Ex Parte Bayer et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713639674 (P.T.A.B. Feb. 28, 2017) 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. 13/639,674 11/13/2012 Erwin Bayer 5038.1122 9270 23280 7590 03/02/2017 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER CHUNG, HO-SUNG ART UNIT PAPER NUMBER 1754 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): ddk @ ddkpatent .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERWIN BAYER and ROLAND HUTTNER Appeal 2016-001312 Application 13/639,674 Technology Center 1700 Before PETER F. KRATZ, KAREN M. HASTINGS, and ELIZABETH M. ROESEL, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 11—14, and 21—25 under 35 U.S.C. § 103(a) as being unpatentable based on at least the combined prior art of Linden (FR 1,537,641; published Mar. 25, 1965; as translated), Tchugunov (US 6,835,299 Bl; issued Dec. 28, 2004), and Fruth (US 2007/0256938 Al; Nov. 8, 2007).1 The Examiner also rejected claim 23 under 35 U.S.C. § 112, second paragraph, as indefinite.2 1 The rejection of claim 25 includes additional prior art (Final Act. 10, 11). 2 The Examiner withdrew the rejection of all the claims under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement (Ans. 2). Appeal 2016-001312 Application 13/639,674 We have jurisdiction under 35 U.S.C. § 6(b). Claim 11, the sole independent claim, is illustrative of the claimed subject matter (emphasis added): 11. A method for electrochemically machining a workpiece comprising: processing a workpiece surface using an electrode having a first active surface and a separate second active surface for processing two workpiece surfaces and using an electrolyte, the first and the second active surfaces having two independently controllable electrolyte feeds and suctions; and suctioning the electrolyte off the first and second active surfaces. OPINION The §112 Rejection of Claim 23 for Indefiniteness It is established that 35 U.S.C. § 112,12 “puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Therefore, when an examiner advances a reasonable basis to believe that those of ordinary skill in the art would not be able to determine the scope of the claim, the burden shifts to the applicant to show otherwise. Id. at 1054. A preponderance of the evidence supports the Examiner’s § 112, second paragraph rejection of claim 23 on the basis that it is unclear which active surface of the two recited in claim 11 “the active surface” of claim 23 refers to (Ans. 3, 4). Appellants’ response is that claim 23 refers to “either active surface” (App. Br. 4). However, claim 23 does not recite “either” active surface, it recites “the active surface”. Appellants have not adequately responded to the Examiner’s position that “the active surface” is 2 Appeal 2016-001312 Application 13/639,674 singular and without further clarification does not mean “either” active surface (Ans. 4). Thus, we affirm the Examiner’s § 112 rejection of claim 23 based on indefmiteness. The §103 Rejections The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRIntl Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We need address only independent claim 11 which recites using an electrode having a first active surface and a separate second active surface for processing two workpiece surfaces with the first and second active surfaces having independently controllable electrolyte feeds and suctions. We construe claim 11 in light of the Specification to require that the first active surface electrolyte feed and suction is independently controlled from the feed and suction of the second active surface (Spec. 127, explaining that the side segment 20 (second active surface) has an integral electrolyte feed means 56 and an integral electrolyte suctioning means 58 that can be 3 Appeal 2016-001312 Application 13/639,674 actuated independently of the electrolyte feed means 34 and electrolyte suctioning means 36 of the base segment 18 (first active surface)). The Examiner relies upon Linden as suggesting the first and separate second active surfaces by combining the embodiment of Linden’s Lig. 1, which undisputedly shows only one active surface of the electrode with the embodiment of Linden’s Lig. 5, which also undisputedly shows only one active surface. The Examiner’s position is that these embodiments collectively suggest that the active surface of Lig. 5 may be used to machine another feature, i.e. a bore, in the workpiece of Lig. 1 (Ans. 4, 5). There is no dispute that Linden explicitly describes using an electrode with only one active surface to make a feature in a workpiece. Appellants contend that the Examiner has used impermissible hindsight to combine the different embodiments of Linden, and has also not established how the applied prior art teaches feeding each active surface with its own independent electrolyte and suctioning same as de facto required by the claim (Reply Br. 2, 3; see also App. Br. 5, 6). A preponderance of the evidence supports Appellants’ position that the Examiner has not pointed to evidence to adequately establish that the applied prior art teaches or suggests the required first and second active surfaces for the electrode used in processing a workpiece, each electrode active surface with its own controllable feed and suction, as recited in Appellants’ independent claim 11. As stated by Appellants, “there is simply no reason or factual basis” to modify Linden’s first embodiment to make a bore (Reply Br. 5), and no suggestion in the applied prior art references that a person would have reasonably expected to arrive at the claimed method that can electrochemically machine two workpiece surfaces using an 4 Appeal 2016-001312 Application 13/639,674 electrode having first and second independently controllable active surfaces as required by claim 1 l(App. Br. 5—6). The Examiner has not adequately explained why the skilled artisan’s knowledge or inferences and creativity would have supported such an obviousness determination based on the teachings of the applied references. In response to Appellants’ arguments, the Examiner asserts that a person of ordinary skill in the art would have combined Linden Fig. 5’s second active surface with Linden Fig. l’s first active surface for purposes of “making the wider side bore with the second active surface.” Ans. 5. This reasoning is not adequately supported by evidence and appears to be based on impermissible hindsight. The Examiner does not direct us to evidence that a person of ordinary skill in the art would have understood that the cutting device of Linden Fig. 1 would have been capable of machining a “bore” or a “wider bore,” even with the addition of a second active surface. The Examiner’s finding appears to be inconsistent with Linden Fig. 1, which shows electrode 4 having a hexagonal cross-section fitting within cavity 5 having a corresponding hexagonal cross-section (see Linden Figs. 1 and 2)—not an electrode capable of “circular translational motion” for machining a bore, as shown in Linden Fig. 5. Id. (description of Fig. 5). On the record before us, the Examiner has not shown that each and every limitation of the claim is either described or suggested by the prior art or would have been obvious based on the knowledge or inferences and creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be 5 Appeal 2016-001312 Application 13/639,674 interpreted without hindsight reconstruction of the invention from the prior art”). It appears that the Examiner’s proposed modification of Linden’s Figure 1 embodiment, which explicitly describes using an electrode surrounded by an insulating sleeve 7 with the electrode having only one active surface (lower surface of electrode 4) to electrochemically machine a workpiece would be based on improper hindsight reconstruction (Final Act. 5—6). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). The Examiner does not establish that any of the other references as applied in the § 103 rejections cure these deficiencies and/or otherwise provide another rationale that cures these deficiencies. Accordingly, we reverse the § 103 rejections on appeal. ORDER It is ordered that the Examiner’s decision is affirmed-in-part. AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation