Ex Parte Campbell et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612979038 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/979,038 12/27/2010 Steven Campbell 66228 7590 09/30/2016 NIXON PEABODY LLP INTELLECTUAL PROPERTY GROUP- PATENTS 70 WEST MADISON STREET SUITE 3500 CHICAGO, IL 60602-4224 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 292710-007019 2322 EXAMINER LA VILLA, MICHAEL EUGENE ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): IPDOCKET@NIXONPEABODY.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN CAMPBELL and JOHN SCOTT Appeal2014-009042 Application 12/979,038 Technology Center 1700 Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009042 Application 12/979,038 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 5, 6, and 15-20. Oral arguments were waived in this appeal on September 6, 2016. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). We AFFIRM. Appellants' claimed invention is directed to a wire with a channel formed in it in which a flux solution is deposited therein for use in joining two similar or dissimilar metals in industrial applications (Spec. i-f 2; Fig. 5). Claim 1 is illustrative: 1. A wire for use in a brazing or soldering operation, the wire compnsmg: an elongated wire of a metallic material reformed into a ring having a substantially C-shaped cross-sectional shape; a channel having an opening formed along an inner wall of the ring, the opening having a width of about 30% to 70% of a major axis of a cross- section of a starting diameter of the elongated wire; a cured flux solution formed by curing a flux solution comprising a polymer-based binder material and a flux material within the channel with a surface of the cured flux solution being exposed through the opening in the channel wherein the cured flux solution within the channel forms a portion of the inner wall of the ring. Appellants appeal the following rejections: 1. Claims 1, 5, 6, 15, and 18-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Norton et al. (US 400,869, issued Apr. 2, 1889) ("Norton") in view of Lack et al. (US 6,264,062 Bl, issued July 24, 2001) ("Lack") and Seseke-Koyro et al. (US 6,432,221 Bl, issued Aug. 13, 2002) ("Seseke-Koyro"). 2. Claims 1, 5, 6, 15, and 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Norton in view of Seseke-Koyro. 2 Appeal2014-009042 Application 12/979,038 3. Claims 1, 5, 6, and 15-20 are rejected on the ground ofnonstatutory obviousness-type double patenting as unpatentable over claims 1-7 and 10-17 of copending US Patent Application No. 12/176, 126 (now US Patent 8,274,014 issued Sept. 25, 2012). 4. Claims 1, 5, 6, and 15-20 are rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-14 of US Patent No. 7,858,204. 5. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Norton in view of Seseke-Koyro and Gagnon Jr. (US 2007/0251602 published Nov. 1, 2007). 6. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Norton in view of Lack, Seseke-Koyro and Gagnon Jr. 7. Claims 17 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Norton in view of Seseke-Koyro and Jossick (US 5, 781,846 issued Jul. 14, 1998). 8. Claims 17 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Norton in view of Lack, Seseke-Koyro and Jossick. Regarding rejections (1) and (2), Appellants argue claim 1 only (Br. 5---6). Appellants' arguments regarding rejection (2) are the same as those made regarding the combination of Norton and Seseke-Koyro with regard to claim 1. Therefore, the claims under rejection (2) will stand or fall with our analysis of the rejection of claim 1 under rejection (1 ). Although Appellants list rejections (3) to (8) in the Status of Claims section of the Brief, Appellants provide no argument against these rejections (Br. 2-3, 5---6). Rather, Appellants only list rejections (1) and (2) as being 3 Appeal2014-009042 Application 12/979,038 appealed (Br. 4). Appellants, however, do argue that the rejection of claim 16 should be reversed in their listing of the claims (i.e., 1, 5, 6, and 15-20) along with the statement that the listed claims should be allowed (Br. 6). Because Appellants provide no argument regarding rejections ( 4) to (8) separate from the arguments made regarding claim 1, we decide these rejections on the basis of argued claim 1. Regarding rejection (3), we note that US Patent Application 12/176, 126 has since issued as US Patent 8,274,014. Because the scope of the claims in the issued patent may be different than the claims in the application used in the provisional obviousness-type double patenting rejection, we decline to reach the merits of rejection (3). We leave it to the Examiner to determine the propriety of the rejection upon return of jurisdiction to the Examiner. Ex parte Jerg, 2012 WL 1375142, *3 (BPAI 2012) (informative) ("Panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections."). FINDINGS OF FACT & ANALYSIS Appellants argue that Norton fails to teach a wire formed into a ring wherein the ring has a channel having an opening that has a width of about 30% to 70% of a major axis of a cross-section of starting diameter of the elongated wire (Br. 5). Appellants contend that Norton's opening in the channel formed in the wire is very small. Id. Appellants argue that Norton does not use a cured flux solution as claimed. Id. Appellants argue that Lack does not teach wire formed into a ring and does not teach cured flux solution. Id. Appellants argue that Seseke-Koyro fails to teach the 4 Appeal2014-009042 Application 12/979,038 advantage of cured flux solution and instead teaches electrostatic spraying the flux solution onto aluminum components. Id. Appellants' arguments are not persuasive because they improperly attack the references individually instead of addressing what the combined teachings would have suggested to the ordinarily skilled artisan. Norton teaches forming a channel in the solder wire and filling the channel with flux material (Norton 1: 18--45). The flux may be in powder or liquid form (Norton 1 :41--42). The channel opening is then either fully or partially closed (Norton 1 :26-28). Norton teaches that the channel size depends on the size of the solder wire and the kind of fluxing material employed (Norton 1 :84--87). The Examiner finds that Norton teaches that fully closing the channel opening is preferred when a powdered flux is used because the powdered form is harder to retain (Ans. 7). The Examiner finds that Norton impliedly teaches that more easily retained fluxing materials would require less closure of the channel opening. Id. In other words, the Examiner finds that Norton would have suggested leaving the channel opening unsealed to an extent of about 30% to 70% when the flux is easily retained. Claim 1 recites "a channel having an opening formed along an inner wall of the ring, the opening having a width of about 30% to 70% of a major axis of a cross-section of a starting diameter of the elongated wire" (emphasis added). The Examiner construes this claim language as merely requiring that the channel opening has width of about 30% to 70% for the initial diameter of a cross-section of the wire before any further processing or shaping (Ans. 8). The Examiner finds that the claim places no restrictions on the transformations that may occur between the starting diameter of the wire and the wire which forms the claimed article. Id. In other words, it 5 Appeal2014-009042 Application 12/979,038 would have been obvious to have Norton's channel opening in the starting wire be about 30% to 70% as depicted in Figure 2 depending upon the flux material and size of the wire. Indeed, Norton's channel opening may be sized depending on the type of flux used and the size of the wire (Norton 1 :84--87). Appellants do not respond specifically to these findings and conclusions of the Examiner regarding Norton. Regarding Lack, the Examiner finds that Lack is not limited to stamp forming the ring structure (Ans. 9). The Examiner finds that Lack teaches to use extrusion, grooving or cutting processes as does Norton. Id. The Examiner finds that Lack discloses embodiments where a solder wire similar to Norton is shaped into a ring (Ans. 10). The Examiner finds that Lack discloses a Figure 4A embodiment where the flux is exposed along an inner edge of the ring. Id. The Examiner concludes that it would have been obvious to form the wire of Norton as a ring in light of Lack's teachings since Norton and Lack teach similar solder wire that can be formed into rings with the flux opening on the inner surface of the ring for soldering a structure where such a solder arrangement is desirable. Id. Appellants do not respond to or show reversible error with these specific findings or conclusions of the Examiner (Br. 5). Appellants argue that Seseke-Koyro fails to teach the advantage of a cured flux solution within a channel (Br. 5). Appellants contend that Seseke-Koyro teaches electrostatic spraying the fluxing agent or application of an aqueous or organic suspension or a paste which is not a cured flux within a channel (Br. 5). Appellants fail to address the Examiner's stated rejection in which the Examiner concludes that it would have been obvious to use the paste form of 6 Appeal2014-009042 Application 12/979,038 Seseke-Koyro's flux as the flux material in Norton's solder wire because Norton teaches that any flux may be used (Ans. 11 ). Therefore, the combination ofNorton's and Seseke-Koyro's teachings would have suggested using Seseke-Koyro's cured flux solution in Norton's channel in the solder wire. The Examiner finds that "cured" in the context of the phrase "cured flux solution" includes drying the flux solution as described by Appellants in i-f 58 of the Specification (Ans. 9). Appellants do not dispute this interpretation of the Examiner. We note that the Examiner makes additional findings that Seseke-Koyro's flux includes acrylic polymers (i.e., methacrylates) in the flux, which are disclosed by Appellants as suitable polymers for use in the flux solution (Spec. i-f 53). In other words, Seseke- Koyro teaches similar materials in the flux solution as disclosed by Appellants so that it is reasonable to find that the flux solution would cure as required by the claims. On this record, we affirm the Examiner's§ 103 rejections over Norton in view of Seseke-Koyro and Lack and over Norton in view of Seseke- Koyro alone. Accordingly, we affirm all of the Examiner's decisions rejecting all claims in rejections (1 ), (2), and ( 4) to (8). DECISION The Examiner's decision is affirmed. 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). ORDER AFFIRMED 7 Copy with citationCopy as parenthetical citation