General Electric Company

Patent Trials and Appeals Board

Jun 17, 2020

14723712 - (D) (P.T.A.B. Jun. 17, 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.
14/723,712 05/28/2015 Yuanfeng Luo 280066-1 (GEL8083.273) 1948
122218 7590 06/17/2020
Dority & Manning, P.A. and GEC-Aviation
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
oc.prosecution@ge.com
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte YUANFENG LUO, STEVEN ROBERT HAYASHI,
ANDREW LEE TRIMMER, DALE ROBERT LOMBARDO, and
JOHN ANTHONY VOGEL
_______________
Appeal 2019-004537
Application 14/723,712
Technology Center 1700
_______________
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3 and 5–21 of Application

1 In our Decision, we refer to the Specification filed May 28, 2015 (“Spec.”)
of Application 17/723,712 (“the ’712 Application”); the Final Office Action
dated May 18, 2018 (“Final Act.”); the Appeal Brief filed November 15,
2018 (“Appeal Br.”); the Examiner’s Answer dated March 21, 2019
(“Ans.”); and the Reply Brief filed May 21, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies General Electric Co. as the real party
in interest. Appeal Br. 1.
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14/723,712. See Final Act. 1;3 Appeal Br. 24. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM IN PART.
BACKGROUND
The ’712 Application relates to electroerosion machines and, more
particularly, to a tube-shaped electrode for electroerosion machines. Spec.
¶ 1. Electroerosion machining can be used to drill extremely hard steels and
electrically conductive metals, such as titanium. Id. ¶ 2. The ’712
Application describes the use of electrical discharge and spark eroding to
remove material between a cutting tool electrode anode and a workpiece
cathode. Id. ¶ 3. Chipped or shaved material removed from the workpiece
is conventionally washed away by a continuously flushing dielectric fluid.
Id. Recycling core material that has been removed from an expensive
titanium workpiece is desirable, but recycling small chips and shavings is
difficult and cost prohibitive. Id. ¶¶ 3, 5. To that end, the ’712 Application
describes the use of an electroerosion machine said to remove workpiece
material in sizes larger than chips and shavings. Id. ¶¶ 5, 30.
Claims 1, 12, and 19, reproduced below from the Claims Appendix of
the Appeal Brief, illustrate the claimed subject matter.
1. An electroerosion machining system comprising:
an electrode assembly configured to machine a desired
configuration in a workpiece;
a power supply configured to energize the electrode
assembly and the workpiece to opposite electrical polarities;

3 Claim 4 has been canceled.
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an electrolyte supply that supplies an electrolyte during
machining of the workpiece;
a working apparatus configured to move the electrode
assembly relative to the workpiece; and
a control system to control the power supply and the
working apparatus;
wherein the electrode assembly comprises:
an electrode body in the form of a tube-shaped
body that defines a hollow interior, the hollow interior of the
electrode body being fluidly coupled to the electrolyte supply
such that the electrolyte from the electrolyte supply may flow
through the hollow interior and to the workpiece during
machining thereof; and
one or more replaceable inserts affixed to the
electrode body at a working end thereof positioned adjacent the
workpiece and extending out longitudinally past an edge of the
working end, the one or more replaceable inserts constructed so
as to be selectively attachable and detachable from the working
end of the electrode body.
Appeal Br. 25 (Claims App’x.) (emphases added).
12. An electrode assembly for use in an electroerosion
machining system, the electrode assembly comprising:
a cylindrical, pipe-shaped electrode body having an outer
circumference and a hollow interior extending through at least a
portion of a length of the electrode body, with the hollow
interior sized to extend substantially out to the outer
circumference of the pipe-shaped electrode body, and with the
pipe-shaped electrode body having a working end positionable
adjacent to and facing a workpiece to be machined via an
electroerosion machining process; and
one or more replaceable inserts affixed to the electrode
body via attachment thereof to the working end to provide a
cutting surface, the one or more replaceable inserts constructed
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so as to be selectively attachable and detachable from the
working end of the electrode body;
wherein the one or more replaceable inserts are affixed to
the electrode body at one or more locations around the outer
circumference of the electrode body.
