Ex Parte Ly

Board of Patent Appeals and Interferences

Jun 16, 2009

10499508 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHEL LY
____________

Appeal 2009-000357
Application 10/499,508
Technology Center 3700
____________

Decided:1 June 16, 2009
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000357
Application 10/499,508

STATEMENT OF THE CASE
Michel Ly (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is an electrode wire for spark
erosion machining. Spec. 1:4-5. Claims 1 and 5, reproduced below, are
representative of the subject matter on appeal.
1. A spark erosion machining electrode wire
comprising a metal core coated with a coating
layer of diffused zinc alloy, wherein:
- the core is of unalloyed copper,
- the coating layer is of diffused copper and
zinc alloy, and
- the thickness of the coating layer of copper
and zinc alloy is greater than about 10% of the
diameter of the electrode wire.

5. A spark erosion machining electrode wire
comprising a metal core coated with a coating
layer of diffused zinc alloy, wherein:
- the core is of unalloyed copper,
- the coating layer is of diffused copper and
zinc alloy, and
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- the thickness of the coating layer of copper and zinc
alloy is greater than about 10% of the diameter of the electrode
wire;
wherein the unalloyed copper constituting the core is
selected from the group consisting of the following coppers,
which are designated by the reference used in French standard
NF A 51050: Cu-a1; Cu-a2; Cu-C1; and Cu-c2.

THE EVIDENCE
The Examiner relies upon the following evidence:
Convers US 4,287,404 Sep. 1, 19812
Briffod US 4,341,939 Jul. 27, 1982
Groos US 4,935,594 Jun. 19, 19903
Tomalin (Tomalin ‘552) US 4,988,552 Jan. 29, 1991
Miyazaki US 5,599,633 Feb. 4, 1997
Tomalin (Tomalin ‘010) US 5,945,010 Aug. 31, 1999

THE REJECTIONS
Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 5 and 17 under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
2. The Examiner rejected claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C.
§ 112, second paragraph, for indefiniteness.
3. The Examiner rejected claims 1, 2, 5, 7-10, 12-14, 17, and 20 under
35 U.S.C. § 103(a) as unpatentable over Tomalin ‘010, and Miyazaki or
Convers.

