Ex Parte Chen et al

Patent Trial and Appeal Board

Jul 30, 2013

10880078 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FUHU CHEN and SUNDARAM NAGARAJAN
____________

Appeal 2011-007104
Application 10/880,078
Technology Center 3700
____________

Before LINDA E. HORNER, CHARLES N. GREENHUT, and
BARRY L. GROSSMAN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Fuhu Chen and Sundaram Nagarajan (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-3, 5, 6,
12-14, 16, 17, 19, and 20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
Appellants’ claimed invention relates to “electrodes for gas metal arc
welding of carbon steels.” Spec., para. [0002].1 Claims 1, 12, and 17 are
independent. Claims 1 and 17, reproduced below, are illustrative of the
subject matter on appeal.
1. A gas metal arc weld wire comprising:
a metal sheath encapsulating a powdered metal core,
wherein a fill percentage of the metal core of the gas metal arc
weld wire is higher than approximately 12% wt; and
the metal core having a core composition that includes a
low carbon steel powder alloyed with an alloying element
selected from the group consisting Cr, Mo, V, W, Hf, Nb and
combinations thereof, wherein the total percentage of the
alloying element is selected from the range of about 0.4%wt to
about 0.8%wt.2

17. A gas metal arc weld wire comprising a sheath
encapsulating a core powder composition, having a core fill
percentage that is greater than approximately 12 %wt, and
consisting essentially of Fe and:
C in an amount not greater than approximately
0.043 %wt;
Mn in an amount not greater than approximately
1.73 %wt;
Si, in an amount not greater than approximately 0.9 %wt;

1 References to “Spec.” herein refer to the Substitute Specification dated
November 15, 2004.
2 Independent claim 12 is directed to a method of manufacturing a gas metal
arc weld wire, where the wire is similar in pertinent respects to the wire of
claim 1.
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P in an amount not greater than 0.03 %wt;
S in an amount not greater than 0.03 %wt;
an alloying element in an amount not greater than
approximately 1 weight percent, wherein the alloying element
is selected from the group consisting of Cr, Mo, V, W, Hf, Nb,
and any combination thereof; and, optionally, at least one of,
Cu in an amount not greater than approximately
0.5 %wt, and
Ni in an amount not greater than approximately
0.033 %wt.
THE EVIDENCE
The Examiner relies upon the following evidence:
Duttera US 3,539,765 Nov. 10, 1970
Sakai US 4,571,480 Feb. 18, 1986
Drossman US 5,332,628 Jul. 26, 1994
Gotoh US 5,688,420 Nov. 18, 1997
Nagarajan US 5,824,992 Oct. 20, 1998
Kobe Steel Ltd. JP 63-299889 A
(abstract)
Dec. 7, 1988
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Nagarajan;
2. Claims 1-3 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Duttera and Drossman;
3. Claims 12-14 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Duttera and Nagarajan;
4. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Duttera,
Drossman, and Nagarajan;
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5. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Duttera,
Drossman, and Sakai;
6. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Duttera,
Drossman, and Gotoh;
7. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Duttera,
Nagarajan, and Gotoh; and
8. Claims 1-3, 5, 6, 12-14, 16, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Nagarajan, Kobe Steel, and Drossman.
PRINCIPLES OF LAW
As stated by the Federal Circuit, a “prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003); Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1311 (Fed.
Cir. 2006). Even a slight overlap in range establishes a prima facie case of
obviousness. Peterson, 315 F.3d at 1329. A prima facie case of
obviousness likewise exists when the claimed range and the prior art range
do not overlap but are close enough such that one skilled in the art would
have expected them to have the same properties. Id. (citing Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)).
One “may overcome a prima facie case of obviousness by establishing
‘that the [claimed] range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.”’ Peterson,
315 F.3d at 1330 (quoting In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997) (alteration in original)). Alternatively, one “may rebut a prima facie
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case of obviousness by showing that the prior art teaches away from the
claimed invention in any material respect.” Peterson, 315 F.3d at 1331
(citing Geisler, 116 F.3d at 1469).
ANALYSIS
Rejection 1: Claim 17 as unpatentable over Nagarajan
The Examiner “used the broadest compositional teachings of
Nagarajan” to find that Nagarajan teaches a weld wire having a core powder
composition which includes elements within ranges that overlap the ranges
called for in claim 17. Ans. 13. Claim 17 calls for elements P and S to be
present in the core composition in “an amount not greater than 0.03 %wt.”
The Examiner determined that “P and S are not required to be present since
the amount is less than 0.03%.” Ans. 14; see also Ans. 15 (interpreting the
claim to encompass “a zero amount” of P and S). We find the Examiner’s
claim interpretation of “an amount” to encompass no amount of P and S is
unreasonably broad when read in the context of the language of claim 17.
Claim 17 calls for the core composition to consist essentially of Fe
and six elements (C, Mn, Si, P, S, and an alloying element) each “in an
amount not greater than” a specified amount. Claim 17 also includes
optional elements Cu and Ni that may be included in the alloying element.
Had Appellants intended to make P and S optional, i.e., to encompass none
of this element and still meet the claim, Appellants could have chosen to
recite these elements as optional. Instead, the claim requires them to be
present in “an amount.” We interpret “an amount” to be some amount
greater than zero, but not greater than the amount stated according to the
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claim language. None of the core compositions disclosed in Nagarajan
includes the recited elements P and S. As such, we agree with Appellants
that this case is distinguishable from the facts of Titanium Metals, 778 F.2d
775. Br. 8. In Titanium Metals, the claimed composition was found to be
obvious in view of the prior art composition containing the same elements
with nearly overlapping ranges. 778 F.2d at 783. In the present case, the
compositions disclosed in Nagarajan do not have the same elements as the
claimed composition, and thus the Examiner improperly relied on Titanium
Metals.
For this reason, we reverse the Examiner’s rejection of claim 17.

Rejection 2: Claims 1-3 and 20 as unpatentable over Duttera and
Drossman
Appellants argue all the claims subject to this rejection as a group.
App. Br. 12-13. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellants argue that the gas metal arc welding metal-core electrodes
disclosed in Duttera do not render obvious the weld wire of claim 1 because
the prior art electrodes have a combined percentage of elements Mo and Cr
of 0.84%, whereas claim 1 calls for the total percentage of the alloying
element not to exceed 0.8%. Br. 12.
The difference between the disclosed total percentage of alloying
elements and the claimed range is 0.04%. The Examiner determined that
this prior art composition closely approximates the claimed composition and
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thus one of ordinary skill would have considered the claimed composition to
have been obvious. Ans. 6 (citing Titanium Metals). A prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties. Titanium Metals v. Banner, 778
F.2d at 783. By citing Titanium Metals, the Examiner implicitly found that
one skilled in the art would have expected a core composition having a
combined percentage of Mo and Cr of 0.84% and a core composition having
a combined percentage of Mo and Cr of 0.80% to have the same properties.
We find the Examiner to have presented a prima facie case of obviousness of
the claimed range of alloying elements.
In particular, the claimed range is from “about 0.4%wt to about
0.8%wt.” The Specification describes that “[u]sually the weight percent of
the alloying combination did not exceed 1%, and in most cases the weight
percent of the alloying combination was within the range from about 0.4 to
about 0.8%.” Spec., para. [0028]. When interpreting the term “about” in a
patent claim, it is appropriate to consider how the term is used in the patent
specification, the prosecution history, and other claims. Ortho-McNeil
Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326 (Fed. Cir.
2007) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217
(Fed. Cir. 1995)). As stated by the Federal Circuit, “the word ‘about’ does
not have a universal meaning in patent claims,” and its “meaning depends on
the technological facts of the particular case.” Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008) (quoting Pall, 66 F.3d
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at 1217). In light of the description in the Specification that alloying
combinations of 1% were suitable, we understand the term “about 0.8%wt”
to have a scope that renders it reasonable for the Examiner to find that one
skilled in the art would have expected a core composition having a
combined percentage of Mo and Cr of 0.84% and a core composition having
a combined percentage of Mo and Cr of 0.80% to have the same properties.
Appellants’ only argument in rebuttal is to note that the percentages do not
overlap. This is not sufficient to persuade us of error in the Examiner’s
rejection.
Appellants also argue that “[n]ot a single composition in [Duttera]
actually contains the elemental-percentage range specified by the Examiner
[on page 3 of the Office Action.]” Br. 12. On page 3 of the Office Action
from which this appeal was taken, the Examiner made findings as to the
compositions of Cr, Mo, C, Mn, Si and Ni disclosed in Duttera. Final Office
Action 3. These findings, as they pertain to the composition of elements C,
Mn, Si, and Ni are not necessary for the rejection of claim 1, which either
does not call for these elements at all or does not specify any particular
amount of these elements.3 As to the Examiner’s findings of the amounts of
Cr and Mo disclosed in Duttera, we have addressed those above.

3 Claim 1 calls for the core composition to include a “low carbon steel
powder.” Appellants have not argued that Duttera’s gas shielded “fluxless”
electrodes disclosed in Table I and the non-fluxed core gas-metal arc
welding electrode disclosed in Table II fail to include a low carbon steel
powder.
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Appellants did not rebut the findings made by the Examiner as to the
disclosure of Drossman or the proposed modification of Duttera with
Drossman. Br. 13 (arguing only that “[t]he Drossman patent does not supply
the disclosure missing from the Duterra patent.”). As such, we affirm the
Examiner’s rejection of claims 1-3 and 20 as unpatentable over Duttera and
Drossman.

Rejection 3: Claims 12-14 and 16 as unpatentable over Duttera and
Nagarajan
Appellants argue all the claims subject to this rejection as a group.
Br. 13. We select claim 12 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellants argue only that “[a]s asserted by all of the above-presented
arguments, neither Nagarajan nor Duttera (and therefore, neither the
combination of Nagarajan and Duttera) teach the composition (or a close
approximation or an obvious variation) claimed in amended Claim 12 and its
dependent Claims.” Br. 13. As noted supra, claim 12 is directed to a
method of manufacturing a gas metal arc weld wire, where the wire is
similar in pertinent respects to the wire of claim 1.4 The Examiner relied on
the core composition disclosed in Duttera in the determination of
obviousness. Ans. 7. For the reasons provided above in the discussion of

4 In particular, claim 12, as in claim 1, calls for the core composition to
include a low carbon steel powder alloyed with an alloying element where
the total weight percentage of the alloying element ranges from about
0.4%wt to about 0.8%wt.
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the obviousness of the subject matter of claim 1 as it relates to the disclosure
of Duttera, we find Appellants’ argument that Duttera does not teach a close
approximation of the core composition called for in claim 12 to be
unavailing. As such, we affirm the Examiner’s rejection of claims 12-14
and 16 as unpatentable over Duttera and Nagarajan.

Rejections 4 through 7
Appellants present no additional arguments for the claims subject to
grounds of rejection 4 through 7 (i.e., claims 5, 6, 16, and 19) apart from the
arguments raised for independent claims 1 and 12. Br. 13-15 (relying on the
dependency of these claims from independent claims 1 or 12). Having
found Appellants’ arguments as to the patentability of claims 1 and 12
unpersuasive, we affirm the rejections of claims 5, 6, 16, and 19 based on
grounds of rejection 4 through 7.

Rejection 8: Claims 1-3, 5, 6, 12-14, 16, and 20 as unpatentable over
Nagarajan, Kobe Steel, and Drossman
Appellants argue all the claims subject to this rejection as a group.
Br. 15-17. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Independent claim 1 recites that “a fill percentage
of the metal core of the gas metal arc weld wire is higher than approximately
12% wt.” The Examiner relies on the finding that Nagarajan “teaches a fill
content of 0.001 to 12.0%” as the basis for determining that the claimed fill
percentage of greater than approximately 12% wt would have been obvious
to one of ordinary skill in the art. Ans. 15, 18.
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We agree with the Examiner that the range of the fill percentage
disclosed in Nagarajan overlaps, the claimed range of “greater than
approximately 12% wt.” We find that one of ordinary skill in the art would
understand “greater than approximately 12% wt” to encompass 12% wt
when read in light of the Specification. See, e.g., Spec., para. [0010]
(describing that the present invention has a file percentage of “no less than
approximately 12%” and describing that the fill percentage “is selected from
the range of about 12% to about 30%.”); see also id. at paras. [0013], [0026].
We disagree with Appellants’ argument (Br. 9-10) that “approximately”
must be interpreted to mean exactly 12%. Appellants’ own proffered
dictionary definition defines “approximate” to mean “nearly correct or
exact.” Id. In light of the Specification and the ordinary meaning of
“approximate” we interpret “greater than approximately 12% wt” to include
12% wt. Thus, the prior art fill percentage range overlaps with the claimed
fill percentage range. This overlap establishes a prima facie case of
obviousness. Peterson, 315 F.3d at 1329; see also In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (concluding that a claimed invention was
rendered obvious by a prior art reference whose disclosed range (about 1-
5%” carbon monoxide) abutted the claimed range (“more than 5% to about
25%” carbon monoxide)).
Appellants have not argued or pointed to evidence tending to show
that the claimed range is critical or achieves unexpected results relative to
the prior art range. Further, Appellants’ argument (Br. 10) that Nagarajan
teaches away from metal core wires having a high fill percentage is not
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persuasive when it is the case that Nagarajan actually teaches a range that
overlaps the claimed range.
We have considered Appellants’ other arguments but they do not
persuade us of error. For example, Appellants argue that the only two
disclosed compositions in Nagarajan that refer to low carbon metal core
wires do not mention the content of C in the core composition and do not
disclose using low carbon steel powder for the powdered composition of the
metal core. Br. 15. Appellants fail to address the core composition
disclosed in column 5, lines 30 through 40 of Nagarajan (Embodiment 1)
that discloses a core composition including carbon in a range of 0.005 –
0.030%. Appellants have not persuasively explained why this core
composition would not be considered a low carbon metal core wire.5
Further, the Examiner relies on Kobe Steel to modify the core composition
of Nagarajan to use a low carbon steel powder. As such, Appellants’
argument that Nagarajan does not disclose low carbon steel powder is not
persuasive of error in the Examiner’s rejection. Finally, Appellants argue
that neither Kobe Steel nor Drossman cures the deficiencies in Nagarajan.
Finding no such deficiencies in Nagarajan, we affirm the rejection of claims
1-3, 5, 6, 12-14, 16, and 20 as unpatentable over Nagarajan, Kobe Steel, and
Drossman.

5 This core composition also discloses use of the claimed alloying elements
Cr and Mo.
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SUMMARY
We reverse ground of rejection 1. We affirm grounds of rejection 2
through 8.
DECISION
We REVERSE the decision of the Examiner to reject claim 17. We
AFFIRM the decision of the Examiner to reject claims 1-3, 5, 6, 12-14, 16,
19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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