Ex Parte 6708864 et al

Patent Trials and Appeals Board

Jun 17, 2013

95000620 - (D) (P.T.A.B. Jun. 17, 2013)

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.
95/000,620 03/25/2011 6708864 201990.05797 3271
91854 7590 06/17/2013
Lincoln Electric Company/Perkins COIE LLP
700 Thirteenth Street, NW
Suite 600
Washington, DC 20005-3960
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/17/2013 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
____________________

NATIONAL STANDARD, LLC
Requester and Appellant
v.

LINCOLN GLOBAL, INC.
Patent Owner
____________________

Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2
Technology Center 3900
____________________

Before DANIEL S. SONG, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

2
STATEMENT OF THE CASE
Requester Appellant National Standard, LLC (“National Standard” or
“Requester”) appeals under 35 U.S.C. § 134(b) and 315(a) (2002) from the
confirmation of claims 1-8 and 11-15 as set forth in the Right of Appeal
Notice (“RAN”) mailed March 12, 2012. See Appeal Brief 4-5 (filed June 8,
2012) (“Br.”).
Patent Owner did not file a respondent brief.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm.

THE INVENTION
This proceeding arose from a request by National Standard for an
inter partes reexamination of U.S. Patent 6,708,864 B2 (“’864 Patent”).1
The ’864 Patent is entitled “‘S’ Shaped Cast In Wire,” issued to Otto
Ferguson, III and Dennis K. Hartman (Mar. 23, 2004), and is assigned to
Lincoln Global, Inc. (’864 Patent cover page).
The ’864 Patent “pertains to an improved weld wire and a process for
making the improved weld wire for use in various types of welding
machines.” (‘864 Patent, col. 2, ll. 25-27.) According to the patent,
consistent formation and placement of quality weld beads is desirable, and
“[o]ne of the remaining problems with obtaining a consistent weld bead

1 Request for Reexamination accorded filing date of March 25, 2011
(“Request”).
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Reexamination Control No. 95/000,620
Patent 6,708,864 B2

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placement on a workpiece is the position of the weld wire relative to the
workpiece as the weld bead is being formed.” (Col. 1, ll. 15-32.)
The patent states that is common industry practice to feed a “killed”
weld wire (i.e., one that has had its shape memory removed) to a welder
during the welding process. (Col. 1, ll. 35-39.) “Since the weld wire has no
memory, the weld wire constantly modifies its shape as it passes through the
weld gun, thus resulting in inconsistent positioning of the weld wire as it
exits the welding tip of the welding gun or torch.” (Col. 1, ll. 52-55.)
In contrast, the invention of the ’864 Patent involves the utilization of
a weld wire that has a shape memory (or cast) imparted onto it, which is a
deviation from common industry practice that teaches that weld wire that is
fed into a welding machine should have little or no shape memory. (Col. 2,
ll. 33-46.) In particular, each of the claims is directed to a weld wire of a
specified “shape memory” or “cast.”
Representative independent claims 1 and 3 on appeal are reproduced
below.
1. A weld wire for storage on a spool of weld wire,
said wire having a substantially linear cast in the form of
an undulating curve generally in a single plane,
said linear cast formed on said weld wire prior to said
weld wire being wound on said spool and at least partially
retained on said weld wire after said weld wire is unwound
from said spool,
said cast having a generally fixed radius of curvature in
the range of about 15-40 inches.
Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

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3. A weld wire having a desired imparted shape
memory for storage on a spool of weld wire,
said weld wire having said shape memory imparted on
said weld wire at least partially prior to said weld wire being
wound on said spool,
said shape memory substantially lying in a single plane
wherein said shape memory is generally a waveform having a
maximum amplitude for each half cycle,
said half cycle having a radius of curvature of at least
about 15 inches.
Br. 31 (paragraphing added).

EVIDENCE
Requester relies upon the following references:
Rushforth
Asano
Corbin
Offer
Not Identified
“FR ’181”2
Komei
“JP ’068”
US 4,172,375
US 4,188,526
US 4,949,567
US 6,301,944 B1
FR 2.055.181

JP 58035068 A
Oct. 30, 1979
Feb. 12, 1980
Aug. 21, 1990
Oct. 16, 2001
May 7, 1971

Mar. 1, 1983

2 Our citation to FR ’181 herein refers to the translation of the reference
provided by Requester with its Request.
Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

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Brochure of Praxair Tech., Inc., “PROSTAR® Twist-Free Robotic
Welding Wire” (1997). (hereinafter “ProStar”). (Request, Ex. 3).