Appeal Br. 27 (Claims App’x.) (emphasis added).
19. An electroerosion machining system comprising:
an electrode assembly configured to machine a desired
configuration in a workpiece;
a power supply configured to energize the electrode
assembly and the workpiece to opposite electrical polarities;
and
a working apparatus configured to move the electrode
assembly relative to the workpiece;
wherein the electrode assembly comprises:
a pipe-shaped electrode body having a generally
uniform, cylindrical profile along the entire length of the pipe-
shaped electrode body and defining a hollow interior sized to
accommodate a core of workpiece material therein resulting
from one of a trepanning or hole drilling of the workpiece; and
one or more replaceable inserts affixed to the pipe-
shaped electrode body at a working end thereof, the one or
more replaceable inserts constructed so as to be selectively
attachable and detachable from the working end of the pipe-
shaped electrode body.
Appeal Br. 28 (Claims App’x.) (emphases added).

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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Bruns et al.
(“Bruns”)
US 6,413,407 B1 July 2, 2002
Luo et al.
(“Luo”)
US 2010/0126877 A1 May 27, 2010
Trimmer EP 2489456 A2 Aug. 22, 2012
Walker, S. & Trimmer, A. (Oct. 2013) “The Blue Arc Machining
Process,” Titanium USA 2013 Conference Proceedings, Las Vegas, NV
(“Walker”)
REJECTIONS
The Examiner maintains the following rejections:4
1. Claims 12–18 under 35 U.S.C. § 112(a) for failing to comply
with the written description requirement (Final Act. 3);
2. Claims 12–18 under 35 U.S.C. § 112(b) as indefinite (id. at 3–
4);
3. Claims 12, 14, 16, and 18 under 35 U.S.C. § 102(a)(1) as
anticipated by Walker (id. at 4–6);
4. Claims 12, 16–19, and 21 under 35 U.S.C. § 102(a)(2) as
anticipated by Trimmer (id. at 6–8);
5. Claims 1, 3, 5, 6, 10, 11, and 14 under 35 U.S.C. § 103 over
Trimmer in view of Walker (id. at 8–11);
6. Claim 2 under 35 U.S.C. § 103 over Trimmer in view of

4 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statutes.
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Walker and Luo (id. at 11–12);
7. Claim 13 under 35 U.S.C. § 103 over Trimmer in view of Luo
(id. at 12);
8. Claim 13 under 35 U.S.C. § 103 over Walker in view of Luo
(id. at 12–13);
9. Claims 7–9 under 35 U.S.C. § 103 over Trimmer in view of
Walker and Bruns (id. at 13);
10. Claim 15 under 35 U.S.C. § 103 as obvious over Walker in
view of Bruns (id. at 14); and
11. Claim 20 under 35 U.S.C. § 103 as obvious over Trimmer in
view of Bruns. Id. at 14–15.
DISCUSSION
Ground 1: Rejection of claims 12–18 for failing to comply with the
written description requirement
The Examiner finds that the ’712 Application fails to provide written
description for “the hollow interior sized to extend substantially out to the
outer circumference of the pipe-shaped electrode body,” a limitation recited
in independent claim 12. Final Act. 3. The Examiner also finds that it is
unclear how the ’712 Application’s figures provide support for the limitation
“or impart any structural difference of the hollow interior.” Id.
In relation to the rejection for lack of written description, Appellant
contends that drawings may provide the requisite written description.
Appeal Br. 4. Specifically, Appellant argues (id. at 3–5) that Figures 3, 4,
and 5 of the ’712 Application provide written description of the disputed
limitation.
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Figure 3 is reproduced below:

Figure 3 is a perspective view of an electrode assembly of an
electroerosion machining system according to an embodiment of the
invention. Spec. ¶¶ 15; 24–26. Figure 3 shows electrode assembly (24),
which includes pipe-shaped electrode body (28) and hollow interior (30). Id.
¶¶ 24, 26.
Figure 4 is reproduced below:

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Figure 4 is a cross-sectional view of the electrode assembly, taken as
the electrode assembly is advanced into a workpiece. Id. ¶¶ 16; 27–28.
Figure 4 shows electrode assembly (24), which includes pipe-shaped
electrode body (28) and hollow interior (30), advancing into workpiece (12).