2 Reexamination Certificate B1 issued Jun 11, 1985
3 Reexamination Certification C2 issued Aug. 5, 2003, and Reexamination
Certification B1 issued Jan. 4, 2000.
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4. The Examiner rejected claims 1, 2, 5, 6, 9, 10, 12-14, 17, and 20 under
35 U.S.C. § 103(a) as unpatentable over Groos, and Miyazaki or Convers.
5. The Examiner rejected claims 1, 2, 5, 6, 9-11, 13, 14, 17, and 20 under
35 U.S.C. § 103(a) as unpatentable over Briffod, and Miyazaki or Convers.
6. The Examiner rejected claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Tomalin ‘010, Miyazaki or Convers, and
Tomalin ‘552.
7. The Examiner rejected claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Groos, Miyazaki or Convers, and Tomalin
‘552.
8. The Examiner rejected claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Briffod, Miyazaki or Convers, and Tomalin
‘552.
ISSUES
The Examiner rejected claims 5 and 17 as indefinite because the
French standard for copper recited in the claims could change over time.
Ans. 4, 16. Appellant contends “[t]he Examiner has not cited any rule
against the recitation of standards in claims. Further, the Examiner has not
asserted that the person of ordinary skill in the art would have found claims
5 and 7 [sic, 17] indefinite when the application was filed.” Reply Br. 19.
The first issue before us is:
Has Appellant demonstrated the Examiner erred in concluding that the
recitation of a standard in claims 5 and 17 renders these claims indefinite?
The Examiner rejected claims 3, 4, 15, 16, 18, and 19 under
35 U.S.C. § 112, second paragraph, for indefiniteness because the claims
recite electrical conductivity of the electrode wire in terms of the
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International Annealed Copper Standard (IACS) without stating the
temperature in the claims, and “IACS values are dependent on temperature,
thus the values are indefinite.” Ans. 4. Appellant contends the Specification
defines IACS conductivity to be at 20ºC in the Specification, and that this
definition governs. Reply Br. 20.
The second issue before us is:
Has Appellant demonstrated the Examiner erred in concluding that the
recitation of electrical conductivity of the electrode wire in terms of the
IACS in claims 3, 4, 15, 16, 18, and 19 renders these claims indefinite?
The Examiner found that Tomalin ‘010 discloses an electric discharge
machining (EDM) wire with a core made of copper, and a copper-zinc alloy
coating as recited in claims 1, 2, 5, 7-10, 12-14, 17, and 20, except that
Tomalin ‘010 does not disclose the thickness of the coating being greater
than about 10 percent of the diameter of the wire. Ans. 5. The Examiner
found that Miyazaki discloses a wire electrode with a coating thickness of
between 10 and 20 percent. Ans. 5. The Examiner concluded it would have
been obvious use the coating with the thickness taught by Miyazaki on the
core of Tomalin ‘010 to optimize strength and processing speed. Ans. 5.
Appellant contends Tomalin ‘010 discloses a copper core of
unspecified purity and not the claimed copper core. Reply Br. 10-11, 27-28.
Appellant also contends that Tomalin ‘010 teaches away from the
combination found by the Examiner because Tomalin ‘010 teaches use of a
thin coating and the advantages of higher zinc content in the core. Reply Br.
8-10, 21-27.
The third issue before us is:
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Has Appellant demonstrated the Examiner erred in concluding that
claims 1, 2, 5, 7-10, 12-14, 17, and 20 are unpatentable over Tomalin ‘010
and Miyazaki either because Tomalin ‘010 does not disclose the claimed
core, or because Tomalin ‘010 teaches away from the proposed
combination?
The Examiner found that Groos discloses an EDM wire with a core
made of copper, and the copper-zinc alloy coating recited in claims 1, 2, 5,
6, 9, 10, 12-14, 17, and 20, except that Groos does not disclose the thickness
of the coating being greater than about 10% of the diameter of the wire.
Ans. 6-7. The Examiner found that Miyazaki discloses a wire electrode with
a coating thickness of between 10 and 20 percent. Ans. 6-7. The Examiner
concluded it would have been obvious to use the coating with the thickness
taught by Miyazaki on the core of Groos to optimize strength and processing
speed. Ans. 7.
Appellant contends Groos does not disclose a core of copper that
satisfies French Standard NF A 51-050 (ISO 431:1981).4 Reply Br. 14, 31-
32. Appellant also contends that “Miyazaki’s disclosure of the advantages
of using his core materials would dissuade the person of ordinary skill in the
art from using any other core material. Reply Br. 15, 32.
The fourth issue before us is:
Has Appellant demonstrated the Examiner erred in concluding that
claims 1, 2, 5, 6, 9, 10, 12-14, 17, and 20 are unpatentable over Groos and
Miyazaki either because Groos does not disclose the claimed core, or
because Miyazaki teaches away from the proposed combination?