Brochure of Sidergas Products, “Weld Point® Robotic Welding
Wire,” (Microline Networks s.r.l. 1997). (hereinafter “Weld Point”).
(Request, Ex. 6).

Brochure of C.I.F.E. Spa, “New Speedy Wire: Le Cube.” (hereinafter
“CIFE.”). (Request, Ex. 4).

Brochure of Gas Tech., Inc., “Weld Point®: Robotic Welding Wire.”
(hereinafter “Gas Tech”). (Request, Ex. 5).

PROPOSED REJECTIONS NOT ADOPTED
Requester appeals the Examiner’s refusal to make the following
rejections:
1. Claims 1-6 and 12-15 under 35 U.S.C. § 102(e) as anticipated by
Offer.
2. Claims 1-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
Offer and Gas Tech.
3. Claims 1-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
Offer and ProStar.
4. Claims 1-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
Offer and Weld Point.
5. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181 and Gas Tech.
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Reexamination Control No. 95/000,620
Patent 6,708,864 B2

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6. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181 and ProStar.
7. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181 and Weld Point.
8. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181 and CIFE.
9. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181, Rushforth, and Gas Tech.
10. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181, Corbin, and Gas Tech.
11. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181, Asano, and Gas Tech.
12. Claims 3-8 and 11-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181, JP ’068, and Gas Tech.
13. Claims 1-6 and 12-15 under 35 U.S.C. § 103(a) as unpatentable over
FR ’181 and Offer.
ANALYSIS
Anticipation By Offer (Ground 1)
Requester seeks rejection of claims 1-6 and 12-15 as anticipated by
Offer. On appeal, Requester argues these claims as a group. (Br. 8-14.)
Accordingly, we focus on claim 1 but our analysis applies to all claims at
issue.
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Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

8
The straightening apparatus includes a pair of wire dies [12 and
14] with sliders [18]. The first wire die and slider bend the wire
in one direction and the second wire die and slider bend the
wire in a second direction. Offer states on col. 4, lines 62-64,
“It will be appreciated that as the wire passes through the
counter-rotating dies, the wire is cold-hardened and
straightened.” Although it appears from Fig. 1 that the wire is
formed with an undulating curve, the disclosure of Offer does
not support this interpretation of Fig. 1. The section of wire
that is bent in a first direction in the first wire die is then bent in
a second direction in the second wire die. Therefore, the wire is
straightened after it has passed through both wire dies yet it still
has “sufficient elasticity to be wound on a spool without the
typical high degree of cast” (col. 2, lines[ ]51-52).

(RAN 4.)
The Examiner, Requester, and Requester’s witness are all in general
agreement that Offer Figure 1 shows a weld wire being bent upward at die
(12) and downward at die (14). RAN 4; Examiner’s Answer (mailed
October 1, 2012) (“Ans.”) 5; Br. 9-10; Declaration of Peter Savoy, Ph.D.
¶¶ 10-16 (“Decl.”). The Examiner, Requester, and Requester’s witness also
are all in general agreement that Offer discloses that the weld wire has a cast
after being unwound from the spool. RAN 4; Ans. 5; Br. 12; Decl. ¶ 18.
But, claim 1 requires a weld wire having a “cast in the form of an
undulating curve[.]” Although it may be possible that a section of the Offer
wire temporarily could be in the form of an undulating curve while it is
within the rotary arbor straightening apparatus and being bent, such an
interpretation of Figure 1 would not result in anticipation of claim 1.
Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