Id. ¶ 27.
Figure 5 is reproduced below:

Figure 5 is a cross-sectional view of the electrode assembly, taken
after completion of a drilling operation. Id. ¶¶ 16; 30. Figure 5 shows
electrode assembly (24), which includes pipe-shaped electrode body (28)
and hollow interior (30). Id. ¶ 30. Following the drilling operation, core
(48) is separated from a remainder of workpiece (12). Id.
Claim 12 is the sole independent claim rejected for failing to comply
with the written description requirement. Appellant does not argue for
separate patentability of any of claims 13–18 based on this rejection. See
Appeal Br. 3–5. We select claim 12 as representative. 37 C.F.R.
§ 42.37(c)(1)(iv). Claims 13–18 stand or fall with claim 12.
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Appellant contends that Figures 3, 4, and 5 of the ’712 Application
“clearly illustrate that the hollow interior 30 of the pipe-shaped electrode
body 28 is sized to extend substantially out to an outer circumference of the
pipe-shaped electrode body.” Appeal Br. 4. Appellant also relies on the
description of Figures 3, 4, and 5:
[T]he Specification sets forth that ‘electrode assembly 24
includes a tube or pipe-shaped electrode body 28 that defines a
interior hollow portion 30’ and that ‘dimensions of the hollow
interior 30 are much larger than the thickness of the wall of pipe-
shaped electrode body 28.’
Id. at 5 (quoting Spec. ¶¶ 24, 26). Therefore, according to Appellant, “[t]he
Speciation [sic] and drawings thus set forth with reasonable clarity to those
skilled in the art that Appellant was in possession of the claimed” disputed
limitation. Appeal Br. 5; see also Reply Br. 1–2.
Appellant cites to MPEP 2163 (II)(A)(3)(a), as well as Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991), In re Wolfensperger, 302 F.2d
950 (CCPA 1962), and Autogiro Co. of Am. v. U.S., 384 F.2d 391 (Ct. Cl.
1967) as case law that supports its position. Appeal Br. 4. We address the
case law in our analysis.
The Examiner responds that what the Figures 3, 4, and 5 “disclose is
not the same, or synonymous as the instant claim limitation.” Ans. 18. The
Examiner finds that the description of Figures 3, 4, and 5 “is silent as to how
a space, i.e.[,] ‘hollow interior’ may perform an action, ‘extend’ in an
arbitrary direction without any guidance as to what may or may not be
considered ‘substantially.’” Id. The Examiner finds that the ’712
Application, as filed, does not provide sufficient written description support
because the disputed limitation does not recite the dimensions of the hollow
interior in relation to the pipe-shaped electrode body’s wall thickness. Id.
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Appellant fails to show that the Examiner reversibly errs in the
rejection. We do not view the case law cited by Appellant as supporting that
Figures 3, 4, and 5 of the ’712 Application—with or without their
descriptions—are sufficient to meet the written description requirement for
“the hollow interior sized to extend substantially out to the outer
circumference of the pipe-shaped electrode body.”
Vas-Cath concerns whether the drawing in an earlier-filed design
patent application provided written description adequate to support claims to
a double lumen catheter utility patent including the same drawings. Vas-
Cath, 935 F.2d at 1559–60. The court in Vas-Cath held that “under proper
circumstances, drawings alone may provide a ‘written description’ of an
invention as required be Sec. 112,” noting that drawings in a design
application are typically much more detailed than those in a utility
application. Id. at 1565 (emphasis added). The court quotes its predecessor
court, the Court of Customs and Patent Appeals, that: “it should be readily
apparent from recent decisions of this court involving the question of
compliance with the description requirement of § 112 that each case must be
decided on its own facts. Thus, the precedential value of cases in this area is
extremely limited.” Id. at 1562 (quoting In re Driscoll, 562 F.2d 1245, 1250
(CCPA 1977)). The court, inter alia, held that the unrefuted declaration
explaining in detail what one of ordinary skill in the art would have
understood from the drawings in question gave rise to a genuine issue of
material fact, precluding grant of summary judgment. Id. at 1567.
