RENISHAW PLC

Patent Trials and Appeals Board

Mar 17, 2021

2020005493 (P.T.A.B. Mar. 17, 2021)

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.
14/399,754 11/07/2014 David Beeby 163726 9057
25944 7590 03/17/2021
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
SMITH, NICHOLAS A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
03/17/2021 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BEEBY

Appeal 2020-005493
Application 14/399,754
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY, 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 1–4, 6–11, 13–22, 25, and 42–48. Final
Act. 1. A telephonic hearing was held on March 5, 2021, a transcript of

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/399,754 filed Nov. 7, 2014 (“the ’754 App.”); the Final Office Action
dated June 10, 2019 (“Final Act.”); the Appeal Brief filed Jan. 10, 2020
(“Appeal Br.”); the Examiner’s Answer dated May 22, 2020 (“Ans.”); and
the Reply Brief filed July 20, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies RENISHAW PLC as the real party in
interest. Appeal Br. 1.
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which will be made part of the record. We have jurisdiction under 35 U.S.C.
§ 6.
For the reasons set forth below, we AFFIRM.
STATEMENT OF THE CASE
The claims on appeal relate to a method of manufacturing an article
comprising performing an additive process comprising building the article
from a powdered metal material layer-by-layer, wherein a surface roughness
is associated with the additive process. Electrochemical processing of at
least a select region of the article smooths the region.
Claim 1, reproduced below from Appendix A of the Appeal Brief,
illustrates the claimed subject matter:
1. A method of manufacturing an article, the method
comprising:
performing an additive process to form an article in an
initial state, the article comprising at least one product, and the
additive process comprising building the article from a
powdered metal material, layer-by-layer, a surface roughness
associated with or introduced by the additive process in at least
a select region of the at least one product is initially at least 5
μm Ra and comprises at least one of:
(i) a stepped surface finish in the article caused
by building the article layer-by-layer in the additive
process;
(ii) collateral powder particles binding to the
surface of the article during the additive process;
(iii) a rippling effect caused by molten material
solidifying on the surface of the article along tracks
during the additive process; and
(iv) re-welding of vaporised powder back onto
the surface of the article during the additive process; and
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electrochemically processing at least the select region of
the at least one product so as to smoothen at least the select
region,
wherein a cathode of an electrochemical processing
apparatus used to electrochemically process the select region is
positioned proximal the article and at least one of (i)
corresponds generally in shape to and (ii) extends at least partly
around the select region so as to concentrate the
electrochemical processing at the select region, with an anode
of the electrochemical processing apparatus being provided by
the article, and
the electrochemical processing reduces the surface
roughness associated with or introduced by the additive process
without substantially changing the shape of the select region.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Masuzawa et al.
(“Masuzawa”)
US 4,826,580 May 2, 1989
Kreiskott et al.
(“Kreiskott”)
US 2005/0016867 A1 Jan. 27, 2005
Aeby et al. (“Aeby”) US 2005/0173258 A1 Aug. 11, 2005
Schwarz et al.
(“Schwarz”)
US 2007/0202462 A1 Aug. 30, 2007
Comaty et al.
(“Comaty”)
US 2008/0210571 A1 Sept. 4, 2008
Fecher et al. (“Fecher”) US 2008/0230397 A1 Sept. 25, 2008
Holzner et al.
(“Holzner”)
US 8,021,154 B2 Sept. 20, 2011
Miller et al. (“Miller”) US 2015/0093283 A1 Apr. 2, 2015
Pforte et al. (“Pforte”) US 2015/0273757 A1 Oct. 1, 2015

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REJECTIONS3
The Examiner rejects claims under 35 U.S.C. § 103(a) as follows:
I. Claims 1, 2, 6, 10, 11, 13, 18, 22, 25, 42–45, 47, and 48 over
Schwarz in view of Miller, further in view of Masuzawa, as evidenced by
Pforte;
II. Claims 3 and 7–9 over Schwarz in view of Miller, further in
view of Masuzawa, further in view of Holzner, as evidenced by Pforte;
III. Claims 4, 14, and 15 over Schwarz in view of Miller, further in
view of Masuzawa, further in view of Fecher, as evidenced by Pforte;
IV. Claims 16, 17, 19, and 20 over Schwarz in view of Miller,
further in view of Masuzawa, further in view of Aeby, as evidenced by
Pforte;
V. Claim 21 over Schwarz in view of Miller, further in view of
Masuzawa, further in view of Comaty, as evidenced by Pforte; and
VI. Claims 45 and 46 over Schwarz in view of Miller, further in
view of Masuzawa, further in view of Kreiskott, as evidenced by Pforte.