4 Appellant also contends that Miyazaki does not disclose a core that satisfies
claim 5; however, it is uncontested that Miyazaki does not disclose a core
that satisfies claim 5.
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The Examiner found that Briffod discloses a metal wire for an EDM
with a copper core and the zinc coating recited in claims 1 and 5, but does
not disclose the thickness of the coating being greater than about 10 percent
of the diameter of the wire. Ans. 7-8. The Examiner found that Miyazaki
discloses a wire electrode with a coating thickness of between 10 and 20
percent. Ans. 8. The Examiner concluded it would have been obvious to
use the thickness of the coating of Miyazaki on the core of Briffod to
optimize strength and processing speed. Ans. 8.
Appellant contends Briffod does not disclose the claimed copper core.
Reply Br. 16, 34. Appellant also contends that Briffod teaches away from
the combination proposed by the Examiner by teaching the advantages of a
thin coating. Reply Br. 17.
The fifth issue before us is:
Has Appellant demonstrated the Examiner erred in concluding that
claims 1, 2, 5, 6, 9, 10, 12-14, 17, and 20 are unpatentable over Briffod and
Miyazaki either because Briffod does not disclose the claimed core, or
because Briffod teaches away from the proposed combination?
The Examiner’s conclusion that claims 3, 4, 15, 16, 18, and 19 are
unpatentable over Tomalin ‘552 in combination with either Tomalin ‘010,
Groos, or Briffod, and further in view of Miyazaki or Convers, is based in
part on the finding that Tomalin ‘552 discloses a wire electrode used in
EDM with electrical conductivity of 50 to 70 percent of IACS. Ans. 11.
Appellant contends that the Examiner has misread Table 1 of Tomalin
‘552 and that the highest overall electrical conductivity disclosed by Table 1
is 54.6 percent of IACS, which is outside the claimed range of 65 to 75
percent of IACS. Reply Br. 41-43.
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The sixth issue before us is:
Has Appellant demonstrated the Examiner erred in concluding that
claims 3, 4, 15, 16, 18, and 19 are unpatentable over Tomalin ‘552 in view
of either Tomalin ‘010, Groos, or Briffod, and further in view of Miyazaki
or Convers, because Tomalin ‘552 does not disclose overall electrical
conductivity of the wire within the claimed range?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The International Annealed Copper Standard (IACS) measures
electrical conductivity at 20ºC. Encyclopedia Britannica Online,
Academic Edition (entry entitled “Copper processing”) found at
http://www.search.eb.com (last visited May 28, 2009).
2. Appellant’s Specification discloses that conductivity testing of
the unalloyed copper core was performed at 20ºC. Spec. 9:23-27.
3. Tomalin ‘010 discloses an electrode wire to be used in electric
discharge machining (EDM) comprised of a core and a coating
layer. Tomalin ‘010, col. 1, ll. 20-23; col. 3, ll. 52-59.
4. Tomalin ‘010 discloses the core of the EDM wire can be “a first
metal or a metal alloy, such as for instance copper, brass, or
copper clad steel….” Tomalin ‘010, col. 3, ll. 53-54. Reciting “a
first metal or a metal alloy” implies by contrast that the “first
metal” is unalloyed and therefore has a high copper content.
Likewise, reciting copper or brass, wherein brass is an alloy of
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copper and zinc, further implies by contrast that the reference to
“copper” is to unalloyed copper. As such, a person of ordinary
skill in the art would understand that Tomalin ‘010 discloses a
core of copper that is unalloyed and therefore has a high copper
content.
5. Tomalin ‘010 discloses that it is important the EDM wire be a
good conductor, because the main function of an EDM wire is to
deliver electricity to the gap, and a higher conductivity wire does
this more efficiently. Tomalin ‘010, col. 2, ll. 34-38.
6. Tomalin ‘010 discloses that a higher zinc content of core material
is desirable to provide adequate flushing because the core may be
exposed either by erosion of the coating, or because the coating is
discontinuous by nature. Tomalin ‘010, col. 7, ll. 29-35. Further,
Tomalin ‘010 discloses the higher zinc content in the core
permits the wire to be drawn “much straighter and more
consistently straighter than conventional coated products.”
Tomalin ‘010 col. 7, ll. 35-40.
7. Tomalin ‘010 discloses that a thin zinc coating has the advantage
of lower cost as compared to a thicker zinc coating. Tomalin
‘010, col. 7, ll. 42-46, 52-55.
8. Miyazaki discloses an electrode wire to be used in EDM
comprised of a core and a coating layer. Miyazaki, col. 1,
ll. 10-14.
9. Miyazaki discloses core 2 is a copper alloy. Miyazaki, col. 1, l.
59-61; col. 2, ll. 13-14, 20-21.
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10. Miyazaki discloses coating layer 1 is made of an alloy containing
zinc. Miyazaki, col. 1, ll. 59-61; col. 2, ll. 31-34; col. 3, ll. 44-45.
11. Miyazaki discloses the thickness of coating layer 1 is preferably
10 to 20 percent of the diameter of the electrode wire. Miyazaki,
col. 3, ll. 45-48.
12. Miyazaki discloses objects of the invention include the
production of an EDM electrode with a coating layer that is hard
to scrape, and a high processing speed. Miyazaki, col. 2, ll. 8-11.
13. Miyazaki discloses using a copper alloy for the coating layer
because of greater resistance to scraping than a zinc alloy.
Miyazaki, col. 2, ll. 27-30.
14. Miyazaki discloses the level of zinc in the coating layer must be
greater than 38 percent by weight to prevent the material from
becoming too difficult to work, but no more than 49 percent by
weight to prevent the material from becoming too fragile.
Miyazaki, col. 2, ll. 31-52.
15. Miyazaki discloses that processing speed improves as the content
of zinc or zinc and aluminum in the coating increases. Miyazaki,
col. 3, ll. 1-2.
16. Miyazaki discloses that tensile strength at high temperature is
reduced as zinc content in the copper alloy of the coating is
increased. Miyazaki, col. 3, ll. 5-7. In order to provide adequate
tensile strength to the wire as a whole when there is a high zinc
content in the coating, the core composition must not exceed: 20
percent by weight of zinc, 7 percent by weight of either tin or
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silver, or a combined 20 percent by weight of zinc and 7 percent
by weight of tin or silver. Miyazaki, col. 3, ll. 10-26.
17. Groos discloses a method of manufacture of an electrode for
EDM comprised of a core with one or more coatings layers.
Groos, col. 1, ll. 8-14.
18. Groos discloses the core “consists advantageously of an
electrolytic copper having more than 99.0 percentage by weight
of copper and a very low oxygen content.” Groos, col. 2,
ll. 35-38. More specifically, Groos discloses a core with a copper
content by weight greater than 99.9 percent and an oxygen
content between 0.005 and 0.040 percent. Groos, col. 4,
ll. 10-14.
19. Groos does not discuss, discourage, or discredit the notion of a
coating with a thickness greater than 10 percent of the diameter
of the wire. Groos, passim.
20. French standard NF A 51-050 specifies that Cu-a1 (ISO Cu-ETP)
is comprised of a minimum of 99.90 percent copper. French
standard NF A 51-050; International Standard 431 (Second
Edition, Dec. 15, 1981).
21. Briffod discloses an electrode wire to be used in EDM comprised
of a core and a coating layer. Briffod, col. 1, ll. 7-13.
22. Briffod discloses copper was in common use in EDM wires.
Briffod, col. 1, ll. 39-40. Briffod discloses “a core 1 of copper
and a superficial coating on the copper core of a film 2 of copper-
zinc alloy.” Briffod, col. 2, ll. 54-57; see also reference to copper
core at col. 5:12. Reciting core 1 as “copper” and the coating 2
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as a “copper-zinc alloy” implies by contrast that the copper of the
core is unalloyed and therefore has a high copper content. As
such, a person of ordinary skill in the art would understand that
Briffod discloses a core of unalloyed copper with a high copper
content.
23. Briffod discloses other materials may be used for core 1,
provided they are good conductors. Briffod, col. 2, ll. 60-63.
Briffod discloses that a core 1 may also be selected that is a poor
conductor, provided the core material has “good mechanical
properties” and is coated with a good conductor. Briffod, col. 6,
ll. 12-20. We find that Briffod discloses copper was chosen for
the core in part because it is a good conductor with “good
mechanical properties.”
24. Briffod discloses the principle object of the invention is to
increase the machining speed of the electrode wire. Briffod,
col. 1, ll. 65-67.
25. Briffod does not discuss, discourage, or discredit the notion of a
coating with a thickness greater than 10 percent of the diameter
of the electrode wire. Briffod, passim.
26. Tomalin ‘552 discloses an electrode wire to be used in electric
discharge machining (EDM) comprised of a copper clad steel
core within a brass coating layer. Tomalin ‘552, col. 1, ll. 7-10;
col. 3, ll. 9-16.
27. Tomalin ‘552 discloses the overall electrical conductivities for
EDM wires, in percent of the IACS, for three types of copper
clad steel cores (copper clad steel cores having core
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conductivities of 50, 60, and 70 percent IACS). Tomalin ‘552,
Table 1; col. 3, ll. 43-61; col. 4, ll. 26-28. For example, the first
entry recites that an 8 mil wire with a copper clad steel core
having a core conductivity of 70 percent IACS will have 54.6
percent IACS overall conductivity. Tomalin ‘552, Table 1; col.
3, ll. 43-61. Overall conductivities in Table 1 range from 54.6 to
38 percent IACS. Tomalin ‘552, Table 1.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claims are considered to be definite, as required by the second
paragraph of 35 U.S.C. § 112, when they define the metes and bounds of the
claimed invention with a reasonable degree of precision and particularity.
See In re Venezia, 530 F.2d 956, 958 (CCPA 1976). Definiteness is
measured at the time the application was filed. W.L. Gore & Associates, Inc.
v. Garlock, Inc. 721 F.2d 1540, 1556-58 (Fed. Cir. 1983) (indefiniteness is
measured at the time the application is filed and not at a subsequent date).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
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nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001).

