Ex Parte Lamphere et al

Board of Patent Appeals and Interferences

Apr 5, 2010

10842344 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL SCOTT LAMPHERE, BIN WEI,
RENWEI YUAN, and JEFFREY FRANCIS WESSELS
____________

Appeal 2009-005367
Application 10/842,344
Technology Center 1700
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Decided: April 05, 2010
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 5-9, 11-25, 27-30, 32-35, and 40-51. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2009-005367
Application 10/842,344

Appellants claim an electroerosion apparatus 10 comprising a tubular
electrode 12, a multiaxis machine 14 including a tool head 16 for supporting
the electrode and a table 18 for supporting a workpiece 20, a power supply
22 for carrying power through the electrode and the workpiece, “wherein
said power supply is configured to generate an average current density in the
range of about 1900 to 12,000 amps per square inch”, and an electrolyte
supply 26 including a conduit 28 for circulating an electrolyte 30 through the
electrode (claim 40; Figs. 1-3). Appellants also claim “wherein said
electrolyte supply further includes two stage filters therein for successively
filtering from said electrolyte rough and fine erosion debris generated during
operation” (claim 51).
Further details regarding Appellants’ claimed subject matter are set
forth in representative independent claim 40 and representative dependent
claim 51, which read as follows:
40. An electroerosion apparatus comprising:

a tubular electrode having a tip;

a multiaxis machine including a tool head supporting said
electrode for spinning thereof with multiple axes of movement, and a table
for supporting a workpiece, said tool head including a lower tubular guide
for supporting a lower end of said electrode such that said tip of said
electrode is suspended therebelow, wherein said lower guide includes a
tubular ceramic bushing coaxially therein for coaxially supporting said
electrode;

a power supply including leads for carrying power through said
electrode and said workpiece, wherein said power supply is configured to
generate an average current density in the range of about 1900 to 12,000
amps per square inch;
an electrolyte supply including a conduit for circulating an
electrolyte through said electrode; and
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a controller operatively joined to said multiaxis machine and
said power supply for distributing multiple electrical arcs and electrical
discharges between said electrode and said workpiece for machining said
workpiece as said electrode spins and travels along a feedpath.

51. An apparatus according to claim 40 wherein said electrolyte
supply further includes two stage filters therein for successively filtering
from said electrolyte rough and fine erosion debris generated during
operation.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Wilkinson 4,159,407 Jun. 26, 1979
Inoue 4,725,706 Feb. 16, 1988
Ye 5,128,010 Jul. 07, 1992
Gleason 6,127,642 Oct. 03, 2000
Ichiyama 2003/0024122 A1 Feb. 06, 2003
Batzinger 6,680,454 B1 Jan. 20, 2004
Wei 6,858,125 B2 Feb. 22, 2005
Ishiwata EP 1249294 A2 Oct. 16, 2002
Under 35 U.S.C. § 103(a), the Examiner rejects:
(a) claim 1 over Wei, Ye, Batzinger, and Inoue;
(b) claims 2, 3, and 9 over Wei, Ye, Batzinger, Inoue and Ishiwata;
(c) claims 5, 6, 20-22, 25, 40, and 42-50 over Wei, Ye, Batzinger,
Inoue, and Gleason;
(d) claims 7, 8, 23, 24, and 41 over Wei, Ye, Batzinger, Inoue,
Gleason, and Wilkinson;
(e) claims 11-19, 27-30, and 32-35 over Wei, Ye, Batzinger, Inoue
and Ichiyama; and
(f) claim 51 over Wei, Ye, Batzinger, Inoue, Gleason and Ichiyama.
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Application 10/842,344

Appellants’ arguments are directed solely to the claim limitation
“wherein said power supply is configured to generate an average current
density in the range of about 1900 to 12,000 amps per square inch” (claim
40) and the claim limitation “wherein said electrolyte supply further includes
two stage filters therein for successfully filtering from said electrolyte rough
and fine erosion debris generated during operation” (claim 51). In
addressing these arguments, we will focus on representative claims 40 and
51 since they contain the limitations under consideration.
The Examiner acknowledges that the power supply for Wei’s
electroerosion apparatus is not disclosed as being configured to generate
Appellants’ claimed average current density in the range of about 1900 to
12,000 amps per square inch (Ans. para. bridging 3-4). As support for a
conclusion that it would have been obvious for one with ordinary skill in this
art to configure Wei’s power supply so as to generate such current densities,
the Examiner makes the findings set forth below:
[The] Examiner notes that Ye discloses electrical erosion
machining with current densities ranging up to 98,500 A/sq
in (col. 2, lines 2-28 and claim 1) as evidence that such a
process uses the claimed current densities; even though the
disk area (tooling electrode) is used to determine the current
density at the tooling electrode, the current density at the
workpiece would be substantially similar since the
machining area would substantially match the tooling
electrode, with the machining area only possibly being
slight[ly] larger than the tooling area.

(id.; see also id. at 10).
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness because “there is no mention in the combined
references of the feature of a power supply configured to generate an
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average current density in the range of about 1900 to 12,000 amps per
square inch” (Br. 12). More specifically, Appellants present the following
criticism of the Examiner’s current-density finding regarding the teachings
of Ye:
Contrary to the assertion of the Examiner, there is no
mention in Ye of a current density. It appears that the
Examiner has taken the 5mm disk diameter, computed the
area of the circle of 0.030434, and divided it into 3000A to
produce 98,500 A/in2. This calculation is incorrect because
there is no mention in Ye of the contact area or contact patch,
i.e., how much of the electrode is in contact with the
workpiece, which is necessary to determine the current
density.

(Br. 13, first para.).
This argument is unpersuasive for two reasons.
First, the argument is based on a criticism which fails to reveal
harmful error in the Examiner’s finding regarding the teachings of Ye.
According to Appellants’ criticism, the Examiner’s calculation (i.e., that the
apparatus of Ye is capable of generating current densities up to 98,500 amps
per square inch) is incorrect because there is no mention in Ye of “the
contact area . . . which is necessary to determine the current density” (id.;
underlining deleted). However, this criticism fails to address the Examiner’s
express finding that “the current density at the workpiece would be
substantially similar [to the current density at the disk area of the tooling
electrode] since the machining area would substantially match the tooling
electrode” (Ans. para. bridging 3-4). Moreover, Appellants’ criticism does
not address the fact that the density range capability of Ye’s apparatus
according to the Examiner’s finding (i.e., up to 98,500 amps per square inch)
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encompasses the Appellants’ claimed density range (i.e., 1900 to 12,000
amps per square inch). In other words, Appellants have failed to explain
why any error in the Examiner’s finding is so great as to nullify support for
the proposition that the claimed current densities were known in, and would
have been suggested by, the prior art.
Appellants’ argument also is unpersuasive because it fails to address
the ultimate issue of whether the claimed current densities would have been
obvious. Based on the record before us, we agree with the Examiner that the
prior art includes an electroerosion apparatus having a power supply capable
of generating current densities in the here-claimed range as evidenced by
Ye. In any case, Ye evinces that current densities were recognized in this art
as a result-effective parameter. Well established legal principles support the
conclusion that it would have been obvious for an artisan to develop
workable or optimum ranges for result-effective parameters. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Boesch, 617 F.2d
272, 276 (CCPA 1980).
For the above-stated reasons, the record before us supports a
conclusion that it would have been obvious for an artisan to provide the
power supply of Wei’s electroerosion apparatus with the capability of
generating “an average current density in the range of about 1900 to 12,000
amps per square inch” (claim 40).
Appellants present the following argument against the rejection of
claim 51:
[T]here is no mention in Ichiyama of a two stage filter
system for successively filtering from the electrolyte rough
and fine erosion debris generated during operation. Rather,
Ichiyama mentions a single filter 24. See Paragraph [0027].
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Appellant asserts that the Examiner has merely stated a
conclusion that it would have been obvious to add a second
filter with the impermissible use of hindsight reasoning
gleaned from Appellant's disclosure.

(Br. 18).
Contrary to Appellants’ argument, the Examiner’s obviousness
position is not merely a stated conclusion without support. Instead, the
Examiner’s obviousness conclusion is supported by express rationale. In
particular, the Examiner recognizes that Ichiyama discloses a single filter
rather than two stage filters but concludes that “[i]t would have been obvious
to add a second filter to provide a more pure electrolyte supply” (Ans. 7; see
also id. at 10). Appellants’ argument fails to even acknowledge this
rationale much less explain why the rationale fails to supply an obviousness
conclusion.
As our precedents make clear, the analysis of obviousness under § 103
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Accordingly, no
persuasive merit is present in Appellants’ argument that “there is no mention
in Ichiyama of a two stage filter system” (Br. 18). This is because the
argument relates to only the precise teaching of Ichiyama rather than what
Ichiyama would have suggested to an artisan with ordinary creativity and
skill.
This record supports the Examiner’s conclusion that it would have
been obvious to provide Wei with an electrolyte filter in view of Ichiyama
and further that it would have been obvious to provide Wei with a second
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filter in order to obtain the predictable result of a more pure electrolyte in
accordance with the Examiner’s rationale. See KSR, 550 US at 417.
In conclusion, Appellants’ arguments fail to reveal harmful error in
the Examiner’s obviousness conclusions regarding the claim limitations
discussed above. Accordingly, we sustain each of the § 103 rejections
advanced by the Examiner in this appeal.
The decision of the Examiner 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) (2008).

AFFIRMED

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