Final Act. 2–6.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)

3 In the Final Office Action the Examiner rejects claims 34 and 35 under 35
U.S.C. § 112(a) and claims 29–35 under § 112(b). Final Act. 4–5. These
rejections are not identified as asserted against the pending claims in the
Answer, therefore we do not address them in the Decision.
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
I. Rejection of claims 1, 2, 6, 10, 11, 13, 18, 22, 25, 42–45, 47,
and 48
The Examiner rejects claims 1, 2, 6, 10, 11, 13, 18, 22, 25, 42–45, 47,
and 48 as obvious over Schwarz, Miller, and Masuzawa, as evidenced by
Pforte. Final Act. 2.
Appellant argues claims 1, 44, 47, and 48, but does not make separate
arguments for claims 2, 6, 10, 11, 13, 18, 22, 25, 42, 43, and 45 in this
rejection. See generally, Appeal Br. Accordingly, claims 2, 6, 10, 11, 13,
18, 22, 25, 42, 43, and 45 stand or fall with claim 1, which we select as
representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
The Examiner finds that Schwarz discloses a metal or metal alloy
implant electropolished in a select region to obtain a smooth surface. Ans.
3–4. The Examiner finds that Miller discloses making implants with three-
dimensional print technology including selective laser sintering, which
would result in a surface roughness resulting from the staircase effect. Id. at
2–3. The Examiner relies on Pforte as evidence that surface roughness and
staircase effects in three-dimensional printing methods are in the range of
100 µm to 500 µm. Id. at 3. The Examiner determines that it would have
been obvious to one of ordinary skill at the time of the invention to modify
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Schwarz with Miller because Miller teaches it would have been
advantageous to employ three-dimensional print technology to create solid,
physical implant components from an electronic or computerized data file.
Id. at 2.
The Examiner finds that Masuzawa teaches electropolishing a metal
workpiece by using a cathode corresponding in shape to a select region of
the workpiece to be smoothened, and smoothening a roughness of about 20–
22 µm. Id. at 3. The Examiner determines that it would have been obvious
to modify Schwarz in view of Miller with a correspondingly-shaped cathode
because Masuzawa teaches a cathode corresponding in shape allows for
rapidly finishing a metal work by electropolishing. Id. In the Answer, the
Examiner explains that the prior art combination does not involve adding
Masuzawa’s wire cut discharge process, but rather relies on the reference’s
teaching of benefits obtained through use of a cathode shape corresponding
to the workpiece. Ans. 8.
Appellant argues that Masuzawa is not combinable with Schwarz and
Miller because Masuzawa’s electropolishing technique is only applicable to
a wire cut discharge process. Appeal Br. 6; Reply Br. 3. According to
Appellant, the use of a shaped cathode in Masuzawa is inextricably tied to
the wire discharge process, and the wire discharge process is not technically
relevant to Schwarz’s electropolishing or Miller’s additive manufacturing.
Appeal Br. 7. Appellant contends that one of ordinary skill in the art would
not have known how to apply the two-dimensional wire discharge process to
the three-dimensional articles of Schwarz or Miller. Id.
Appellant’s argument is unpersuasive. The rejection of claim 1 is
based in part on the combination of Schwarz’s electrochemical processing
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with Masuzawa’s cathode shape. See Final Act. 2–3. Appellant
acknowledges this fact. See Appeal Br. 6 (“The Examiner applies (i)
Schwarz for allegedly disclosing the claimed electrochemical processing, . . .
and (iii) Masuzawa for allegedly disclosing the claimed cathode.”).