ANALYSIS
1. Rejection of claims 5 and 17 under 35 U.S.C. § 112, second
paragraph, for indefiniteness
Reading Appellant’s claims in light of the Specification, claims 5 and
17 include the limitation that the core is of unalloyed copper selected from
the group of four coppers defined by French standard NF A 51-050.
Likewise, the Specification discloses that the copper core may be selected
from four listed types of copper defined in French Standard NF A 51-050.
Spec. 9:15-22. A person of ordinary skill in the art would understand that
claims 5 and 17 require the core to be selected from the group of four types
of French standard NF A 51-050 copper listed, based on the standard in
effect at the time Appellant’s application was filed.
The Examiner’s rejection is based on a concern that standards may
change over time. This situation is no different from a claim that recites a
term whose meaning may change over time. Even if the common definition
of that term should change over time, the ordinary meaning of the term as it
would have been understood by one having ordinary skill in the art at the
time of the invention controls. In the same way, should the French standard
of claims 5 and 17 change over time, the scope of the claims remains tied to
the standard in effect at the time the application was filed. By referencing
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the type of copper in French Standard NF A 51-050 in the claims, the claims
incorporate that standard as it existed on the effective filing date. As such,
one having ordinary skill in the art would understand what is claimed in
claims 5 and 17. Appellant has demonstrated the Examiner erred in the
rejection of claims 5 and 17.

