Ex Parte Inaba

Patent Trial and Appeal Board

Jun 27, 2018

14228834 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/228,834 03/28/2014 Harutora INABA
22429 7590 06/29/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4952-185 1044
EXAMINER
MILLS JR., JOE E
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARUTORA INABA 1
Appeal2018-004152
Application 14/228,834
Technology Center 3700
Before STEVEN D.A. McCARTHY, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5 and 7-11, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Fanuc Corporation ("Appellant") is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 2.
Appeal 2018-004152
Application 14/228,834
THE CLAIMED SUBJECT MATTER
Claims 1 and 5 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
l, A wire electric discharge machine with an automatic wire
connecting function, in which the \Vire electric discharge
machine comprises an upper nozzle and a lower nozzle which
support a wire electrode and in which an upper die guide and a
lower die guide are included~ respectively, and the wire electrode
and a workpiece are moved relative to each other to machine the
workpiece ancL if the wire electrode is broken during machining,
then the wire electrode is guided for automatic wire connection
by a working t1uid injected through a nozzle hole of the upper
nozzle, the wire electric discharge machine comprising:
upper die guide fhlcrum position acquisition unit that
acquires a distance :from a top surface of the workpiece to an
upper die guide fulcrum position of the upper die guide;
deviation calculation unit that calculates, as a deviation, a
distance from a position on the top surface of the \vorkpiece
where the wire electrode is hung from the upper die guide to a
top end position of a machined groove formed by the machining,
based on a commanded taper angle and the distance from the top
surface of the workpiece to the upper die guide fulcrum position;
and
automatic wire connection execution unit that rnoves the
upper nozzle by a distance equivalent to the calculated deviation,
thereby performing the automatic wire connection.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Ullmann
Josserand
Kawanabe
Iwasaki
Abe
Sakaguchi
us 3,987 ,270
us 4, 778,972
us 5,003,147
us 5,338,912
US 2005/0072760 Al
US 2008/0142487 Al
2
Oct. 19, 1976
Oct. 18, 1988
Mar. 26, 1991
Aug. 16, 1994
Apr. 7, 2005
June 19, 2008
Appeal 2018-004152
Application 14/228,834
Arakawa
Fujiwara
US 2008/0290071 Al
JP H08-025146 A
THE REJECTIONS
Nov. 27, 2008
Jan.30, 1996
I. Claim 5 stands rejected under 35 U.S.C. § 102(a)(l) as anticipated
by Ullmann. Final Act. 2-3.
II. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable
over Ullmann and Fujiwara. Id. at 8-9.
III. Claim 1 stands rejected under 35 U.S.C. § 103 as unpatentable
over Josserand and Arakawa. Id. at 4---6.
IV. Claims 2, 3, and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Josserand, Arakawa, and Abe. Id. at 6-7.
V. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over Josserand, Arakawa, and Kawanabe. Id. at 7-8.
VI. Claims 8 and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Josserand, Arakawa, and Iwasaki. Id. at 10-11.
VII. Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over Josserand, Arakawa, and Sakaguchi. Id. at 11.
OPINION
Rejection I
The Examiner finds that Ullmann discloses all of the limitations of
independent claim 5, including, inter alia, a "deviation acquisition unit ...
that acquires, as a deviation, a distance from a position on a top surface of
the workpiece where the wire electrode is hung from the upper die guide to a
top end position of a machined groove formed by the machining." Final
Act. 3 (citing Ullmann 6:36-40, Fig. 1 ). The Examiner explains that:
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Application 14/228,834
Ullmann describes a control system that calculates points of
contact coordinated between the electrode and the workpiece.
The electrode probes the workpiece in small increments and the
data is stored to be compared to information stored in memory.
Once these data points correspond to the right positioning of the
electrode and workpiece, the welding process will begin. The
"deviation" is calculated by communication of the position of the
electrode and the workpiece by the controller, the control logic,
and the memory and used to bring the electrode and workpiece
into alignment.
Id. at 13 (citing Ullmann 6:11--49). In the Answer, the Examiner takes the
position that "one of ordinary skill would be able to program the controller
[of Ullmann] to perform this function [i.e., acquiring, as a deviation, a
distance from a position on a top surface of the workpiece where the wire
electrode is hung from the upper die guide to a top end position of a
machined groove formed by the machining] and the controller disclosed by
the prior art is capable of performing the claimed function." Ans. 13.
Appellant argues that "Ullmann merely describe[ s] measuring the
distance of the tip of the electrode from the workpiece[, but t]here is nothing
that measures the distance from a point on the surface of the workpiece to a
machined groove." Appeal Br. 12 (emphasis omitted). As to the position
taken by the Examiner in the Answer, Appellant argues that "a controller
must be programmed [to perform the function] for anticipation," not merely
be capable of being programmed to perform the function. Reply Br. 8.