However, Appellant repeatedly recasts the issue as one of Masuzawa’s
electropolishing technique not being combinable with Schwarz or Miller.
See, e.g., id. (“One of ordinary skill in the art would not have modified
Schwarz or Miller with Masuzawa’s electropolishing technique.” (emphasis
added)); see also id. at 7 (“[T]he Examiner clearly relies on [Masuzawa’s]
process in arguing that the claimed method would have been obvious.”
(emphasis added)). Appellant thus disputes the validity of a position that the
Examiner has not taken, and does not address the rejection stated by the
Examiner. See Ans. 8 (“[T]he prior art combination does not involve adding
Masuzawa’s wire cut discharge process.”). Such argument regarding
Masuzawa’s electropolishing technique is ineffective in overcoming the
Examiner’s rejection of claim 1.
Schwarz discloses electrochemical polishing and Masuzawa discloses
use in electrochemical polishing of a shaped electrode whose configuration
is complementary to a cut surface of a work. See Masuzawa col. 1, ll. 47–
51. In finding that Masuzawa discloses rapidly finishing a metal workpiece
via electropolishing and smoothing a surface with a roughness of about 20–
22 µm, the Examiner provides “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” in combining
the reference with Schwarz. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
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Appellant contends that Masuzawa’s disclosure of a complementary-
shaped electrode does not meet claim 1’s recitation that a cathode
corresponds generally in shape to the select region and/or extends at least
partly around the select region because “‘[c]omplementary’ then merely
relates to the two-dimensional shape of the workpiece.” Reply Br. 4.
However, nothing in Masuzawa limits the disclosure to a two-dimensional
shaped electrode. In addition, nothing in the Specification limits “the select
region” to a three-dimensional article. See In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“During prosecution, an
application’s claims are given their broadest reasonable scope consistent
with the specification.”). This argument is unpersuasive of reversible error.
Claim 1 recites that a select region of an article have an initial surface
roughness of at least 5 µm Ra. Claims App. A-1. Appellant argues that
Masuzawa’s disclosure of a Rmax surface roughness (measure of the largest
single roughness depth from peak to trough) of “around 20 microns” would
have a Ra value (measure of the average) “likely . . . significantly less than
20 microns.” Appeal Br. 8. However, Appellant provides nothing more
than speculative attorney argument, which cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
More than a mere recitation of claim element and a naked assertion that the
corresponding element was not found in the prior art is required. In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board
reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
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elements and a naked assertion that the corresponding elements were not
found in the prior art”). This argument is unpersuasive.
Finally, Appellant argues that Pforte does not cure the deficiencies of
Schwarz, Miller, and Masuzawa. Appeal Br. 10; Reply Br. 6. Pforte is used
as evidence that three-dimensional printers have a resolution of about 100–
500 µm. Thus one of ordinary skill in the art would consider Miller’s three-
dimensional printing to have a surface roughness as claimed. See Final Act.
3. We find no deficiency in Schwarz, Miller, and Masuzawa; therefore, this
argument is unpersuasive.
We sustain the rejection of claim 1 over Schwarz, Miller, and
Masuzawa, as evidenced by Pforte. We sustain the rejection of claims 2, 6,
10, 11, 13, 18, 22, 25, 42, 43, and 45 in accordance with 37 C.F.R.
§ 41.37(c)(1)(iv).
Claims 44, 47, and 48
Claim 44 depends from claim 1 and recites “wherein the surface
roughness of at least the select region to be electrochemically processed is
initially at least 40 µm Ra.” Claims App. A-4. Claim 47 depends from
claim 1 and recites “wherein an average of at least 0.25 mm of material is
removed by the electrochemical processing.” Id. Claim 48 depends form
claim 1 and recites “wherein an average of at least 0.5 mm of material is
removed by the electrochemical processing.” Id.
The Examiner finds that Pforte evidences that known three-
dimensional printers have a resolution of about 100–500 μm, and would
produce surface roughness and staircase effects in the range of this
resolution. Final Act. 3–4 (citing Pforte ¶ 96). The Examiner finds that with
a starting roughness of 100 μm–500 μm, “at least 500 μm of material during
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electropolishing must be removed in order to have a smooth surface.” Id.
The Examiner determines, therefore, that the combined references disclose
the limitations of claims 44, 47, and 48. Id.
Appellant argues that there would have been no reason to modify
Schwarz, Miller, and Masuzawa with the surface roughness in Pforte.
Appeal Br. 10–11. However, the rejection does not modify Schwarz, Miller,
and Masuzawa with Pforte, but rather uses Pforte as evidence of the surface
roughness of the manufactured article. See Final Act. 3–4.
The claims recite “electrochemically processing at least the select
region of the at least one product so as to smoothen at least the select
region.” Claims App. A-1. During prosecution, an application’s claims are
given their broadest reasonable scope consistent with the specification. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
words used in a claim must be read in light of the specification, as it would
have been interpreted by one of ordinary skill in the art at the time of the
invention. Id. The Specification describes electropolishing of parts as
typically used to smoothen parts with roughness values of less than 1 µm Ra.
Spec. 2, ll. 17–24. The broadest reasonable interpretation of “smoothening”
in the claims therefore includes removal of sufficient material to leave a
surface roughness of less than 1 µm Ra.
Appellant disputes the Examiner’s finding that at least 500 µm of
material during electropolishing must be removed in order to have a smooth
surface. Appeal Br. 12 (citing Final Act. 3–4). In the Answer, the Examiner
explains why one of ordinary skill in the art would have understood the
combined references to teach that electropolishing a starting staircase
roughness of 500 μm to a smooth surface would necessarily mean that at
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least 500 μm of material would be removed: electropolishing of metals is an
entirely subtractive process, thus both metal at the valleys and the peaks are
removed. Ans. 10. Also known as anodic polishing, or anodic leveling
according to the Examiner (see id.), the process smooths a surface by
dissolving peaks or protrusions faster than valleys or recesses. A skilled
artisan would have known of this effect of electropolishing. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis
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.”).
We sustain the rejections of claims 44, 47, and 48 over Schwarz,
Miller, and Masuzawa, as evidenced by Pforte.
II–V. Rejections of claims 3, 4, 7–9, 14–17, and 19–21
Claims 3, 4, 7–9, 14–17, and 19–21 depend directly or indirectly from
claim 1. Claims App. A-2–A-3. Appellant does not argue these claims
separately from claim 1. We sustain the rejection of claims 3, 4, 7–9, 14–17,
and 19–21 in accordance with 37 C.F.R. § 41.37(c)(1)(iv).
VI. Rejection of claims 45 and 46
Claim 45 depends from claim 1 and recites, “wherein the roughness of
the surface is reduced by the electrochemical processing to not more than
0.05 µm Ra.” Claims App. A-4. Similarly, claim 46 depends from claim 1
and recites, “wherein the roughness of the surface is reduced by the
electrochemical processing to not more than 0.02 µm Ra.” Id.
The Examiner rejects claims 45 and 46 as obvious over Schwarz,
Miller, Masuzawa, Kreiskott, as evidenced by Pforte. Final Act. 6. The
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Examiner concludes that it would have been obvious to modify Schwarz (as
modified by the other references) with Kreiskott’s surface roughness
because Kreiskott discloses a metallic substrate having a RMS roughness of
less than 4 nm (0.004 µm) as a result of electropolishing. Ans. 9.
Appellant argues that Kreiskott is directed to smoothening
semiconductor substrates and discloses electropolishing a thin film template
structure, but is completely silent about any additive manufacturing process.
Appeal Br. 11. According to Appellant, one of ordinary skill in the art
would not have any expectation of success in modifying the applied
references to predictably arrive at an electropolishing technique for
smoothing a surface roughness in an additively manufactured article. Id.
The Examiner relies on Miller, not Kreiskott, to teach additive
manufacturing. Final Act. 2–3. Kreiskott is referenced for teaching the use
of electropolishing to reduce a surface roughness to at least the scope
claimed. Id. at 6. We agree with the Examiner that Appellant argues against
the references individually. Ans. 9. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
We sustain the rejection of claims 45 and 46.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 6–11, 13–22, 25, and
42–48 is AFFIRMED.
DECISION SUMMARY
In summary:
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 10,
11, 13, 18,
22, 25, 42–
45, 47, 48
103 Schwarz, Miller,
Masuzawa, Pforte
1, 2, 6, 10,
11, 13, 18,
22, 25, 42–
45, 47, 48

3, 7–9 103 Schwarz, Miller,
Masuzawa,
Holzner, Pforte
3, 7–9
4, 14, 15 103 Schwarz, Miller,
Masuzawa, Fecher,
Pforte
4, 14, 15
16, 17, 19,
20
103 Schwarz, Miller,
Masuzawa, Aeby,
Pforte
16, 17, 19,
20

21 103 Schwarz, Miller,
Masuzawa,
Comaty, Pforte
21
45, 46 103 Schwarz, Miller,
Masuzawa,
Kreiskott, Pforte
45, 46
Overall
Outcome
1–4, 6–11,
13–22, 25,
42–48

TIME PERIOD FOR RESPONSE
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).
AFFIRMED

Appeal 2020-005493
Application 14/399,754
1
UNITED STATES PATENT AND TRADEMARK
OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
DAVID BEEBY
Appeal 2020-005493
Application 14/399,754
Technology Center 1700
Before
JAMES C. HOUSEL, JEFFREY R. SNAY, and
DEBRA L. DENNETT,
Administrative Patent Judges.
DENNETT,
Administrative Patent Judge.
Appeal 2020-005493
Application 14/399,754
2
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–4, 6–11, 13–22, 25, and
42–48. Final Act. 1. A telephonic hearing was held on March 5,
2021, a transcript of which will be made part of the record. We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
STATEMENT OF THE CASE
The claims on appeal relate to a method of manufacturing an
article comprising performing an additive process comprising building
the article from a powdered metal material layer-by-layer, wherein a
surface roughness is associated with the additive process.
Electrochemical processing of at least a select region of the article
smooths the region.
Claim 1, reproduced below from Appendix A of the Appeal
Brief, illustrates the claimed subject matter:
1.A method of manufacturing an article, the method
comprising:
performing an additive process to form an article in
an initial state, the article comprising at least one product,
and the additive process comprising building the article
from a powdered metal material, layer-by-layer, a surface
roughness associated with or introduced by the additive
process in at least a select region of the at least one
product is initially at least 5 m Ra and comprises at least
one of:
(i)a stepped surface finish in the
article caused by building the article layer-by-layer
in the additive process;
(ii)collateral powder particles binding
to the surface of the article during the additive
process;
(iii)a rippling effect caused by molten
material solidifying on the surface of the article
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along tracks during the additive process; and
(iv)re-welding of vaporised powder
back onto the surface of the article during the
additive process; and
electrochemically processing at least the select
region of the at least one product so as to smoothen at
least the select region,
wherein a cathode of an electrochemical processing
apparatus used to electrochemically process the select
region is positioned proximal the article and at least one
of (i) corresponds generally in shape to and (ii) extends at
least partly around the select region so as to concentrate
the electrochemical processing at the select region, with
an anode of the electrochemical processing apparatus
being provided by the article, and
the electrochemical processing reduces the surface
roughness associated with or introduced by the additive
process without substantially changing the shape of the
select region.
REFERENCES
The Examiner relies on the following prior art:
REJECTIONS
The Examiner rejects claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 2, 6, 10, 11, 13, 18, 22, 25, 42–45, 47,
and 48 over Schwarz in view of Miller, further in view of Masuzawa,
as evidenced by Pforte;
II. Claims 3 and 7–9 over Schwarz in view of Miller,
further in view of Masuzawa, further in view of Holzner, as evidenced
by Pforte;
III. Claims 4, 14, and 15 over Schwarz in view of Miller,
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4
further in view of Masuzawa, further in view of Fecher, as evidenced
by Pforte;
IV. Claims 16, 17, 19, and 20 over Schwarz in view of
Miller, further in view of Masuzawa, further in view of Aeby, as
evidenced by Pforte;
V. Claim 21 over Schwarz in view of Miller, further in
view of Masuzawa, further in view of Comaty, as evidenced by Pforte;
and
VI. Claims 45 and 46 over Schwarz in view of Miller,
further in view of Masuzawa, further in view of Kreiskott, as
evidenced by Pforte. Final Act. 2–6.
OPINION
We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and
evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential), cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the
examiner’s rejections.”). After considering the evidence presented in
this Appeal and each of Appellant’s arguments, we are not persuaded
that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
I.Rejection of claims 1, 2, 6, 10, 11, 13, 18, 22, 25, 42–45,
47, and 48
The Examiner rejects claims 1, 2, 6, 10, 11, 13, 18, 22, 25,
42–45, 47, and 48 as obvious over Schwarz, Miller, and Masuzawa,
as evidenced by Pforte. Final Act. 2.
Appellant argues claims 1, 44, 47, and 48, but does not make
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separate arguments for claims 2, 6, 10, 11, 13, 18, 22, 25, 42, 43,
and 45 in this rejection. See generally, Appeal Br. Accordingly,
claims 2, 6, 10, 11, 13, 18, 22, 25, 42, 43, and 45 stand or fall with
claim 1, which we select as representative. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 1
The Examiner finds that Schwarz discloses a metal or metal
alloy implant electropolished in a select region to obtain a smooth
surface. Ans. 3–4. The Examiner finds that Miller discloses making
implants with three-dimensional print technology including selective
laser sintering, which would result in a surface roughness resulting
from the staircase effect. Id. at 2–3. The Examiner relies on Pforte
as evidence that surface roughness and staircase effects in three-
dimensional printing methods are in the range of 100 µm to 500 µm.
Id. at 3. The Examiner determines that it would have been obvious to
one of ordinary skill at the time of the invention to modify Schwarz
with Miller because Miller teaches it would have been advantageous
to employ three-dimensional print technology to create solid, physical
implant components from an electronic or computerized data file. Id.
at 2.
The Examiner finds that Masuzawa teaches electropolishing a
metal workpiece by using a cathode corresponding in shape to a
select region of the workpiece to be smoothened, and smoothening a
roughness of about 20–22 µm. Id. at 3. The Examiner determines
that it would have been obvious to modify Schwarz in view of Miller
with a correspondingly-shaped cathode because Masuzawa teaches
a cathode corresponding in shape allows for rapidly finishing a metal
work by electropolishing. Id. In the Answer, the Examiner explains
that the prior art combination does not involve adding Masuzawa’s
wire cut discharge process, but rather relies on the reference’s
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teaching of benefits obtained through use of a cathode shape
corresponding to the workpiece. Ans. 8.
Appellant argues that Masuzawa is not combinable with
Schwarz and Miller because Masuzawa’s electropolishing technique
is only applicable to a wire cut discharge process. Appeal Br. 6;
Reply Br. 3. According to Appellant, the use of a shaped cathode in
Masuzawa is inextricably tied to the wire discharge process, and the
wire discharge process is not technically relevant to Schwarz’s
electropolishing or Miller’s additive manufacturing. Appeal Br. 7.
Appellant contends that one of ordinary skill in the art would not have
known how to apply the two-dimensional wire discharge process to
the three-dimensional articles of Schwarz or Miller. Id.
Appellant’s argument is unpersuasive. The rejection of claim 1
is based in part on the combination of Schwarz’s electrochemical
processing with Masuzawa’s cathode shape. See Final Act. 2–3.
Appellant acknowledges this fact. See Appeal Br. 6 (“The Examiner
applies (i) Schwarz for allegedly disclosing the claimed
electrochemical processing, . . . and (iii) Masuzawa for allegedly
disclosing the claimed cathode.”). However, Appellant repeatedly
recasts the issue as one of Masuzawa’s electropolishing technique
not being combinable with Schwarz or Miller. See, e.g., id. (“One of
ordinary skill in the art would not have modified Schwarz or Miller with
Masuzawa’s electropolishing technique.” (emphasis added)); see also
id. at 7 (“[T]he Examiner clearly relies on [Masuzawa’s] process in
arguing that the claimed method would have been obvious.”
(emphasis added)). Appellant thus disputes the validity of a position
that the Examiner has not taken, and does not address the rejection
stated by the Examiner. See Ans. 8 (“[T]he prior art combination
does not involve adding Masuzawa’s wire cut discharge process.”).
Such argument regarding Masuzawa’s electropolishing technique is
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ineffective in overcoming the Examiner’s rejection of claim 1.
Schwarz discloses electrochemical polishing and Masuzawa
discloses use in electrochemical polishing of a shaped electrode
whose configuration is complementary to a cut surface of a work.
See Masuzawa col. 1, ll. 47–51. In finding that Masuzawa discloses
rapidly finishing a metal workpiece via electropolishing and smoothing
a surface with a roughness of about 20–22 µm, the Examiner
provides “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” in combining the
reference with Schwarz. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
Appellant contends that Masuzawa’s disclosure of a
complementary- shaped electrode does not meet claim 1’s recitation
that a cathode corresponds generally in shape to the select region
and/or extends at least partly around the select region because
“‘[c]omplementary’ then merely relates to the two-dimensional shape
of the workpiece.” Reply Br. 4. However, nothing in Masuzawa limits
the disclosure to a two-dimensional shaped electrode. In addition,
nothing in the Specification limits “the select region” to a three-
dimensional article. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (“During prosecution, an application’s
claims are given their broadest reasonable scope consistent with the
specification.”). This argument is unpersuasive of reversible error.
Claim 1 recites that a select region of an article have an initial
surface roughness of at least 5 µm Ra. Claims App. A-1. Appellant
argues that Masuzawa’s disclosure of a Rmax surface roughness
(measure of the largest single roughness depth from peak to trough)
of “around 20 microns” would have a Ra value (measure of the
average) “likely . . . significantly less than 20 microns.” Appeal Br. 8.
However, Appellant provides nothing more than speculative attorney
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argument, which cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). More than a mere recitation of claim element and a naked
assertion that the corresponding element was not found in the prior
art is required. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board reasonably interpreted 37 C.F.R. § 41.37
(c)(1)(vii) as requiring “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion
that the corresponding elements were not found in the prior art”).
This argument is unpersuasive.
Finally, Appellant argues that Pforte does not cure the
deficiencies of Schwarz, Miller, and Masuzawa. Appeal Br. 10; Reply
Br. 6. Pforte is used as evidence that three-dimensional printers
have a resolution of about 100–500 µm. Thus one of ordinary skill in
the art would consider Miller’s three-dimensional printing to have a
surface roughness as claimed. See Final Act. 3. We find no
deficiency in Schwarz, Miller, and Masuzawa; therefore, this
argument is unpersuasive.
We sustain the rejection of claim 1 over Schwarz, Miller, and
Masuzawa, as evidenced by Pforte. We sustain the rejection of
claims 2, 6, 10, 11, 13, 18, 22, 25, 42, 43, and 45 in accordance with
37 C.F.R. § 41.37(c)(1)(iv).
Claims 44, 47, and 48
Claim 44 depends from claim 1 and recites “wherein the
surface roughness of at least the select region to be
electrochemically processed is initially at least 40 µm Ra.” Claims
App. A-4. Claim 47 depends from claim 1 and recites “wherein an
average of at least 0.25 mm of material is removed by the
electrochemical processing.” Id. Claim 48 depends form claim 1 and
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recites “wherein an average of at least 0.5 mm of material is removed
by the electrochemical processing.” Id.
The Examiner finds that Pforte evidences that known three-
dimensional printers have a resolution of about 100–500 m, and
would produce surface roughness and staircase effects in the range
of this resolution. Final Act. 3–4 (citing Pforte ¶ 96). The Examiner
finds that with a starting roughness of 100 m–500 m, “at least 500 m
of material during electropolishing must be removed in order to have
a smooth surface.” Id. The Examiner determines, therefore, that the
combined references disclose the limitations of claims 44, 47, and 48.
Id.
Appellant argues that there would have been no reason to
modify Schwarz, Miller, and Masuzawa with the surface roughness in
Pforte. Appeal Br. 10–11. However, the rejection does not modify
Schwarz, Miller, and Masuzawa with Pforte, but rather uses Pforte as
evidence of the surface roughness of the manufactured article. See
Final Act. 3–4.
The claims recite “electrochemically processing at least the
select region of the at least one product so as to smoothen at least
the select region.” Claims App. A-1. During prosecution, an
application’s claims are given their broadest reasonable scope
consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been
interpreted by one of ordinary skill in the art at the time of the
invention. Id. The Specification describes electropolishing of parts
as typically used to smoothen parts with roughness values of less
than 1 µm Ra. Spec. 2, ll. 17–24. The broadest reasonable
interpretation of “smoothening” in the claims therefore includes
removal of sufficient material to leave a surface roughness of less
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than 1 µm Ra.
Appellant disputes the Examiner’s finding that at least 500 µm
of material during electropolishing must be removed in order to have
a smooth surface. Appeal Br. 12 (citing Final Act. 3–4). In the
Answer, the Examiner explains why one of ordinary skill in the art
would have understood the combined references to teach that
electropolishing a starting staircase roughness of 500 m to a smooth
surface would necessarily mean that at least 500 m of material would
be removed: electropolishing of metals is an entirely subtractive
process, thus both metal at the valleys and the peaks are removed.
Ans. 10. Also known as anodic polishing, or anodic leveling
according to the Examiner (see id.), the process smooths a surface
by dissolving peaks or protrusions faster than valleys or recesses. A
skilled artisan would have known of this effect of electropolishing.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he
[obviousness] analysis 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.”).
We sustain the rejections of claims 44, 47, and 48 over
Schwarz, Miller, and Masuzawa, as evidenced by Pforte.
II–V.Rejections of claims 3, 4, 7–9, 14–17, and 19–21
Claims 3, 4, 7–9, 14–17, and 19–21 depend directly or
indirectly from claim 1. Claims App. A-2–A-3. Appellant does not
argue these claims separately from claim 1. We sustain the rejection
of claims 3, 4, 7–9, 14–17, and 19–21 in accordance with 37 C.F.R.
§ 41.37(c)(1)(iv).
VI.Rejection of claims 45 and 46
Claim 45 depends from claim 1 and recites, “wherein the
roughness of the surface is reduced by the electrochemical
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roughness of the surface is reduced by the electrochemical
processing to not more than 0.05 µm Ra.” Claims App. A-4.
Similarly, claim 46 depends from claim 1 and recites, “wherein the
roughness of the surface is reduced by the electrochemical
processing to not more than 0.02 µm Ra.” Id.
The Examiner rejects claims 45 and 46 as obvious over
Schwarz, Miller, Masuzawa, Kreiskott, as evidenced by Pforte. Final
Act. 6. The Examiner concludes that it would have been obvious to
modify Schwarz (as modified by the other references) with Kreiskott’s
surface roughness because Kreiskott discloses a metallic substrate
having a RMS roughness of less than 4 nm (0.004 µm) as a result of
electropolishing. Ans. 9.
Appellant argues that Kreiskott is directed to smoothening
semiconductor substrates and discloses electropolishing a thin film
template structure, but is completely silent about any additive
manufacturing process. Appeal Br. 11. According to Appellant, one
of ordinary skill in the art would not have any expectation of success
in modifying the applied references to predictably arrive at an
electropolishing technique for smoothing a surface roughness in an
additively manufactured article. Id.
The Examiner relies on Miller, not Kreiskott, to teach additive
manufacturing. Final Act. 2–3. Kreiskott is referenced for teaching
the use of electropolishing to reduce a surface roughness to at least
the scope claimed. Id. at 6. We agree with the Examiner that
Appellant argues against the references individually. Ans. 9. “Non-
obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
We sustain the rejection of claims 45 and 46.
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CONCLUSION
The Examiner’s decision to reject claims 1–4, 6–11, 13–22, 25,
and 42–48 is AFFIRMED.
DECISION SUMMARY
In summary:
TIME PERIOD FOR RESPONSE
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).
AFFIRMED