Ex Parte Bayer et al

Patent Trial and Appeal Board

Nov 30, 2012

11249701 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/249,701 10/13/2005 Erwin Bayer 5038.1016US 2482
23280 7590 11/30/2012
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
MENDEZ, ZULMARIAM
ART UNIT PAPER NUMBER
1754
MAIL DATE DELIVERY MODE
11/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERWIN BAYER, MARTIN BUSSMANN,
THOMAS KRAENZLER, ALBIN PLATZ, and
JUERGEN STEINWANDEL
____________

Appeal 2011-010163
Application 11/249,701
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE and
GEORGE C. BEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010163
Application 11/249,701

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner’s final
decision rejecting claims 1 through 10. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ claimed invention relates to a method for machining
workpieces in which a current flows from a machining electrode through an
electrolyte to a workpiece. Spec ¶ [0002]. Claim 1 is illustrative:
1. A method for machining workpieces, comprising
providing a machining electrode which is guided at a
specified operating distance to a workpiece,
providing an electrolyte between the workpiece and the
machining electrode,
providing an operating current flowing between the
machining electrode and the workpiece, which operating
current results from an operating voltage (UA), which is
produced at the machining electrode in relation to the
workpiece, which workpiece is connected to ground, the
operating voltage (UA) being applied in such a way that the
operating current is a DC current or a pulsed DC current,
superimposing a measuring voltage (UM) on the
operating voltage (UA),
detecting a measuring current resulting from the
superimposing of the measuring voltage (UM),
determining a distance between the machining electrode
and the workpiece from a relationship between the measuring
voltage (UM) and the measuring current.
Appeal 2011-010163
Application 11/249,701

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The Examiner relied on the following references in rejecting the
appealed subject matter:

Inoue US RE 26,620 July 1, 1969
Kondo US 3,729,610 April 24, 1973
Itoh US 4,798,929 January 17, 1989

Appellants request review of the following rejections (see App.
Br. 4) from the Examiner’s final office action:
1. Claims 1-7, 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoue and Itoh.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoue, Itoh and Kondo.

OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that the combination of Inoue and Itoh would have led one
skilled in the art to a method of machining workpieces comprising the step
of determining a distance between a machining electrode and a workpiece
from a relationship between the measuring voltage and the measuring
current as required by the subject matter of independent claim 1? 1
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE the prior art rejections for the
reasons presented by Appellants and add the following for emphasis.

1 We focus our discussion on independent claim 1. Claims not argued
separately will stand or fall together with independent claim 1. Claims
argued separately will be addressed separately.
Appeal 2011-010163
Application 11/249,701

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During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). The Examiner’s mere conclusory statements
are not sufficient to support the prima facie case of obviousness.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner found that Inoue teaches a method for machining
workpieces by applying an operating DC current (which results in an
operating voltage) between a machining electrode and a workpiece spaced
from each other and having an electrolyte between the workpiece and the
machining electrode. Ans. 3. The Examiner also found that Inoue
superimposes a measuring voltage on the operating voltage to reduce ion
contamination within the gap between the electrode and the workpiece. Id.
at 3-4. The Examiner further found that Inoue fails to explicitly teach the
steps of detecting a measuring current resulting from the superimposing of
the measuring voltage and determining a distance between the machining
electrode and workpiece form a relationship between the measuring voltage
and the measuring current. Id. at 4.
The Examiner found that Itoh discloses it was known to superimpose
a measuring voltage on an operating voltage to detect the condition of the
gap between a machining electrode and a workpiece and to modify this
condition to ensure effective operation of the device. Id. at 4-5. According
to the Examiner, Itoh detects the degree of electric insulation of a machining
Appeal 2011-010163
Application 11/249,701

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liquid or solution in an interelectrode gap from a measuring current/voltage
and determines the condition of the interelectrode gap (i.e. gap width) from a
comparison between the degree of insulation detected and a predetermined
reference value. Id. at 8. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art to modify Inoue to incorporate the
teachings of Itoh to detect the current resulting from the superimposed
voltage and determine the distance (gap width) between the electrodes in
response to the detected conditions to adequately ascertain whether the
machining condition is good or bad. Id. at 5.
Appellants argue that Itoh does not determine a gap from a
relationship between a measuring voltage and a measuring current as
claimed. App. Br. 4-5. Instead, Appellants argue that Ito discloses the gap
condition by determining the degree of insulation based on sludge
characteristics present at the gap and not on the distance between the
machining electrode and the workpiece (gap width). Id. at 5.
We agree with Appellants that the process of Itoh does not determine
a distance between the machining electrode and the workpiece from a
relationship between the measuring voltage (UM) and the measuring current
as required by the subject matter of independent claim 1. Id. at 4. As
correctly noted by Appellants, Itoh uses the measuring voltage and current to
determine the gap condition based on the degree of insulation due to the
presence of sludge within the gap separating the machining electrode and the
workpiece and not the gap width. Id. at 5. While the Examiner contends
that the determination of the degree of insulation due to sludge is a
determination of the gap width (Ans. 8), the Examiner has not adequately
explained how Itoh’s step of determining the degree of insulation within the
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Application 11/249,701

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gap is a measurement of the gap width between the machining electrode and
the workpiece. Moreover, Itoh designates the gap width as a machining
condition to be adjusted in response to the determination of the degree of
insulation and not as a condition to be monitored. Itoh Abstract.
Consequently the Examiner has not adequately explained why one skilled in
the art would modify Itoh’s step of determining the degree of insulation to a
step of determining a distance in view of this disclosure.
On the present record, the Examiner has failed to meet the initial
burden of establishing a prima facie case of obviousness. See Oetiker, 977
F.2d at 1445; In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
For the reasons stated above and those presented by Appellants, the
rejection of claims 1-7, 9 and 10 under 35 U.S.C. § 103(a) over Inoue and
Itoh is reversed.
In addressing separately rejected dependent claim 8, the Examiner
relied on additional secondary reference to Kondo to meet respective
limitations of this claim. Ans. 7. However, Kondo does not does not cure
the deficiencies of the combination of Inoue and Itoh noted above.
Therefore, we also reverse the rejection of claim 8 for the reasons given
above and by the Appellants.

ORDER
The rejection of claims 1-7, 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Inoue and Itoh is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Inoue, Itoh and Kondo is reversed.

Appeal 2011-010163
Application 11/249,701

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REVERSED
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