2. Rejection of claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C. § 112,
second paragraph, for indefiniteness
Reading the claims in light of the Specification, the claims recite
electrical conductivity in a range from about 65 percent to about 75 percent
IACS. The Specification notes that conductivity was measured at 20ºC
(Fact 2). Further, the IACS standard itself states that conductivity is
measured at 20ºC (Fact 1). A person of ordinary skill in the art would
understand that claims 3, 4, 15, 16, 18, and 19 require the conductivity
specified in the claims (i.e., 65 to 75 percent IACS) to be measured at 20ºC.
This is not reading a limitation of the Specification into the claim, but rather
the claim incorporates that limitation by referring to the IACS standard.
Appellant has demonstrated the Examiner erred in the rejection of claims 3,
4, 15, 16, 18, and 19.

3. Rejection of claims 1, 2, 5, 7-10, 12-14, 17, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Tomalin ‘010 and Miyazaki or Convers
Claims 5 and 17
Appellant argues claims 5 and 17 as a group. Reply Br. 8-11. As
such, we select claim 5 as the representative claim, and claim 17 stands or
falls with claim 5.
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Regarding the core composition, claim 5 recites that the copper of the
core must be unalloyed, and selected from the list of four types of copper
defined by French Standard NF A 51-050. Appellant argues, “Tomalin ‘010
discloses a copper core of unspecified purity.” Reply Br. 11. Tomalin ‘010
discloses an EDM electrode wire comprised of a core and a coating layer,
where the core is of unalloyed copper and has a high copper content (Facts
3, 4). Appellant has the burden to prove error in the Examiner’s decision to
reject claim 5. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).
However, Appellant fails to point to any requirement of French standard
NF A 51-050 that the copper core of Tomalin ‘010 does not meet. Further,
Tomalin ‘010 discloses that it is important that the core be a good conductor
of electricity, and that a higher conductivity improves efficiency (Fact 5).
Given the importance of good conductivity and that the conductivity of
copper increases as the percent of copper increases, it is reasonable to
conclude that Tomalin ‘010 used a core with a high percentage of copper.
Appellant has failed to demonstrate the Examiner erred in finding that the
copper core of Tomalin ‘010 meets the limitations of the copper core of the
claim. Even were the copper material disclosed by Tomalin ‘010 not
identical to one of the four copper materials recited in claim 5, the
mechanical and conductivity properties of the copper material disclosed in
Tomalin ‘010 would have to be so similar to the properties of the recited
copper materials as to suggest the simple substitution of a core of one of the
recited materials for Tomalin ‘010’s copper core.
While Appellant is correct that Tomalin ‘010 teaches advantages to
use of zinc content in the core material (Fact 6), that alone does not teach or
suggest the core could not be unalloyed copper as claimed. To the contrary,
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Tomalin ‘010 discloses the core may be unalloyed copper (Fact 4). Further,
Tomalin ‘010 also discloses including zinc in the core in part to provide
adequate flushing because the core may be exposed either by erosion of the
coating, or the discontinuous nature of the coating (Fact 6). In other words,
Tomalin ‘010 uses zinc in the core in part to compensate for the thin and
discontinuous coating, which does not suggest that a thicker coating may not
be used. In fact, to the contrary, this may be a problem that the thicker
coating of Miyazaki solves, thereby eliminating the need to add zinc to the
core.
Appellant also argues that Tomalin ‘010 teaches the thin zinc coating
is less expensive than a thicker zinc coating. Reply Br. 8-10. While this is
true (Fact 7), it proves only that the approach taken by Tomalin ‘010 of
using a thin coating has an advantage. Each of Appellant’s arguments
amounts to advantages of an approach taken by Tomalin ‘010, but nothing in
the disclosure of Tomalin ‘010 would lead a person of ordinary skill in the
art away from the approach taken by Appellant.
Appellant has failed to demonstrate the Examiner erred in the decision
to reject claim 5 as unpatentable over Tomalin ‘010 and Miyazaki. Claim 17
falls with claim 5. Because we affirm the rejection based on Tomalin ‘010
and Miyazaki, we need not analyze the alternative combination of Tomalin
‘010 and Convers.

