Examiner’s proposed definition of “separate” to mean
“individual or distinct.”
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In view of the foregoing, Appellant has not shown error in the
Examiner’s finding that Obara teaches separate supports.
Appellant additionally includes some discussion of the term
“modular” which is found in the preamble of claim 1. Appeal Br. 3–4;
Reply Br. 2–3.
“[A]s a general rule preamble language is not treated as limiting,”
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed.
Cir. 2012), but “[w]hether to treat a preamble as a limitation is determined
on the facts of each case in light of the overall form of the claim[] and the
invention as described in the specification and illuminated in the prosecution
history,” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357 (Fed. Cir.
2012) (internal quotations omitted). “In general, a preamble limits the
invention if it recites essential structure or steps, or if it is necessary to give
life, meaning, and vitality to the claim.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotation marks
omitted). Further, the Federal Circuit has “long ruled that a preamble is not
limiting where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention.” Arctic Cat Inc. v. GEP Power Prods., 919 F.3d 1320, 1328
(Fed. Cir. 2019) (internal quotations omitted); see Georgetown Rail Equip.
Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017).
Here, the preamble provides, in part, for “[a] modular electro-
chemical machining apparatus structured to be moved to a location within a
facility.” Appeal Br. 9 (Claims App.) (emphasis added). The preamble does
not recite any essential structure or steps. Nor does it impart “life, meaning,
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and vitality to the claim.” Accordingly, the broadest reasonable
interpretation of the preamble is that it is not limiting.
Appellant additionally argues that the Examiner errs in determining
that one of ordinary skill in the art would have had reason to combine the
teachings of Edwards and Obara. Appeal Br. 5–6.
In the Answer, the Examiner describes the basis for combination as
follows:
[O]ne of ordinary skill in the art would also look to the art for
workable supports for supporting such elements in order to
produce an apparatus including additional details regarding a
support such as sizing, material, and/or orientation. Looking to
the relevant art in the field of ECM devices would provide
guidance for one of ordinary skill in the art in regards to the
appropriate support for the elements of an ECM device. Obara
explicitly discloses the physical characteristics of supports that
one would utilize for the apparatus of Edwards.

Answer 14–15.
In its principal brief, Appellant argues that, given the Examiner’s
finding that one of skill in the art would recognize the need for a support
rather than having structures “suspended freely in air” (Final Act. 6),
“[t]here would therefore be no reason to consult Obara to avoid such free-
floating in the air of a power supply. There is therefore no motivation to
consult Obara or to combine reference teachings” (Appeal Br. 5).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, the Examiner
proposes that one of skill in the art would have had looked to similar known
devices for suitable supports. Appellant has not shown that such
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combination would have been more than the combination of familiar
elements according to known methods. Accordingly, Appellant has not
shown error in this regard.
In the Reply Brief, Appellant seeks to introduce a new argument
regarding the limitation requiring that the third support is “structured to be
affixed to at least one of the component and another structure of the
facility.” Reply Br. 2. Appellant has not sought to show that this is
responsive to a determination in the Answer nor to show good cause for the
new argument. Accordingly, it will not be considered. See 37 C.F.R.
§ 41.41(b)(2).
In view of the foregoing, Appellant has not shown error in the
rejection of claim 1. Appellant relies on the same arguments presented with
regard to claim 1 in support of its appeal of the rejection of claims 2–8, 10,
and 11. Appeal Br. 6–7. As we have not found such arguments to be
persuasive, we determine that Appellant has not shown error in the
Examiner’s rejection of claims 2–8, 10, and 11.

Rejections 2 and 3. The Examiner rejects claim 3 as obvious over
Edwards in view of Obara and further in view of Williams. Final Act. 8.
The Examiner further rejects claim 9 as obvious over Edwards in view of
Obara and further in view of Asaoka. Id. at 9–10. Appellant relies on the
same arguments presented with regard to claim 1 in support of its appeal of
the rejection of claims 3 and 9. Appeal Br. 7–8. As we have not found such
arguments to be persuasive, we determine that Appellant has not shown
error in the Examiner’s rejection of claims 3 and 9.

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CONCLUSION

The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 10, 11 103 Edwards, Obara 1–8, 10, 11
3 103 Edwards, Obara,
Williams
3
9 103 Edwards, Obara,
Asaoka
9
Overall
Outcome
1–11

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