9
First, as pointed out by the Examiner, Figure 1 is an intermediate step.
Ans. 5. Offer does not disclose that the wire emerges from the straightening
apparatus in the shape of undulating curve; rather, Offer states that “as the
wire passes through the counter-rotating dies, the wire is cold-hardened and
straightened.” (Offer col. 4, ll. 36-38 and ll. 62-64 (emphasis added).)
Second, even if the wire did emerge from the straightening apparatus
not perfectly straight, there is no disclosure in Offer of a cast in a specific
form after the straightening apparatus. See Ans. 5. Offer teaches a wire that
will have a “low-cast” (col. 3, l. 57), but it does not describe the shape of the
cast as an undulating curve or waveform.
Requester submits that a low-cast “is equivalent to an undulating
curve because of what is plainly shown in FIG. 1 of Offer.” (Br. 11.) This
argument is not persuasive; it is merely a restatement of Requester’s
misplaced reliance on Figure 1.
Requester’s witness Dr. Savoy testifies: “In my opinion, Offer teaches
an undulating curve (waveform) is retained on the weld wire after unwinding
from a spool.” (Decl. ¶18.) But, Dr. Savoy does not explain the basis of his
opinion. (Decl. ¶ 18.) Thus, the testimony is conclusory and not persuasive.
For the foregoing reasons, we sustain the Examiner’s refusal to adopt
the proposed rejection that claims 1-6 and 12-15 are anticipated by Offer
(Ground 1).
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Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

11

RAN 7-8.
The Examiner further found that both Offer and Weld Point disclose
the desire to have a straight wire and concluded that it would not have been
obvious to one of ordinary skill in the art at the time of the invention to
combine Offer and the Weld Point Brochure to obtain a weld wire with an
undulating curve or waveform. RAN 8; see also RAN 5-6 (similar analysis
regarding combining Offer and Gas Tech) and RAN 6-7 (similar analysis
regarding combining Offer and ProStar).3
Requester criticizes the Examiner’s characterization of the Gas Tech,
ProStar, and Weld Point brochures as providing an “equivalent” teaching as
that set forth in the admitted prior art weld wire of Figure 4 of the ’864
Patent.4 (Br. 15; RAN 6, 8, 10.) In particular, Requester distinguishes the
maximum amplitude set forth in each of the brochures from the amplitude of
the prior art wire shown in Figure 4 of the ’864 Patent. (Br. 15.) The
distinction in amplitude identified by Requester, however, does not bear on

3 Requester argues Grounds 2-4 together. (Br. 14-18.) Thus, we address
them together here.
4 Figure 4 discloses a waveform shape of a “killed” prior art weld wire after
it is unwound from a spool. (’864 Patent col. 6, ll. 22-23.) The’864 Patent
explains that the prior art weld wire “is typically in multiple planes and has
no consistency from one cycle to the next.” (Col. 7, ll. 20-22.)

Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

12
whether the brochures teach a consistent or defined undulating curve or
waveform.
Requester asserts that the brochures “teach a consistent waveform
shape memory for improved weld bead placements[.]” (Br. 16.) However,
Requester does not provide persuasive evidence to support its assertion.
With respect to Gas Tech, in particular, Requester asserts that “one of
ordinary skill in the art would have recognized in Gas Tech’s weld wire a
defined waveform having a specific radius of curvature dimension,” but the
assertion is conclusory; Requester does not explain why or provide
persuasive evidence to support the assertion. (Br. 17.)
Requester also asserts that Gas Tech presents the same advantage as
the invention of ’864 Patent: obtaining consistent weld beads. (Br. 17-18).
That assertion, however, does not bear on whether the inventions as set forth
in the claims of the ’864 Patent would have been obvious to one of ordinary
skill in the art in view of Offer and Gas Tech (or ProStar or Weld Point).
Additionally, while not necessary for our decision, we observe that
neither the Request nor the Appeal Brief articulates sufficient reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).) Requester merely states that “[o]ne of
ordinary skill in the art in reviewing prior art weld wire having waveforms,
bends or undulating curves would have an apparent reason consistent with
KSR to combine Offer with the GasTech Brochure.” (Request 58; see also
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Reexamination Control No. 95/000,620
Patent 6,708,864 B2

13
Request 71 (stating identical reason for to combining Offer with ProStar);
Request 84 (stating identical reason for to combining Offer with Weld
Point)). Requester does not identify the purportedly apparent reason.
For the foregoing reasons, we sustain the Examiner’s refusal to adopt
the proposed rejections that claims 1-8 and 11-15 would have been obvious
based principally on Offer (Grounds 2-4).
Obviousness Based Principally On FR ’181 (Grounds 5-13)
Requester seeks rejection of claims 1-6 and 12-15 as obvious over
FR ’181 in view of Offer (Ground 13) and claims 3-8 and 11-15 as obvious
over FR ’181 in view of one or more additional references (Grounds 5-12).
FR ’181 discloses an undulated weld wire, and states:
This undulation must exist at least when the wire passes
through the supply nozzle of the welding machine. …

While the wire crosses the contact nozzle, at least three
undulation peaks should, preferably, be in contact with the
nozzle. …

Undulation’s peaks cause constant modification of the contact
points in the power supply nozzle. One is certain that several
contact points exist simultaneously; they depend on the length
of the nozzle and that of the undulations. With a nozzle length
of 30 mm, one is assured of at least three contact points.

(FR ’181 pp. 2-3.)
The Examiner found that FR ’181 discloses a weld wire having a
shape memory in the form of a wave with half cycles that are generally
Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

14
semi-circular and of the same amplitude before the wire is wound on a
storage spool and that the wire at least partially retains the shape memory
after it is unwound from a storage spool. (See, e.g., RAN 8.) But, noting the
range of parameters for the waveform given on page 2 of FR ’181, the
Examiner found that the reference does not disclose a radius of curvature
within any of the ranges specified by the independent claims (claims 1, 3, 6,
11, and 12). (See, e.g., RAN 8-9.)
Requester asserts that the other relied-upon references do disclose
radii of curvature within the ranges specified by the independent claims.5
But, notwithstanding the disclosure of the other references, the Examiner
concluded that it would not have been obvious to modify FR ’181 to
increase its radius of curvature to within the claimed ranges because one
would not be assured of three contact points in the nozzle as desired by
FR ’181. See RAN 9 (regarding modification in view of Gas Tech), 10
(ProStar), 12 (Weld Point), 13 (CIFE), 14 (Rushforth and Gas Tech), 15
(Corbin and Gas Tech), 16 (Asano and Gas Tech), 18 (JP ’068 and Gas
Tech), and 19 (Offer); see also Ans. 7.
Requester points out that the number of nozzle contact points can
depend on various factors beyond the height and length of the undulations.
Br. 19. In that regard, Requester argues that the Examiner ignored the

5 Requester concedes that FR ’181 does not. (Br. 20.)
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Reexamination Control No. 95/000,620
Patent 6,708,864 B2

15
additional teachings of FR ’181 that: (1) the nozzle is not restricted to a
length of 30 mm and may be as long 200 mm and (2) the diameter of the
wire may be between 0.4 and 3.0 mm. (Br. 19.) However, Requester does
not explain how these additional teachings demonstrate reversible error.
For example, Requester does not present persuasive evidence that, in any of
its proposed modifications of FR ’181, three contact points would exist if the
maximum length nozzle (200 mm) were employed.
Requester also asserts that the Examiner’s reliance on the FR ’181-
desired three contact points is misplaced because no such requirement or
limitation appears in the claims of the ’864 Patent. (See, e.g., Br. 20.)
Although the claims do lack such a requirement, the Examiner’s reliance is
not misplaced. The Examiner stated that “a combination of references
cannot render the prior art unsatisfactory for its intended purpose.” (Ans. 7.)
That is correct. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
Additionally, while not necessary for our decision, we observe that
neither the Request nor the Appeal Brief articulates sufficient reasoning with
rational underpinning to support a legal conclusion of obviousness.
Requester merely states that “[o]ne of ordinary skill in the art in reviewing
prior art weld wire having waveforms, bends or undulating curves would
have an apparent reason, consistent with KSR,” to combine FR ’181 with the
other reference(s). (Request 96-97, 114, 123, 130, 140, 166, 195, 221, 251-
252.) Requester does not identify the purportedly apparent reason.
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Reexamination Control No. 95/000,620
Patent 6,708,864 B2

16
For the foregoing reasons, we sustain the Examiner’s refusal to adopt
the proposed rejections that claims 1-8 and 11-15 would have been obvious
based principally on FR ’181 (Grounds 5-13).

DECISION
The Examiner’s refusal to adopt the rejections proposed by Requester
is affirmed.

Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

peb

cc:
PATENT OWNER:
LINCOLN ELECTRIC COMPANY /PERKINS COIE LLP
700 THIRTEENTH STREET, NW
SUITE 600
WASHINGTON, DC 20005-3960

Appeal 2013-004171
Reexamination Control No. 95/000,620
Patent 6,708,864 B2

17
THIRD PARTY REQUESTER:
MCDERMOTT WILL & EMERY LLP
600 13TH ST N.W.
WASHINGTON, DC 20005-3096