Ex Parte Brass et al

Patent Trial and Appeal Board

Oct 14, 2014

12236925 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WALTER BRASS and RENE SCHOLZ
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Appeal 2012-008408
Application 12/236,925
Technology Center 3700
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Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

WALTER BRASS and RENE SCHOLZ (Appellants) seek our review
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 24–48.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a method of welding a wear layer
onto a parent material. Claim 25 is the only claim specifically argued on
appeal and is reproduced below:

Appeal 2012-008408
Application 12/236,925

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25. A submerged arc welding method for welding a wear
layer onto a parent material, comprising the steps of:
providing a first wire electrode and at least one second
wire electrode, the first wire electrode and the at least one
second wire electrode each being a flux-cored wire electrode
having a core and a casing electrode, the flux-cored wire
electrodes having a higher alloy content than a weld deposit
content analysis of the wear layer and the casing electrode
including an alloy having magnetization characteristics
for adhesion of a metal powder;
applying a welding current to the first wire electrode and
the at least one second wire electrode;
feeding the wire electrodes continuously to the parent
material to produce a common weld pool;
supplying a metal powder to the weld pool; and
supplying a welding powder to the weld pool.

REFERENCES RELIED ON BY THE EXAMINER

Singh US 6,127,644 Oct. 3, 2000
Hallén US 6,331,688 B1 Dec. 18, 2001

THE REJECTIONS ON APPEAL
Claims 25–48 are rejected under 35 U.S.C. § 103(a) as obvious over
Singh and Hallén.
The Final Action dated July 6, 2011, on page 2, included a rejection of
claims 25–48 under 35 U.S.C. § 112, second paragraph. On August 31,
2011, Appellants filed an Amendment under 37 CFR 1.116, to address the
rejection under 35 U.S.C. § 112, second paragraph. On November 2, the
Examiner issued an Advisory Action indicating both that the amendment
would not be entered and that it would be entered. The Answer does not
specifically discuss the rejection under 35 U.S.C. § 112, second paragraph.
Appeal 2012-008408
Application 12/236,925

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Accordingly, we understand the August 31, 2011, Amendment to be entered,
and the rejection under 35 U.S.C. § 112, second paragraph to be withdrawn.
ANALYSIS
The rejection of claims 25–48 as obvious over Singh and Hallén.
(I)
Claim 1 recites, in part:
A submerged arc welding method for welding a wear
layer onto a parent material.

(II)
The Examiner rejects claim 25 as obvious over Singh and
Hallén, citing Hallén for submerged arc welding (“SAW”), stating:
It would have been obvious to one ordinary skill in the
art to modify Singh with submerged arc welding and amount of
content used as taught by Hallen to achieve high degree of
accuracy of the coating composition that can be obtained.
Furthermore, since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in
the art.
Ans. 8.
The Examiner further states:
[T]he combination of references Singh with Hallen as discussed
above fully meets all the claimed limitations. Singh teaches of
at least a first layer of high alloy steel deposited onto the roll by
electroslag and filled-core wires with high alloy content can be
more economically fabricated than an equivalent strip and part
of depositing alloys is metal powder composition that deposits
to substrate weld pool and Hallen discloses submerged arc
welding in order to achieve high degree of accuracy of the
coating composition that can be obtained and combining prior
art elements according to known method to yield predictable
results.
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Ans. 10.

(III)
Appellant traverses the Examiner’s asserted combination of
Singh and Hallén, stating:
If one of ordinary skill in the art uses Singh et al., he reads, that
SAW is not useful to reduce the number of welded layers. He
also reads that ESS is: a solution to reduce the number of
welded layers. The question is: "Why should one of ordinary
skill in the art improve his SAW, when he finds that the number
of layers can be reduced by using ESS?" From Appellants point
of view it is not obvious for him to make any efforts in this
direction.
Appeal Br. 9.
(IV)
Regarding the rejection of claim 25 as obvious over Singh and Hallén,
we agree with Appellants.
Singh describes problems associated with SAW, stating:
However, SAW is an inherently high dilution process,
requiring a multiple layer deposit. Dilution occurs when alloy
constituents such as Cr and Ni which are typically found in
significantly higher concentrations in an electrode alloy than in
substrate alloys diffuse into the molten substrate. The result is
disadvantageous loss of constituents into the substrate which
constituents are intended for the overlayer. SAW is a high
dilution process because the force of the arc penetrates deeper
into the substrate thereby melting more of the substrate for the
electrode alloy constituents to diffuse into. Also, the force of
the arc tends to facilitate the diffusion of the electrode alloy
constituents by mixing the molten substrate and electrode alloy
together. Thus, because of the high dilution, surfacing
operations using SAW usually require three or more layers to
obtain the desired deposit chemistry, resulting in increased
labor and material costs.
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Singh, col. 1, ll. 21–37. Accordingly, Singh discusses the high dilution and
resulting increased labor and material costs associated with SAW.
Singh next discusses a solution to the problems associated with SAW,
namely a different process, electroslag surfacing (“ESS”). Id at ll. 38–63.
Unlike SAW, ESS does not use an arc. Id at ll. 49–50. Singh further
explains that ESS has its own problems, such as the high cost of strip
electrodes used in some kinds of ESS. Id at col. 1, l. 64–col. 2, l. 6. Singh
further states, “[i]t is an object of the invention, therefore, to provide a
process for depositing high alloys onto iron-based substrates by ESS with a
consumable electrode comprising at least one alloy-cored or solid wire.” Id
at col. 2, ll. 27–30.
We agree with Appellants’ argument regarding the asserted
combination of Singh and Hallén. Singh considers ESS to be preferable to
SAW, and the objective in Singh is to provide an improvement to ESS,
rather than to develop an improved SAW method. Therefore, one of
ordinary skill in the art would not have been motivated to replace Singh’s
ESS with the SAW disclosed by Hallén. Accordingly, we reverse the
rejection of independent claim 25 and the claims depending therefrom as
obvious over Singh and Hallén.
DECISION
The rejection of claims 25–48 is reversed.

REVERSED

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