Claims 1, 2, 7-10, 12-14, and 20
Appellant argues claims 1, 2, 7-10, 12-14, and 20 as a group. Reply
Br. 21-27. As such, we select claim 1 as the representative claim, and
claims 2, 7-10, 12, 14, and 20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
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Appellant repeats the arguments used for claims 5 and 17.5 Reply
Br. 21-28. The difference between claim 5 and claim 1 is that claim 5
recites a core of unalloyed copper and further specifies the copper must be
one of four listed types, while claim 1 does not contain the latter limitation.
This distinction does not alter the analysis of claim 5, supra, and we affirm
the rejection of claim 1 as obvious over Tomalin ‘010 and Miyazaki. Claims
2, 7-10, 12-14, and 20 fall with claim 1. Because we affirm the rejection
based on Tomalin ‘010 and Miyazaki, we need not analyze the alternative
combination of Tomalin ‘010 and Convers.

4. Rejection of claims 1, 2, 5, 6, 9, 10, 12-14, 17, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Groos and Miyazaki or Convers
Claims 5 and 17
Appellant argues claims 5 and 17 as a group. Reply Br. 13-15. As
such, we select claim 5 as the representative claim, and claim 17 stands or
falls with claim 5.
Groos discloses an EDM electrode comprised of a core and one or
more coating layers where the core has a copper content by weight greater
than 99.9 percent (Facts 17, 18). This meets the minimum copper
composition required by one of the four specified types of copper (Fact 20).
Appellant has the burden to prove error in the Examiner’s decision to reject
claim 5. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). Appellant
fails to point to any requirement of French standard NF A 51-050 that the
copper core of Groos does not meet. Appellant has failed to demonstrate the

5 The arguments differ only in that Appellants do not argue the limitation
that the core material must be one of the four specified types of copper that
meet French standard NF A 51-050 because this limitation is not in claim 1.
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Examiner erred in finding that the copper core of Groos meets the
limitations of the copper core of the claim.
Appellant’s contention that Miyazaki’s disclosure of the advantages of
using his core materials would dissuade a person of ordinary skill from any
other core material is unconvincing for the following reasons. Miyazaki
discloses a core of a copper alloy, and because tensile strength at high
temperature is reduced as the zinc content in the coating is increased, the
copper core cannot be diluted with other specified materials beyond certain
percentages in order to preserve adequate tensile strength of the wire (Facts
9, 16). However, this teaching in Miyazaki does not teach that an unalloyed
copper core is undesirable; rather, it sets a maximum for dilution of the
copper core. Miyazaki’s disclosure would not lead a person of ordinary
skill in the art in a direction other than that taken by Appellant. Appellant
has failed to demonstrate the Examiner erred in the decision to reject claim 5
as unpatentable over Groos and Miyazaki. Claim 17 falls with claim 5.
Because we affirm the rejection based on Groos and Miyazaki, we need not
analyze the alternative combination of Groos and Convers.

Claims 1, 2, 6, 9, 10, 12-14, and 20
Appellant argues claims 1, 2, 6, 9, 10, 12-14, and 20 as a group.
Reply Br. 31-32. As such, we select claim 1 as the representative claim, and
claims 2, 6, 9, 10, 12-14, and 20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
Appellant repeats the arguments used for claims 5 and 17. Reply Br.
31-34. The difference between claim 5 and claim 1 is that claim 5 recites a
core of unalloyed copper and further specifies the copper must be one of
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four listed types, while claim 1 does not contain the latter limitation. This
distinction does not alter the analysis of claim 5, supra, and thus the
Appellant’s arguments are equally unconvincing as to claim 1.
Appellant also attacks the rationale to combine Groos and Miyazaki
for two reasons: one, why would a person of ordinary skill in the art use a
core of unalloyed copper “in view of use of copper cores that contain small
amounts of silver or tin used by Miyazaki”; and two, why would a person of
ordinary skill in the art use a layer with a relative thickness greater than 10
percent “in view of the relatively thin coating disclosed by Groos.” Reply
Br. 32.
As we discussed in the analysis of claim 5 in the fourth rejection,
supra, Miyazaki teaches that the copper core cannot be diluted with other
specified materials beyond certain percentages in order to preserve adequate
tensile strength of the wire; however, this does not teach away from an
unalloyed copper core. Further, while Gross may use a coating less than 10
percent of the thickness of the wire, Groos does not discuss, discourage, or
discredit the notion of a coating with a thickness greater than 10 percent of
the diameter of the wire (Fact 19). More importantly, Appellant’s argument
is premised on the contention that “the Examiner has not articulated any
reasoning with some rational underpinning” for the proposed combination.
Reply Br. 32. This is not true. The Examiner concluded that the subject
matter of claim 1 was unpatentable over Groos and Miyazaki “because the
strength and processing speed is optimized.” Ans. 7. Appellant has not
even addressed this reason to combine and in failing to do so has failed to
demonstrate error by the Examiner.
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We affirm the rejection of claim 1 as obvious over Groos ‘010 and
Miyazaki. Claims 2, 6, 9, 10, 12-14, and 20 fall with claim 1. Because we
affirm the rejection based on Groos and Miyazaki, we need not analyze the
alternative combination of Tomalin ‘010 and Convers.

5. Rejection of claims 1, 2, 5, 6, 9-11, 13-14, 17, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Briffod and Miyazaki or Convers
Claims 5 and 17
Appellant argues claims 5 and 17 as a group. Reply Br. 15-18. As
such, we select claim 5 as the representative claim, and claim 17 stands or
falls with claim 5.
Briffod discloses an electrode wire to be used in EDM comprised of a
core and a coating layer, where the core is of unalloyed copper and has a
high copper content (Facts 21, 22). Appellant has the burden to prove error
in the Examiner’s decision to reject claim 5. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006). Appellant argues, “Briffod is indifferent to the type
of core material used,” and “discloses a core wire made of ‘copper’ of
unspecified purity.” Reply Br. 16. First, it is a mischaracterization to argue
the Briffod is indifferent to the core material used. To the contrary, Briffod
teaches a core of copper, a good conductor, and alternatively a core of a poor
conductor, but only if the non-conducting core material has “good
mechanical properties” and is coated with a good conductor (Fact 23).
Briffod’s statement that any “appropriate material” can be used as core
material indicates not indifference, but that the material must meet some
specified criteria in order to be “appropriate.” Reply Br. 34 (quoting
Briffod, col. 6, ll. 12-23). Second, Appellant again fails to specifically point
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to the portion of French standard NF A 51-050 that the copper core of
Briffod does not meet. Appellant has failed to demonstrate the Examiner
erred in finding that the copper core of Briffod meets the limitations of the
copper core of the claim. Even were the copper material disclosed by
Briffod not identical to one of the four copper materials recited in claim 5,
Briffod’s teaching to use a material with suitable mechanical and
conductivity properties would have suggested the simple substitution of a
core of one of the recited copper materials for Briffod’s copper core.
Appellant’s teaching away argument looks at the issue of obviousness
too narrowly. While Briffod teaches advantages to use of a thin coating of
the specified materials, Briffod does not expressly teach that coating layers
greater than 10 percent of the diameter of the wire will not serve as
electrodes for EDM (Fact 25). In addition, Briffod discloses the principle
object of the invention is to increase processing speed (Fact 24), and
likewise, Miyazaki sought to increase processing speed (Fact 12). A person
of ordinary skill in the art would recognize that the disclosures of Briffod
and Miyazaki provide alternative solutions to increasing processing speed,
each with advantages and disadvantages. Further, Briffod teaches the use of
a copper core provides good conductivity and good strength (Fact 23).
Miyazaki discloses that use of a high zinc content coating lowers tensile
strength at high temperatures necessitating good strength characteristics in
the core so that the wire as a whole has adequate tensile strength (Fact 16).
A person of ordinary skill in the art would recognize that Briffod’s teaching
of a core with good conductivity and strength, would complement
Miyazaki’s EDM electrode and its corresponding need for a core with good
strength and conductivity. Appellant’s argument does not demonstrate a
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person of ordinary skill in the art would have been led in a direction
divergent from that chosen by Appellant.
Appellant’s arguments fail to demonstrate error in the Examiner’s
decision to reject claim 5. Claim 17 falls with claim 5. Because we affirm
the rejection based on Briffod and Miyazaki, we need not analyze the
alternative combination of Briffod and Convers.

Claims 1, 2, 6, 9-11, 13, 14, and 20
Appellant argues claims 1, 2, 6, 9-11, 13, 14, and 20 as a group.
Reply Br. 34-37. As such, we select claim 1 as the representative claim, and
claims 2, 6, 9-11, 13, 14, and 20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
Appellant makes similar arguments for claim 1 as for claim 5. For the
same reasons explained in the analysis of claim 5 of rejection 5, supra, these
arguments are unconvincing.
We affirm the rejection of claim 1 as obvious over Briffod and
Miyazaki. Claims 2, 6, 9-11, 13, 14, and 20 fall with claim 1. Because we
affirm the rejection based on Briffod and Miyazaki, we need not analyze the
alternative combination of Briffod and Convers.

6. Rejection of claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Tomalin ‘010, Miyazaki or Convers, and Tomalin
‘552.
Claims 3, 4, 15, 16, 18, and 19 contain the limitation that the
conductivity of the wire is “from about 65% IACS to about 75% IACS.”
Appellant is correct that the Examiner misread Table 1, and that Table 1
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discloses conductivity for an EDM wire of 38 to 54.6 percent of IACS,
which is not within the claimed range (Fact 27). Miyazaki, Convers, and
Tomalin ‘010 do not correct this shortcoming of Tomalin ‘552. Appellant
has demonstrated error by the Examiner in the rejection of claims 3, 4, 15,
16, 18, and 19.

7. Rejection of claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Groos, Miyazaki or Convers, and Tomalin ‘552
This rejection suffers from the same shortcoming as rejection 6,
supra, which is not corrected by Groos, and also must be reversed.

8. Rejection of claims 3, 4, 15, 16, 18, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Briffod, Miyazaki or Convers, and Tomalin ‘552
This rejection suffers from the same shortcoming as rejection 6,
supra, which is not corrected by Briffod, and must be reversed.

CONCLUSIONS
Appellant has demonstrated the Examiner erred in concluding that the
recitation of a standard rendered claims 5 and 17 indefinite.
Appellant has demonstrated the Examiner erred in concluding that the
recitation of electrical conductivity of the electrode wire in terms of the
IACS rendered claims 3, 4, 15, 16, 18, and 19 indefinite.
Appellant has failed to demonstrate the Examiner erred in concluding
that claims 1, 2, 5, 7-10, 12-14, 17, and 20 are unpatentable over Tomalin
‘010 and Miyazaki.
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Appellant has failed to demonstrate the Examiner erred in concluding
that claims 1, 2, 5, 6, 9, 10, 12-14, 17, and 20 are unpatentable over Groos
and Miyazaki.
Appellant has failed to demonstrate the Examiner erred in concluding
that claims 1, 2, 5, 6, 9-11, 13-14, 17, and 20 are unpatentable over Briffod
and Miyazaki.
Appellant has demonstrated the Examiner erred in concluding that
claims 3, 4, 15, 16, 18, and 19 are unpatentable over Tomalin ‘552 in view
of either Tomalin ‘010, Groos, or Briffod, and further in view of Miyazaki
or Convers.
DECISION
We reverse the Examiner's decision to reject claims 3-5 and 15-19 as
indefinite, and the decision to reject claims 3, 4, 15, 16, 18, and 19 under 35
U.S.C. § 103(a).
We affirm the Examiner’s decision to reject claims 1, 2, 5-14, 17, and
20 under 35 U.S.C. § 103(a).
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) (2007).
AFFIRMED-IN-PART

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