Ex Parte Bertin et alDownload PDFPatent Trial and Appeal BoardJan 29, 201813809531 (P.T.A.B. Jan. 29, 2018) Copy Citation 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. 13/809,531 01/10/2013 Pascal Bertin 2010P00189WOUS; S8558 4583 40582 7590 American Air Liquide, Inc. Intellectual Property Department 9811 Katy Freeway Suite 100 Houston, TX 77024 EXAMINER ROSS, DANA ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 01/31/2018 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): IP-U S Office @ airliquide.com Neva. Dare-c @ airliquide. com Justin.Murray @ airliquide.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PASCAL BERTIN, OLIVIER DUBET, SEBASTIEN GADREY, and FREDERIC RICHARD1 Appeal 2017-004217 Application 13/809,531 Technology Center 3700 Before JAMES P. CALVE, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Office Action rejecting claims 12—22 under 35 U.S.C. § 103(a) as unpatentable over Briand ’720 (US 2008/0011720 Al, pub. Jan. 17, 2008), Schweighardt (US 2010/0219172 Al, pub. Sept. 2, 2010), and Briand ’094 (US 2002/ 0008094 Al, pub. Jan. 24, 2002). Br. 5. Claims 1—11 are cancelled. Id. at 8 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 L’ Air Liquide, Societe Anonyme pour TEtude et TExploitation des Precedes Georges Claude is identified as the real party in interest in the Appeal Brief. Appeal Br. 3. Appeal 2017-004217 Application 13/809,531 CLAIMED SUBJECT MATTER Claim 12, the sole independent claim, is reproduced below. 12. A process for the electric-arc welding of at least one metallic part comprising a surface coating based on aluminum, using a shielding gas, comprising: • melting at least a portion of metal of said metallic part solely by the electric arc, with no laser beam contributing to the melting, wherein the shielding gas consists of a mixture of argon or helium or argon and helium, combined with nitrogen and an oxidizing compound chosen from oxygen (02) and carbon dioxide (C02), said shielding gas containing at least 0.025% and at most 30% by volume of nitrogen. Appeal Br. 8 (Claims Appendix). ANALYSIS The issue in dispute is whether it would have been obvious to modify the hybrid welding process of Briand ’720, which uses laser and arc welding together, to use only arc welding to melt at least a portion of metal of a metal part comprising a surface coating of aluminum, as recited in claim 12.2 The Examiner relies on Schweighardt to teach joint welding can be conducted using electric arc or laser welding in the alternative (Final Act. 3; Ans. 4) and reasons it would have been obvious to carry out the process of Briand ’720 with only electric arc welding since laser welding is very costly and welding may be carried out efficiently by either method (Final Act. 3). The Examiner finds that removing a laser from Briand ’720’s process would not render the workpieces unweldable by solely the electric arc. Ans. 3. 2 Appellants argue claims 12—22 as a group. Br. 5—7. We select claim 12 as representative, with claims 13—22 standing or falling with claim 12. See 37 C.F.R. §41.37(c)(l)(iv). 2 Appeal 2017-004217 Application 13/809,531 Appellants argue that the Examiner’s proposed change to Briand ’720 would render the welding process inoperable because Briand ’720 provides an electric arc welder behind a laser welder to improve the quality of a weld joint. If an arc welder was used by itself, “an unacceptable concentration of aluminum will be produced in the weld melt, thereby weakening the joint.” Br. 6. Appellants argue that removing a laser beam from Briand ’720 would alter the fundamental process operation and render it inoperable. Id. at 5. An obviousness determination requires finding that a skilled artisan would have been motivated to combine teachings of the prior art to achieve the claimed invention, and the skilled artisan would have had a reasonable expectation of success in doing so. In re Stepan Co., 868 F.3d 1342, 1345— 46 (Fed. Cir. 2017) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367—68 (Fed. Cir. 2016)); Honeywell Inti Inc. v. Mexichem Amanco Holding S.A., 865 F.3d 1348, 1355 (Fed. Cir. 2017) (“the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success.'”). “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., 821 F.2d at 1367. The Examiner’s reason to modify Briand ’720 to use only arc welding to weld a workpiece is supported by a rational underpinning. The Examiner reasons correctly that Briand ’720 uses laser and arc welders to melt a steel part; however, a skilled artisan would have been motivated to use only arc welding for “melting at least a portion of metal” of the metallic part “with no laser beam,” as claimed, to save the cost of using a laser welder and improve efficiency thereby. Final Act. 3; see Ans. 4. 