On the facts before us, we do not agree with Appellant that Figures 3,
4, and 5 of the ’712 Application provide written description of “the hollow
interior sized to extend substantially out to the outer circumference of the
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pipe-shaped electrode body.” Moreover, Appellant offers attorney
argument, but proffers no declaration or other evidence to support its
assertion of how one of ordinary skill in the art would interpret Figures 3, 4,
and 5. “Counsel’s argument cannot take the place of evidence lacking in the
record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).
The issue before the court in Wolfensperger was whether the
specification and drawings of the applicant’s patent application disclosing a
ball valve supported a claim limitation that, “in untensioned condition,” the
O-ring has “a radial width smaller than the radial width of said chamber,”
referring to the chamber in which it is positioned when in use.
Wolfensperger, 302 F.2d at 957. The court noted that the appellant did not
rely on the drawings alone, having “a clear, correlated pictorial and
descriptive dimensional disclosure.” Id. The court also found that the
drawings “are not in the least sketchy or diagrammatic in character,” and
provided “carefully drawn details wherein the relative width and depth of
groove 88 is clearly shown.” Id. at 957–58.
Thus, Wolfensperger does not support Appellant’s argument. Figures
3, 4, and 5 in the ’712 Application are not “a clear . . . pictorial dimensional
disclosure” that “the hollow interior [is] sized to extend substantially out to
the outer circumference of the pipe-shaped electrode body.” The ’712
Application contains no “clear . . . descriptive dimensional disclosure”
correlated to Figures 3, 4, and 5 with respect to how much larger the
dimensions of the hollow interior must be than the thickness of the wall of a
pipe-shaped electrode body. The ’712 Application’s description does not
clearly define the relationship between the hollow interior’s proportionality
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and the outer circumference of the pipe-shaped electrode body. See Spec.
¶¶ 24, 26. Rather, Figures 3, 4, and 5 provide no particular dimensions of
the hollow interior and fail to identify what degree of hollow interior sizing
is sufficient to warrant a substantial extension out to the pipe-shaped body’s
outer circumference. See Spec. Figs. 3, 4, 5.
Appellant quotes Autogiro: “In those instances where a visual
representation can flesh out words, drawings may be used in the same
manner and with the same limitations as the specification.” Appeal Br. 4
(quoting Autogiro, 384 F.2d at 398). However, in the case before us,
Figures 3, 4, and 5 are not “fleshing out” words. Instead, Appellant seeks to
substitute each of these figures for all the descriptive words regarding the
hollow interior’s size in relation to the outer circumference of the pipe-
shaped electrode body. Autogiro does not support Appellant’s position.
Written description that dimensions of the hollow interior are much larger
than the thickness of the wall of pipe-shaped electrode body fails to inform
one of ordinary skill in the art of what degree of hollow interior sizing is
sufficient to warrant a substantial extension out to the pipe-shaped body’s
outer circumference. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005) (en banc) (“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments.”); In re Lukach, 442 F.2d 967,
970 (CCPA 1971) (“[T]he description of a single embodiment of broadly
described subject matter . . . in a specification might not alone be enough to
provide a description of that invention for purposes of adequate
disclosure.”).
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On the record before us, Appellant does not show reversible error in
the Examiner’s determination that the disputed limitation: (i) does not
appear in the ’712 Application as originally filed; (ii) fails to provide clear
language regarding the hollow interior’s dimensions; (iii) lacks any
discussion of a thickness of the wall of the pipe-shaped electrode body; and
(iv) is a broader recitation of the structure shown in Figures 3, 4, and 5. See
Ans. 18.
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 12–18 for failing to comply with the written description requirement
for the limitation “the hollow interior sized to extend substantially out to the
outer circumference of the pipe-shaped electrode body.”
Ground 2: Rejection of claims 12–18 as indefinite
The Examiner rejects claims 12–18 as indefinite for reciting the term
“substantially.” Final Act. 3–4; see also Appeal Br. 27 (Claims App’x.).
The Examiner finds that one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention as the Specification does
not provide a standard for determining the requisite degree of a hollow
interior’s extension. Final Act. 4. According to the Examiner, “it is unclear
how ‘extend substantially’ imparts any dimensionality of . . . the instant
claim language with respect to describing a space.” Id. The Examiner finds
that the disputed term does not describe “a physical attribute of the space or
electrode body, i.e.[,] explicitly reciting a dimension such as diameter, or
ratio of the diameter of the hollow space to the electrode body.” Id.
Claim 12 is the sole independent claim rejected as indefinite.
Appellant does not argue for separate patentability of any of claims 13–18
based on this rejection. See Appeal Br. 5–7. We select claim 12 as
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representative. 37 C.F.R. § 42.37(c)(1)(iv). Claims 13–18 stand or fall with
claim 12.
Appellant argues that one of ordinary skill in the art would reasonably
ascertain the scope of claim 12 based on: (i) Figures 3, 4, and 5, along with
(ii) the description of these figures in the ’712 Application. Appeal Br. 6–7
(citing Spec. ¶¶ 24, 26). Appellant contends that “the Specification . . . and
the drawings . . . provide a clear example/description of the size/thickness of
the hollow interior and wall of the electrode body relative to the outer
circumference.” Reply Br. 2.
We find claim 12 to be indefinite because the metes and bounds of the
claim are unclear. See Ex parte McAward, 2017 WL 3669566, at *5 (PTAB
Aug. 25, 2017) (precedential). When a word of degree—such as
“substantially”—is used in a claim, the claim is indefinite unless the
Specification provides some standard for measuring that degree. Seattle Box
Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
Appellant’s relied-upon disclosure (see Spec. ¶¶ 24, 26) does not clearly
define the relationship between the hollow interior’s dimensions, which are
somehow sized to “extend substantially,” and the outer circumference of the
pipe-shaped electrode body. See Appeal Br. 27 (Claims App’x.). As set
forth above, Figures 3, 4, and 5 fail to identify what degree of hollow
interior sizing is sufficient to warrant a substantial extension out to the pipe-
shaped body’s outer circumference. See Spec. Figs. 3, 4, 5.
On the record before us, we sustain the rejection of claims 12–18 as
indefinite for reciting the claim term “substantially.” Discerning the proper
scope of these claims would require undue and improper speculation.
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Without reaching the merits, we summarily reverse the rejections over prior
art of:
Claims 12, 14, 16, and 18 under 35 U.S.C. § 102(a)(1) as anticipated
by Walker (Ground 3);
Claims 12 and 16–18 under 35 U.S.C. § 102(a)(2) as anticipated by
Trimmer (Ground 4, leaving claims 19 and 21 to be considered);
Claim 14 under 35 U.S.C. § 103 over Trimmer in view of Walker
(Ground 5, leaving claims 1, 3, 5, 6, 10, and 11 to be considered);
Claim 13 under 35 U.S.C. § 103 over Trimmer in view of Luo
(Ground 7);
Claim 13 under 35 U.S.C. § 103 over Walker in view of Luo (Ground
8); and
Claim 15 under 35 U.S.C. § 103 as obvious over Walker in view of
Bruns (Ground 10).
See In re Aoyama, 656 F.3d 1293, 1298‒99 (Fed. Cir. 2011) (explaining that
a claim cannot be both indefinite and anticipated and refusing to review an
anticipation rejection); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e
do not think a rejection under 35 U.S.C. § 103 should be based on such
speculations and assumptions.”).
Ground 4: Rejection of claims 19 and 21 as anticipated by Trimmer5
The Examiner rejects claims 19 and 21 as anticipated by Trimmer.
Final Act. 7–8.

5 As noted, the rejection of claims 12 and 16–18 over Trimmer is summarily
reversed because the claims are indefinite.
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Anticipation is a question of fact. In re Suitco Surface, Inc., 603 F.3d
1255, 1259 (Fed. Cir. 2010). To serve as an anticipatory reference, “the
reference must disclose each and every element of the claimed invention,
whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009).
We note that although claim 21 has been rejected as anticipated by
Trimmer, the claim from which it depends, i.e., claim 1, has been rejected as
obvious over Trimmer in view of Walker in Ground 5. Final Act. 6, 8.
A dependent claim narrows the claim from which it depends—it must
“incorporate . . . all the limitations of the claim to which it refers.” 35
U.S.C. § 112(d). Thus, the Examiner’s reliance on Walker for teaching
elements of claim 1 that are neither disclosed nor suggested by Trimmer in
Ground 5 is inconsistent with the rejection of dependent claim 21 as
anticipated by Trimmer alone. See Gleave, 560 F.3d at 1334.
We do not sustain the rejection of claim 21 as anticipated by Trimmer.
Appellant argues for separate patentability of claim 19. See Appeal
Br. 15–17; Reply Br. 9–12.
Trimmer’s Figure 5, as annotated by the Examiner, is reproduced
below:
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Figure 5 is a schematic diagram of an electroerosion machining
system in accordance with an embodiment of the invention. Trimmer ¶ 8.
Figure 5 shows base (22) for holding electrodes (16) in a plurality of slots
(23). Id. ¶ 31.
Appellant distinguishes, inter alia, Trimmer’s electroerosion machine
from the subject matter of claim 19, which requires “a pipe-shaped electrode
body having a uniform, cylindrical profile along the entire length of the
pipe-shaped electrode body.” Appeal Br. 15. Appellant additionally cites
dictionary definitions in support of the argument that “[o]ne skilled in the art
would . . . recognize that a proper interpretation of a pipe-shaped electrode
body having a ‘uniform cylindrical profile’ is a pipe-shaped electrode body
having a non-varying or constant outline/circumference.” Id. at 16.
The Examiner responds by arguing that “the actual limitation in
question recites ‘generally uniform, cylindrical profile.’” Ans. 24. The
Examiner reasons that “if a profile is composed of two sections, each
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cylindrical but different sizes, the profile itself thereby may be considered
‘generally uniform’ in that the cylindrical profile does not change
throughout.” Id. According to the Examiner, “uniform” can be defined as
“‘having always the same for[m], manner, or degree, . . . [t]hus, the form is
the same in both sections of [Trimmer’s] Fig. 5, i.e.[,] both [the unnumbered
pipe and base 22] have a cylindrical profile.’” Id.
Appellant counters that the claim terms “uniform, cylindrical” are
coordinate adjectives that each separately modify the claim term “profile.”
See Reply Br. 11 (citing B. Mills, “Commas with Adjectives,” Quick and
Dirty Tips, (Feb. 2011) available at
www.quickanddirtytips.com/education/grammar/commas-with-adjectives).
During prosecution, the PTO gives the language of the proposed
claims “the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art.” In re
Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997). Appellant identifies error
in the Examiner’s construction of “generally uniform, cylindrical profile” as
unreasonably reading the term “uniform” out of claim 19. Reply Br. 11.
Trimmer’s unnumbered pipe and base 22 also does not show that the pipe-
shaped electrode body possesses a generally uniform, cylindrical profile
along its entire length, as required in claim 19. Thus, the Examiner has not
established that each and every element, as specified in claim 19, is
disclosed within Trimmer, either expressly or inherently.
We do not sustain the rejection of claim 19 as anticipated by Trimmer.
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Ground 5: Rejection of claims 1, 3, 5, 6, 10, 11, and 14 as obvious
over Trimmer in view of Walker and
Ground 6: Rejection of claim 2 as obvious over Trimmer in view of
Walker and Luo
The Examiner finds that claims 1, 3, 5, 6, 10, and 11 would have been
obvious over Trimmer in view of Walker. Final Act. 8–11. Claim 1 is the
only independent claim rejected as obvious in Ground 5. Appellant does not
argue for separate patentability of any claim based on the rejections in
Ground 5 and Ground 6. See Appeal Br. 17–21. We select claim 1 as
representative. 37 C.F.R. § 42.37(c)(1)(iv). Claims 2, 3, 5, 6, 10, and 11
stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Trimmer discloses an
electroerosion machining system. Final Act. 8–9. The Examiner finds that
Trimmer’s electrode assembly includes one or more replaceable inserts 16
affixed at the working end of an electrode body. Id.; see also id. at 6.
The Examiner finds that Walker discloses an electrode assembly for
use in an electroerosion machining system. Id. at 9. The Examiner finds
that Walker’s electrode body includes “one or more replaceable inserts
affixed to the electrode body at a working end thereof positioned and
extending out longitudinally past an edge of the working end.” Id.
Walker’s Slide 12, as annotated by Appellant, is reproduced below:
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Slide 12 is photograph of an electroerosion cutting tool. Reply Br. 4;
see also Ans. 20; Final Act. 9. Slide 12 shows an electrode body with a
hollow interior therein. Reply Br. 4; see also Final Act. 9. Slide 12 shows
an electrode body comprising flutes and inserts placed along an outer
circumference of the body. Reply Br. 4; see also Final Act. 9.
The Examiner determines that
[I]t would have been obvious to one of ordinary skill in the art to
have either used [the] electrode assembly of Walker OR the
replaceable inserts of Walker for the electrode assembly OR the
replaceable inserts of Trimmer because they are both recognized
for their intended purpose of performing electrochemical
machining and thus suitable for the intend[ed purpose] . . . where
the inserts provide a design choice of methods of attachment and
positioning relative [to] the working end of the electrode
assembly in forming electrode assemblies suitable for
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electrochemical machining in accordance with Trimmer OR
Walker.
Final Act. 9–10.
Referencing Trimmer’s Figure 5, Appellant first argues that Trimmer
does not disclose “that electrodes 16 are affixed to base 22 so [they] extend
out longitudinally past an edge of the base 22.” Appeal Br. 19.
Appellant’s argument does not identify reversible error in the
Examiner’s findings. The Examiner correctly construes the claim as not
specifying which edge of the working end the replaceable inserts must
extend longitudinally past. Ans. 17, 24–25. As the Examiner explains, the
working end is the end of the electrode body which is designed to perform
the operation, and may have any number of edges. Id. at 17. The insert may
extend in any direction, past any edge of the working end, and satisfy the
claim limitation, so long as the extension may be considered in a
longitudinal direction past an edge. The Examiner’s rejection, furthermore,
is based on the obviousness of using either Walker’s electrode assembly or
Walker’s replaceable inserts for Trimmer’s electrode assembly or Trimmer’s
replaceable inserts. Final Act. 9–10.
Referencing Walker’s Slide 12, Appellant argues that Walker’s
replaceable inserts do not extend longitudinally past an edge of the electrode
body’s working end. Appeal Br. 20. Appellant also argues that Walker’s
outermost replaceable inserts do not extend longitudinally past an edge of
the working electrode body that is adjacent a workpiece. Id. at 21.
These arguments of Appellant are based on interpreting the term
“longitudinally” more narrowly than is warranted, as discussed above. One
of ordinary skill in the art at the time of the invention would have
understood that the effective use of either Walker’s or Trimmer’s
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replaceable insert necessitates positioning the insert adjacent to a workpiece
to provide a machining surface. “A person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). “[A]court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418. We note that Trimmer teaches the use of “a plurality of abrasive
elements 20 disposed separately around and integrated with the electrode.”
Trimmer ¶ 26; see also id. ¶ 33; Figs. 4 (showing abrasive element 20
removing adjacent workpiece 100), 5. The skilled artisan would have
understood from Trimmer’s disclosure that the replaceable insert is
positioned adjacent to a workpiece to facilitate the removal of workpiece
material. Therefore, Appellant’s position that Walker’s alleged silence with
respect to insert positioning adjacent a workpiece does not persuade us that
the Examiner reversibly erred in determining that it would have been
obvious to position either Trimmer’s or Walker’s replaceable inserts
longitudinally past the electrode body’s working end adjacent to a workpiece
for electrochemical machining. See Final Act. 9–10.
Appellant contends that Walker’s “slide 12 does not clearly show
inserts extending out longitudinally past an edge of the working end of the
electrode body so as to provide proper support for the rejection, as required
under MPEP [§] 2125(I).” Reply Br. 13. According to Appellant, the
Examiner can only apply drawings and pictures that clearly show a claimed
structure. Id.
Appellant’s reliance on MPEP § 2125(I) is misplaced. MPEP
§ 2125(I) provides that “[d]rawings and pictures can anticipate claims if
they clearly show the structure which is claimed.” (emphasis added). As the
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Examiner’s rejection is based on a determination that the combined
teachings of Walker and Trimmer would have rendered claim 1 obvious,
MPEP § 2125(I) is not dispositive. Rather, drawings and pictures can render
claim 1 obvious if they disclose or suggest the structure claimed. We agree
with the Examiner that “it appears the inserts of Walker do in fact extend
past the bottommost edge of the electrode.” Ans. 25.
We sustain the rejection of claim 1 as obvious over Trimmer in view
of Walker. For the same reasons, we sustain the rejections of claims 3, 5, 6,
10, and 11 in Ground 5 and claim 2 in Ground 6.
Ground 9: Rejection of claims 7–9 as obvious over Trimmer in view
of Walker and Bruns
Claims 7–9 depend from claim 1 and further require a shield member
as identified positions. Appeal Br. 26 (Claims App’x).
The Examiner determines that claims 7–9 would have been obvious
over Trimmer in view of Walker and Bruns. Final Act. 13. The Examiner
finds that the combination of Trimmer and Walker “fails to explicitly
disclose a shield positioned about at least a portion of the electrode body to
define a gas channel through which a protective gas may be provided so as
to prevent oxidation of workpiece debris.” Id. The Examiner finds that
Bruns’s elongate electrode tool 20 is provided with a shield 16, which
permits entry of a gas to prevent further electroerosion of the workpiece.
Id.; see Bruns Fig. 13. The Examiner determines
[I]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to have provided the shield to
form gas passage along the finished area as taught by Bruns in
the apparatus of Trimmer, as modified by Walker, in order to
prevent any additional electrochemical machining and provide
additional cooling of the electrode tool.
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Final Act. 13. The Examiner finds that Bruns’s shield 16 is capable of
performing the functional limitations recited in claims 7–9. Id.
Appellant argues for separate patentability of claims 7 and 8. Appeal
Br. 22. Appellant contends that Trimmer in view of Walker and Bruns fails
to disclose a shield that is a part of an electrode assembly. Id. Appellant
argues that Bruns’s structure 16 is not the claimed shield, but is actually “an
entry manifold 16 mounted to a frame 14[] within which the electrode tool
20 is positioned.” Id. (citing Bruns 2:44–61; Fig. 1).
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, the
instant claims do not require that the claimed shield is structurally part of an
electrode assembly. Rather, claim 7 requires that “the electrode assembly
further comprises a shield member positioned about at least a portion of the
electrode body.” Appeal Br. 26 (Claims App’x.). Likewise, claim 8, which
depends from claim 7, similarly requires that “the shield member is spaced
apart from the electrode body.” Id. One of ordinary skill in the art would
have readily recognized from Bruns’s Figure 13 that entry manifold 16 is
positioned about at least a portion of and spaced apart from electrode body
20. See Bruns Fig. 13.
We sustain the rejection of claims 7–9 as obvious over Trimmer in
view of Walker and Bruns.
Ground 11: Rejection of claim 20 as obvious over Trimmer in view of
Bruns
The Examiner rejects claim 20 as obvious over Trimmer in view of
Bruns. Final Act. 14–15. We have not sustained the rejection of claim 19,
from which claim 20 depends, as anticipated by Trimmer in Ground 4. The
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Examiner does not rely on Bruns in Ground 11 to cure the deficiencies of
Trimmer in Ground 4. Final Act. 14–15.
Having found deficiencies in Trimmer with respect to claim 19, supra,
we do not sustain the rejection of claim 20 as obvious over Trimmer in view
of Bruns.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–18 112(a) Written Description 12–18
12–18 112(b) Indefiniteness 12–18
12, 14, 16,
18 102(a)(1) Walker
12, 14, 16,
18
12, 16–19,
21 102(a)(2) Trimmer
12, 16–18,
19, 21
1, 3, 5, 6,
10, 11, 14 103 Trimmer, Walker
1, 3, 5, 6, 10,
11 14
2 103 Trimmer, Walker, Luo 2
13 103 Trimmer, Luo 13
13 103 Walker, Luo 13
7–9 103 Trimmer, Walker, Bruns 7–9
15 103 Walker, Bruns 15
20 103 Trimmer, Bruns 20
Overall
Outcome 1–3, 5–18 19–21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART