Ex Parte Goller et al

Patent Trial and Appeal Board

Sep 21, 2016

12631055 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/631,055 12/04/2009
22928 7590 09/23/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Martin Herbert Goller
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.
SP09-388 1994
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN HERBERT GOLLER and
DAVID MYRON LINEMAN
Appeal2014-008323
Application 12/631,055 1
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision finally rejecting claims 1-22. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Coming Incorporated.
Br. 2.
2 Our decision refers to the Specification (Spec.) filed December 4, 2009,
Appellants' Appeal Brief (Br.) filed January 20, 2014, and the Examiner's
Answer (Ans.) mailed May 22, 2014.
Appeal2014-008323
Application 12/631,055
STATEMENT OF THE CASE
The invention relates to oxide dispersion strengthened (ODS)
platinum or platinum alloy weld structures and methods for forming these
structures. Spec. if 1. Claim 1, reproduced below from the Claims
Appendix to Appellants' Brief, is illustrative of the subject matter on appeal.
The limitation at issue is italicized.
1. A platinum welded structure comprising:
a first oxide dispersion strengthened platinum or
platinum alloy portion;
a second oxide dispersion strengthened platinum or
platinum alloy portion;
wherein the first portion is welded to the second portion
with a joint consisting of a fusion weld joint, wherein the fusion
weld joint includes a platinum or platinum alloy weld bead,
wherein the weld bead further includes at least one member
selected from the group consisting of Zr, Zr02 and rhodium at a
level greater than the first and second portions.
Claim 12, the other independent claim on appeal, recites a method of making
the platinum welded structure.
Rejections
The Examiner maintains the following grounds of rejection:
A. Claims 1and12 under 35 U.S.C. § 102(b) as anticipated by, or
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over,
Witte;3 and
B. Claims 2-11 and 13-22 under 35 U.S.C. § 103(a) as
unpatentable over Witte in view of Shoji4 and Braun. 5
3 Witte et al., US 2006/0138094 Al, published June 29, 2006 ("Witte").
4 Shoji et al., US 2009/0047170 Al, published February 19, 2009 ("Shoji").
5 Braun et al., US 6,129,997, issued Oct. 10, 2000 ("Braun").
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ANALYSIS
The dispositive issue before us on appeal is whether the Examiner
reversibly erred in finding Witte teaches a platinum welded structure having
first and second ODS platinum or platinum alloy portions welded together to
form a joint consisting of a fusion weld joint. For the reasons given in the
Answer, we answer this question in the negative and sustain the Examiner's
rejections.
Appellants do not separately argue the claims, but instead argue
claims 1 and 12 together only. Therefore, we select claim 1 to decide the
issue on appeal. The remaining claims stand or fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(iv)(2013).
The Examiner finds Witte discloses a platinum welded structure as
recited in claim 1 comprising, inter alia, a joint where the components are
fusion welded together such that the 'joint would be considered to be a
fusion weld joint.'; Ans. 3. In particular, the Examiner finds Witte teaches
two possible welding methods including fusion welding and pressure
welding, wherein Witte specifically teaches using the fusion welding method
of tungsten-inert-gas (TIG) welding. Ans. 3 and 7-8. The Examiner also
finds Witte teaches that it was known in the art to use non-modified fusion
welding to join ODS alloys. Ans. 9.
Appellants contend that "Witte does not teach a structure or a method
of forming a joint consisting of a fusion weld joint." Br. 4. Appellants
assert that Witte's weld is a modified fusion weld joint, formed by a
modified method in which the two components to be welded together are not
completely melted, spanning only about 15-25% of the sheet thickness. Id.
at 4--5. Appellants argue that one of ordinary skill in the art would
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understand that a weld spanning only 15-25% of the sheet thickness would
be an insufficient weld for any practical purposes. Id. at 5. In support of
this argument, Appellants note that Witte teaches modifying the fusion weld
by mechanically recompacting via hammering, thereby creating a "modified
fusion weld joint consist[ing] of two different joints: a fusion weld joint and
a pressure weld joint." Id. Appellants also direct our attention to the Goller
Declaration, 6 wherein the declarant states that a partially melted seam
spanning only 15-25% does not provide motivation to develop a weldment
consisting only of a fusion weld. Id. at 6-7. As such, Appellants contend
that Witte fails to "teach or suggest a joint consisting only of a fusion weld
joint." Id. at 5.
Further, in response to the Examiner's position that a modified fusion
weld joint is still a fusion weldjoint (Ans. 6), Appellants urge that the
claims exclude the modified combination of a fusion weld and a pressure
weld as described in Witte. Br. 6. Because Witte; s modification is to
incorporate a pressure weld for the purpose of completing and improving a
partial fusion weld, Appellants argue that it is clear Witte fails to teach or
suggest a joint consisting only of a fusion weld. Id.
The Examiner responds that the Goller Declaration refers to Witte' s
process as a "modified fusion weld," which the Examiner finds is still a
fusion weld. Ans. 6. In this regard, the Examiner determines that the use of
the word, "modified," does not diminish the fact that the welding method is
a fusion-welding method, nor that the resulting joint is a fusion-welded joint.
Id. The Examiner also notes that the Specification teaches that the Zr02
6 Declaration of Martin H. Goller, dated August 2, 2013.
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level in the joint may be increased by initially increasing the Zr level in the
weld joint, followed by treating the joint to convert the Zr to Zr02 as by
oxidation annealing. Id. at 8 (citing Spec. i-f 5). The Examiner finds that
such a treatment "modifies" the weldjoint, such that Appellants' weld joint
is in fact a modified fusion weld joint. Id.
We note that Appellants do not contest the Examiner's finding that
Witte teaches that it was known in the art to use unmodified fusion weld
joints to join two ODS alloys. No Reply Brief has been filed, nor does the
Appeal Brief address this finding. The Examiner's finding is supported by a
preponderance of the evidence. Although Witte identifies a problem with
regard to such fusion weld joints of ODS alloys---coagulation and floating of
a large part of the dispersoids in the melt-such does not negate the fact that
unmodified ODS fusion weld joints were known in the prior art to Witte.
Witte i-f 2 ("oxide-dispersion-strengthened platinum alloys are increasingly
used''; and "metal sheets or sheet-metal elements are joined together to give
the required geometry ... by fusion welding"). Therefore, we cannot say
that Appellants have identified reversible error in the Examiner's rejection
as this finding supports the Examiner's anticipation finding and obviousness
conclusion.
Notwithstanding Witte's disclosure of unmodified fusion weld joints
of ODS alloys, it is undisputed that Witte further teaches a modified fusion
weld joint. Appellants argue that claim 1 's recitation of "a joint consisting
of a fusion weld joint" excludes Witte' s modified fusion weld joint, in that
this recitation means that the joint is only formed by fusion welding without
any other welding technique. The Examiner's position is that this limitation
means that the joint must be at least in part a fusion weld joint, although it
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may be modified with other techniques. Thus, in order to decide the
dispositive issue, it is necessary to construe the language in question in claim
1, i.e., what 'joint consisting of a fusion weld joint" means.
It is axiomatic that during examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Although claims are to be interpreted in light of the specification, limitations
from the specification are not to be read into the claims. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). An applicant seeking a
narrower construction must either show why the broader construction is
unreasonable or amend the claim to expressly state the scope intended. In re
Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997).
The recitation uses the transitional terms, "consisting of' to recite
what the joint is, e.g., the joint consisting of a fusion weld joint.
"'[C]onsisting of" is a closed transitional phrase that is "understood to
exclude any elements, steps, or ingredients not specified in the claim." AFG
Indus., Inc. v. Cardinal JG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001).
Although Appellants do not direct our attention to any specific disclosure in
their Specification in support of their interpretation, we note Appellants
disclose that any standard welding method such as TIG welding may be
used, and special welding methods such as hammer welding are not
required. Spec. i-f 45. Appellants disclose use of a torch and welding rod to
torch weld the components together with the formation of a weld bead. Id.
However, as the Examiner finds, Appellants do permit modification of the
weld joint, as by oxidative annealing. Spec. i-fi-1 4, 6, 43.
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Nonetheless, we note claim 1 recites a "platinum welded structure."
Thus, this claim recites an article of manufacture which is defined by its
structure. Appellants' disclose that the joint may be produced using
standard welding methods without special welding methods such as hammer
welding. Thus, Appellants' position is that "a joint consisting of a fusion
weld joint," is a joint formed only by a fusion welding process. Given that
claim 1 is directed to a product, Appellants' recitation, "a joint consisting of
a fusion weld joint," is a product-by-process limitation.
"The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985); see also In re Pilkington, 411 F.2d
1345, 1348 (CCPA 1969) ("[The] patentability ofa claim to a product does
not rest merely on a difference in the method by which that product is made.
Rather, it is the product itself which must be new and unobvious. ")
Here, Appellants have not shown, either by persuasive technical
reasoning or evidence, that Witte's modified fusion weld joint is structurally
different from a joint formed only by fusion welding. The Goller
Declaration does not state that a joint produced only by fusion welding is
structurally distinct from Witte's modified fusion weld joint. Accordingly,
we cannot say that Appellants have identified a reversible error in the
Examiner's finding that Witte anticipates, or in the alternative, renders
obvious, the invention of claim 1.
Appellants next argue that Witte teaches away from the use of a joint
consisting of a fusion weld joint. Br. 8. In particular, Appellants assert that
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Witte distinguishes from fusion welding by stating that the combined fusion
and pressure welding reduced energy input. Id. Further, Appellants assert
that Witte teaches the undesirability of standard welding methods such as
fusion welding, including joints with weak points and losses in strength. Id.
Appellants also contend that the Goller Declaration confirms that one would
not have been motivated to employ only a fusion welding process in creating
a strengthened weldment from ODS alloy. Id. Appellants urge that Witte
teaches use of ODS alloys employing zirconium produces inadequate
results, e.g., inadequate mechanical properties, due to separation of
dispersoids and an increase in grain size. Id.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Further, references in a combination may be said to teach
away where their combined teachings would produce a "seemingly
inoperative device." In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969).
Teaching an alternative or equivalent method, however, does not teach away
from the use of a claimed method. In re Dunn, 349 F.2d 433, 438 (CCPA
1965).
Initially, we note that an argument that a reference teaches away from
the claimed invention is not relevant in a§ 102 anticipation rejection.
It is well settled that a claim is anticipated if each and every
limitation is found either expressly or inherently in a single
prior art reference. A reference is no less anticipatory if, after
disclosing the invention, the reference then disparages it. Thus,
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the question whether a reference 'teaches away' from the
invention is inapplicable to an anticipation analysis.
Celeritas Techs. Ltd. v. Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir.
1998) (citation omitted). Thus, Appellants' teaching away argument lacks
persuasive merit with regard to the Examiner's § 102 anticipation finding by
Witte.
We further note that Appellants' teaching away argument does not
apply to the Examiner's application of Witte' s modified fusion weld joint
because this joint is Witte's invention. As to the Examiner's§ 103
obviousness determination over Witte based on Witte's discussion of the
prior art unmodified fusion weld joint, we note that although Witte discusses
the disadvantages of the prior art use of only a fusion welding process to
form the weldment, Witte nonetheless discloses that such unmodified fusion
weld joints were known. Ans. 10. In this regard, the Examiner finds that
although Witte discusses potential problems arising from fusion welding
ODS platinum alloys, Witte nevertheless discloses it was known to fusion
weld two ODS platinum alloys. Id. Witte's discussion of the disadvantages
of prior fusion welding of ODS alloys does not establish that such
weldments were unacceptable, but that these weldments lose the
strengthening benefits of the oxide dispersoids in the welded seam, resulting
in joints with mechanical properties similar to standard alloys. Witte i-f 2.
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
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Gurley, 27 F.3d at 553. Thus, Witte's disclosure of the known unmodified
fusion weld joints as somewhat inferior does not teach away from such
unmodified fusion weld joints.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1 and 12 under
35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C.
§ 103(a) as unpatentable over Witte, and rejecting claims 2-11 and 13-22
over Witte, Shoji, and Braun 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).
AFFIRMED
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