3 Appeal 2017-004217 Application 13/809,531 The Examiner’s reasoning is supported by the express teachings of Schweighardt that welding metal pipes, tubes, pipelines, conduits, and the like can be done using an electric arc welding torch or a laser torch. Final Act. 3 (citing Schweighardt 12 (a circular weld joint is welded along the circular path of the joint by means of a welding torch such as an electric arc welding torch or a laser torch)). Indeed, the Examiner’s reason finds support in the teachings of Briand ’720. Briand ’720 teaches that laser and electric arc welders can melt the steel of a metallic part having an aluminized coating. Briand ’720 1, 33— 43, Figs. 2, 3. The arc welder increases the amount of steel that is melted by the laser welder, reducing the amount of aluminum impurities in the weld joint and homogenizing the weld joint so it maintains the desired austenitic transformation in the melted zone. Id. 19, 40-42, 48—52. Briand ’720 teaches that an arc welder increases the energy input into a weld and “makes it possible to increase the size of the melted zone.” Id. 36, 42. The Examiner is not modifying Briand ’720 in order to perform the hybrid welding process of Briand ’720. Rather, the Examiner is modifying Briand ’720’s hybrid welding process to melt at least a portion of a metallic part that has a surface coating based on aluminum, as claimed. Briand ’720 teaches that TIG or MIG/MAG arc welders can be used to melt the steel of a steel workpiece with an aluminized surface layer or coating. Id. Tflf 32-42, Figs. 2, 3. The extra steel that is melted in the melted zone by the arc welder reduces the aluminum content and improves the homogeneity to increase tensile strength and elongation of the material. Id. 1, 34—36, 48—52. Schweighardt teaches that arc welders are used to melt metals. Briand ’720 teaches that they can be used to melt the claimed metallic part. 4 Appeal 2017-004217 Application 13/809,531 A skilled artisan would have had a reasonable expectation of success based on the teachings of Schweighardt and Briand ’720 that arc welding can be used, by itself, to melt the metal of a workpiece including one coated with aluminum. Claim 12 does not specify any particular material property that results from the claimed melting of the metal. Claim 12 only requires an arc welder that is used to melt at least a portion of the metal of the metal part that has a surface coating based on aluminum. Appellants’ argument that the Examiner’s proposed change would render Briand ’720 inoperable or alter its fundamental operation is not persuasive because the Examiner has modified Briand ’720 to arrive at or render obvious the claimed method, not to try to perform the hybrid welding process of Briand ’720. Briand ’720 teaches a hybrid welding process that addresses problems encountered when aluminum-coated steel parts are cut by shearing and then butt welded. A shearing process, which is less expensive than laser cutting, leaves part of the aluminum-silicon coating on the butt end of the workpiece. Id. 10-12. During the subsequent laser butt welding this extra coating melts into the metal/steel weld pool and reduces the strength of the weld. Id. 1113—18. Briand ’720 solves this problem using an arc welder to melt more of the metal to increase the amount of steel in the weld pool and reduce local aluminum concentrations of greater than 1.2%. Id. 1134—39. The Examiner reasonably concludes that the hybrid welding process of Briand ’720 is not needed to perform the claimed method of just melting at least a portion of the metal. An arc welder will suffice for the claimed process and will save costs. Briand ’720 teaches that the high cost of laser cutting has limited its use in the industry in favor of shearing. Id. 111. Appellants recognize such cost considerations as well. See Spec. 2:3—5. 5 Appeal 2017-004217 Application 13/809,531 The Examiner’s finding that the more complex, expensive hybrid method of Briand ’720 is not required to perform the claimed process of merely melting at least a portion of metal leads the Examiner to conclude that a skilled artisan would have been motivated to use only arc welding to perform the welding to save costs and improve efficiency. Final Act. 3. We agree with the Examiner that a skilled artisan would have been motivated to use only the arc welding process of Briand ’720’s hybrid welding process to melt a portion of metal, as claimed, where Briand ’720 and Schweighardt teach that arc welding is used to melt metal for welding as discussed above. The teachings of these references also provide a skilled artisan with a reasonable expectation of succeeding in using arc welding to melt at least a portion of the claimed metal, as discussed above. Appellants argue that “[i]t is clear to one of ordinary skill in the art, that if an arc welder alone is used to butt weld this material, an unacceptable concentration of aluminum will be produced in the weld melt, thereby weakening the joint.” Br. This argument is not persuasive for several reasons. First, it is attorney argument, not evidence and, as such, is not persuasive that arc welding, by itself, will increase the concentration of aluminum in the weld melt and weaken the joint. Second, even if there was evidence that use of an arc welder alone would weaken the weld joint in this alleged manner (and there is not), a skilled artisan could conclude that trade-offs of decreased cost and increased efficiency (as the Examiner determines) would offset any reduction in weld joint strength. The “mere disclosure of alternative designs does not teach away.” In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). There are other reasons for supporting the Examiner’s determination, however. 6 Appeal 2017-004217 Application 13/809,531 Briand ’720 itself provides teachings that support the determination to use only arc welding. Briand ’720’s hybrid welding process addresses the problem of aluminum contamination of a “butt weld” resulting from the use of shearing to cut the metal pieces of steel and coated aluminum. Briand ’720 recognizes that engineering trade-offs occur in which a less expensive, but more efficient solution (shearing) is pursued even at the cost of weld strength. Although laser cutting “has the advantage of not taking the coating into the cut lateral edges” (and causing problems with weld strength), the investment cost of such systems “stem[s] its widespread use in the industry.” Briand ’7201 11. Third, Briand ’720 teaches that its hybrid welding process of laser and arc welding could be performed solely with a laser welder. Briand ’720 teaches that an extra energy source can be provided by an arc welder or “for example by defocusing the laser beam or having an oblong focal spot.” Id. 138. Thus, Briand ’720 itself teaches that a single laser can be used to butt weld sheared aluminum-coated steel pieces if the laser beam provides more energy into the weld joint/pool, e.g., by defocusing the laser beam or by making the focal spot oblong to cover more area. Fourth, a skilled artisan is a person or creativity and not an automaton. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). A skilled artisan would understand to select an arc welder and arcing process that imparts more energy into a weld joint, as desired, to address the issues discussed in Briand ’720. We have no evidence from Appellants that arc welders cannot provide sufficient energy even for Briand ’720’s process. Appellants admit in their Specification “[i]n theory, all conventional arc welding processes . . . can be used for assembling these aluminized steels.” Spec. 1:20—21. 7 Appeal 2017-004217 Application 13/809,531 Finally, Appellants’ arguments are not persuasive because they are not commensurate with the scope of claim 1. Claim 1 does not require a weld joint that is free of aluminum or that has any particular strength. Briand ’720 requires a sufficiently large weld pool to dilute aluminum present on a butt weld of a sheared metal. Claim 1 does not recite a welding process for butt welding metals that have been sheared as in Briand ’720. Therefore, this is no indication that the additional energy required for Briand ’720’s hybrid process is required by the claimed welding process. Claim 1 merely requires an electric arc welder to melt at least a portion of metal with no laser beam contributing to the melting. As discussed above, Briand ’720 teaches that the arc welder performs this function in the hybrid process. Thus, we sustain the rejection of claims 12—22. DECISION We affirm rejection of claims 12—22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation