Ex Parte Gerth et al

Patent Trial and Appeal Board

Feb 3, 2015

12246050 (P.T.A.B. Feb. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GREGORY A. GERTH,
PATRICK T. SOLTIS, and LISA S. MCFADDEN
____________________

Appeal 2013-001449
Application 12/246,050
Technology Center 3700
____________________

Before JOHN C. KERINS, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Gregory A. Gerth et al. (Appellants) appeal under 35 U.S.C. § 134
from a rejection of claims 1, 3–11, and 13–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2013-001449
Application 12/246,050

2
THE INVENTION
Appellants’ invention is directed to a welding electrode and method
for manufacturing same. Claim 1, reproduced below, is illustrative:
1. A welding electrode comprising:

a sheath formed from a strip of work
hardenable metal having first and second edges,
the sheath having an initial cross-sectional area
and a second as-drawn cross-sectional area; and

a core received within the sheath,

wherein the second cross-sectional area is an
approximately 90% reduction of the initial cross-
sectional area.

REJECTIONS
The following rejections are on appeal:
(i) claims 1, 3, 4, 9, 10, 13, 14, and 19 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Matsuguchi (US 2005/0044687 A1,
published Mar. 3, 2005);
(ii) claim 11 is rejected under 35 U.S.C. § 102(b) as being anticipated,
or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over
Matsuguchi;
(iii) claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuguchi;
(iv) claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuguchi in view of Woods (US 3,534,390, issued Oct.
13, 1970); and
Appeal 2013-001449
Application 12/246,050

3
(v) claims 7, 8, 17, 18, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsuguchi in view of Hughes (US 6,674,047 B1,
issued Jan. 6, 2004) and Sadauskas (US 4,517,440, issued May 14, 1985).

OPINION
Claims 1, 3, 4, 9, 10, 13, 14, and 19--Anticipation--Matsuguchi
Appellants argue these claims as a group. Appeal Br. 12–15. We take
claim 1 as representative, and claims 3, 4, 9, 10, 13, 14, and 19 stand or fall
with claim 1.
Appellants initially argue that the Examiner’s findings with respect to
the reduction in cross-sectional area of the sheath are in error, and present
calculations showing that a reduction in the diameter of the sheath in
Matsuguchi from an initial diameter to a final diameter is between 68.4%
and 73.3%. Appeal Br. 13. Appellants maintain that these percentages fall
short of the claimed 90% reduction from initial to final. Id.
The Examiner points out, in response, that Appellants’ calculations
are directed to a reduction in diameter of the sheath, whereas claim 1 calls
for at least a 90% reduction in the cross-sectional area of the sheath. Ans.
4. The Examiner presents calculations using dimensional values taken from
Matsuguchi evidencing that the reduction in cross-sectional area in the
welding electrode therein, from the original cross-sectional area to a final
cross-sectional area, is from about 90–96%. Id. at 4–5. The Examiner thus
maintains that Matsuguchi meets the claim limitation calling for an
approximately 90% reduction in cross-sectional area. Id. at 5.
Appellants do not contest the Examiner’s calculations and finding in
their Reply Brief, but instead argue that Matsuguchi, in order to attain a 90%
Appeal 2013-001449
Application 12/246,050

4
reduction in cross-sectional area, requires the use of a lubricant in its wire
drawing process. Reply Br. 5–6. Appellants further advance the argument
that “the welding electrode of the present invention neither implicitly nor
explicitly requires a wire drawing lubricant in order to achieve ‘the second
cross-sectional area [that] is an approximately 90% reduction of the initial
cross-sectional’ of claim 1.” Id. at 6. Appellants maintain that Matsuguchi
does not anticipate claim 1 for that reason. Id.
Regardless as to what Appellants disclose relative to the presence or
absence of lubricant in their process, the scope of claim 1 does not preclude
the use of a lubricant in the wire drawing process used to achieve the
claimed 90% reduction in cross-section. Appellants’ argument is thus not
commensurate in scope with the claims, and does not apprise us of error in
the Examiner’s position that claim 1 is anticipated by Matsuguchi.
The rejection of claim 1 as being anticipated by Matsuguchi is
sustained. Claims 3, 4, 9, 10, 13, 14, and 19 fall with claim 1.
Claim 11--Anticipation/Obviousness--Matsuguchi
Appellants make no additional arguments for the patentability of
claim 11 apart from those made with respect to claim 1. The rejection of
claim 11 as being anticipated by, or rendered obvious by, Matsuguchi is
sustained.
Claims 5 and 15--Obviousness--Matsuguchi
Appellants make no additional arguments for the patentability of
claims 5 and 15 apart from those made with respect to claim 1. The
rejection of claims 5 and 15 as being rendered obvious by Matsuguchi is
sustained.

Appeal 2013-001449
Application 12/246,050

5
Claims 6 and 16--Obviousness--Matsuguchi/Woods
Appellants make no additional arguments for the patentability of
claims 6 and 16 apart from those made with respect to claim 1. The
rejection of claims 6 and 16 as being rendered obvious by Matsuguchi and
Woods is sustained.
Claims 7, 8, 17, 18, and 20--Obviousness--Matsuguchi/Hughes/Sadauskas
Appellants make no additional arguments for the patentability of
claims 7, 8, 17, 18, and 20 apart from those made with respect to claim 1.
The rejection of these claims as being rendered obvious by Matsuguchi,
Hughes, and Sadauskas is sustained.

DECISION
The rejection of claims 1, 3, 4, 9, 10, 13, 14, and 19 under 35 U.S.C.
§ 102(b) as being anticipated by Matsuguchi is AFFIRMED.
The rejection of claim 11 under 35 U.S.C. § 102(b) as being
anticipated, or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Matsuguchi, is AFFIRMED.
The rejection of claims 5 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Matsuguchi is AFFIRMED.
The rejection of claims 6 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Matsuguchi in view of Woods is AFFIRMED.
The rejection of claims 7, 8, 17, 18, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Matsuguchi in view of Hughes and Sadauskas is
AFFIRMED.

Appeal 2013-001449
Application 12/246,050

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

hh