Appellant has defined the claimed deviation acquisition unit by what
it does-"acquire[], as a deviation, a distance from a position on a top
surface of the workpiece where the electrode is hung from the upper die
guide to a top end position of a machined groove formed by the machining."
Appeal Br. 36 (Claims App.). An Examiner may show that such a
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Application 14/228,834
functional limitation is an inherent characteristic of a prior art structure by
showing that the structure is capable of performing the recited function. In
re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997) (upholding the Board's
anticipation ruling based on the Board's finding that "the scaled-up version
[of the oil-can top] of [F]igure 5 of Harz would be capable of performing all
of the functions recited in Schreiber's claim 1"). However, it is not enough
that a device could be modified so as to be capable of performing the recited
function. Instead, the prior art structure must be capable of performing the
recited function without further modification or programming. See Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011)
(affirming district court holding that "memory for storing" limitation
"requires that the memory is actually programmed or configured to store the
data collection application").
Here, we have insufficient evidence from the Examiner to find that
Ullmann's control system is capable of performing the claimed function of
"acquir[ing], as a deviation, a distance from a position on a top surface of
the workpiece where the wire electrode is hung from the upper die guide to a
top end position of a machined groove formed by the machining" without
further programming, and instead, the Examiner's position is that "one of
ordinary skill would be able to program [Ullmann's] controller to perform
this function." Ans. 13. Ullmann is concerned with "bring[ing] the
coordinate systems of the machin[ing apparatus] and of the workpiece into
congruence," (Ullmann 6:36-38), but it is not apparent that it would be
necessary to calculate the distance from a position on a top surface of the
workpiece where the wire electrode is hung to a top end position of a
machined groove in order to do so. The Examiner's rejection is based on
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Application 14/228,834
anticipation by Ullmann, and the Examiner cannot rely on a modification
(e.g., further programming by one of ordinary skill in the art) to Ullmann's
system to support a rejection based on anticipation.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claim 5 as anticipated by Ullmann.
Rejection II
The rejection of dependent claim 7 relies on the same erroneous
finding that Ullmann discloses a system capable of acquiring, as a deviation,
a distance from a position on a top surface of the workpiece where the wire
electrode is hung from the upper die guide to a top end position of a
machined groove formed by the machining, as discussed above in
connection with Rejection I. Final Act. 9. The Examiner does not explain
how Fujiwara might cure this underlying deficiency, and relies on Fujiwara
only for its teachings relating to a pressure sensor to detect a change in
pressure. Id. Accordingly, we do not sustain the rejection of claim 7 under
35 U.S.C. § 103 as unpatentable over Ullmann and Fujiwara.
Rejection III
The Examiner relies on Josserand to teach many of the limitations of
independent claim 1, but acknowledges that although "Josserand teaches a
numerical control unit to automatically align the electrode and wire guides
with the machining hole, Josserand does not explicitly teach the process by
which that aligning occurs." Final Act. 5. The Examiner continues that:
Josserand fails to explicitly teach upper die guide fulcrum
position acquisition unit that acquires a distance from a top
surface of the workpiece to an upper die guide fulcrum position
of the upper die guide; deviation calculation unit that calculates,
as a deviation, a distance from a position on the top surface of
the workpiece where the wire electrode is hung from the upper
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die guide to a top end position of a machined groove formed by
the machining, based on a commanded taper angle and the
distance from the top surface of the workpiece to the upper die
guide fulcrum position.
Id. The Examiner finds that Arakawa teaches a
deviation calculation unit (Par. 42) that calculates, as a deviation,
a distance from a position on the top surface of the workpiece
where the wire electrode is hung from the upper die guide to a
top end position of a machined groove formed by the machining,
based on a commanded taper angle and the distance from the top
surface of the workpiece to the upper die guide fulcrum position
(Fig. 3; Par. 57).
Id. at 5---6. The Examiner concludes that it would have been obvious "to
have modified the numerical controlled machine of Josserand to include a
position acquisition unit and a deviation calculation unit as taught by
Arakawa in order to ensure proper alignment of the electrode with a tapered
cut." Id. at 6.
Appellant argues that J osserand relates to an electrode that is cut
before machining, as opposed to a wire electrode that has been broken
during machining, such that Josserand fails to teach that "if the wire
electrode is broken during machining, then the wire electrode is guided for
automatic wire connection by a working fluid," as claimed. Appeal Br. 21
(citing Josserand 4:48-50, 5:34--42). The Examiner responds that the
"Examiner sees no difference between a wire being broken or cut when
looked at as the wire being disconnected" and "the same process and
required structures are present in the disclosure of the prior art which could
and would reconnect the wire in either instance of the wire being
disconnected." Ans. 16.
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We understand claim 1 to be directed to a wire electric discharge
machine having structure for performing the function of guiding a wire
electrode for automatic wire connection should the condition of the wire
electrode being broken during machining occur. This structure must be
present in the machine regardless of whether the condition of the wire being
broken during machining is met and the function of guiding the wire for
automatic wire connection is actually performed. See Ex parte Schulhauser,
2016 WL 627792 at *7 (PTAB Apr. 28, 2016) (precedential). Appellant has
not adequately explained how Josserand lacks structure to perform the
function of guiding a wire electrode for automatic wire connection should
the condition of a wire electrode being broken during machining occur.
Instead, Appellant argues only that a wire electrode is not actually broken in
Josserand (but is instead cut), and that Josserand's cutting occurs before
(rather than during) machining. See, e.g., Appeal Br. 21. Appellant's
argument does not persuade us of error by the Examiner in finding that the
same process and structures present in the prior art are capable of
performing the function of guiding a wire electrode for automatic wire
connection under the condition of either the wire being cut, or the wire being
broken, during machining. See Ans. 16.
Appellant also argues that the Examiner's articulated rationale is
based on impermissible hindsight because "there is nothing in Josserand
about a tapered cut command" and the rationale has "nothing to do with a
feature of Jo[]sserand." Appeal Br. 28. Appellant maintains that the
Examiner has not adequately shown that one of ordinary skill would have
recognized that, without modification, Josserand would fail to ensure proper
alignment of the electrode with a tapered cut. Id. at 29. Appellant's line of
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Application 14/228,834
argument implies that because Josserand does not indicate any defects with,
or disadvantages of, its process for use with tapered cuts, there would be no
reason why one of ordinary skill in the art would have been led to modify
Josserand's process. We find this argument unpersuasive because it is not
necessary for a determination of obviousness that the reference to be
modified recognize or acknowledge a deficiency with its own design in
order to provide a motivation to modify or improve it.
Appellant also argues that "[ t ]here is nothing in Arakawa that
indicates that the features of Arakawa 'ensure proper alignment of the
electrode with a tapered cut,"' such that one of ordinary skill in the art would
not have "recognized that modifying Josserand as proffered would have
'ensured proper alignment of the electrode with a tapered cut."' Appeal Br.
29 (quoting Final Act. 6). We find this argument unpersuasive. The
rationale to combine the prior art does not have to be expressly stated in the
prior art. As noted by the Court in KSR, "[ t ]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Appellant has not provided any factual evidence or
persuasive technical reasoning to explain why modifying Josserand's system
to include a position acquisition unit and a deviation calculation unit as
taught by Arakawa, as proposed in the rejection, would yield anything other
than a predictable result of aligning the electrode (Ans. 17), or that doing so
would be somehow beyond the level of ordinary skill in the art.
Moreover, Appellant does not identify, nor do we discern, any
knowledge that the Examiner relied upon that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
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ordinary skill at the time of the invention. See In re McLaughlin, 443 F .2d
1392, 1395 (CCPA 1971) (so long as a conclusion of obviousness is based
on a reconstruction that "takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from [Appellant's] disclosure,
such a reconstruction is proper.").
Appellant's arguments do not apprise us of error in the Examiner's
findings or reasoning in support of the conclusion of obviousness.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103 as
unpatentable over Josserand and Arakawa.
Rejections IV-VII
With respect to the rejections of claims 2--4 and 8-11, Appellant does
not set forth any additional substantive arguments separate from the
arguments discussed supra. Instead, Appellant relies on the same arguments
set forth with respect to claim 1. See Appeal Br. 31-33. Accordingly, for
the same reasons that Appellant's arguments do not apprise us of error in the
rejection of claim 1, Appellant also does not apprise us of error in the
rejections, under 35 U.S.C. § 103, of: claims 2, 3, and 9 as unpatentable over
Josserand, Arakawa, and Abe; claim 4 as unpatentable over Josserand,
Arakawa, and Kawanabe; claims 8 and 10 as unpatentable over Josserand,
Arakawa, and Iwasaki; and claim 11 as unpatentable over Josserand,
Arakawa, and Sakaguchi.
DECISION
The Examiner's decision to reject claim 5 under 35 U.S.C. § 102(a)(l)
as anticipated by Ullmann is reversed.
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The Examiner's decision to reject claim 7 under 35 U.S.C. § 103 as
unpatentable over Ullmann and Fujiwara is reversed.
The Examiner's decision to reject claim 1 under 35 U.S.C. § 103 as
unpatentable over Josserand and Arakawa is affirmed.
The Examiner's decision to reject claims 2, 3, and 9 under 35 U.S.C.
§ 103 as unpatentable over Josserand, Arakawa, and Abe is affirmed.
The Examiner's decision to reject claim 4 under 35 U.S.C. § 103 as
unpatentable over Josserand, Arakawa, and Kawanabe is affirmed.
The Examiner's decision to reject claims 8 and 10 under 35 U.S.C.
§ 103 as unpatentable over Josserand, Arakawa, and Iwasaki is affirmed.
The Examiner's decision to reject claim 11 under 35 U.S.C. § 103 as
unpatentable over Josserand, Arakawa, and Sakaguchi 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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