Ex Parte Karogal

Patent Trial and Appeal Board

Apr 25, 2013

11130739 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte NIKHIL KAROGAL
____________________

Appeal 2011-001622
Application 11/130,739
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
BEVERLY M. BUNTING, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001622
Application 11/130,739
2
STATEMENT OF CASE
Nikhil Karogal (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 1-32 and 37-40. The independent claims are claims 1
and 40. Claims 33-36 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
THE INVENTION
Appellant’s invention is directed to “a specific flux cored gas shielded
arc welding electrode for depositing a weld metal with low diffusible
hydrogen and high tensile strength.”1 Spec. 1, ll. 6-7. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A flux cored, gas shielded arc welding electrode for
depositing a weld metal with low diffusible hydrogen said
electrode comprising:
a nickel free steel sheath
said sheath having a carbon content of less than 0.05 weight
percent of the sheath; and
a core in the range of 13-17 weight percent of the electrode,
said core including
primary particles and
secondary alloy particles, and
said primary particles including iron, manganese,
magnesium and nickel,
said secondary alloy particles including a silicon alloy and a
boron alloy in a rutile based slag system,

1 In electric arc welding the flux in the electrode produces a protective
bubble of carbon dioxide around the joint as it burns and leaves a protective
layer of slag over the weld. It also stabilizes the electric arc. See
DICTIONARY OF ENGINEERING TERMS, Butterworth-Heinemann © 2001,
http://www.credoreference.com/entry/bhidet/flux_in_mechanical_engineerin
g_and_manufacture (last visited April 15, 2013).

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a weight percent of said primary particles in said core being
greater than a weight percent of said secondary alloy particles
in said core,
said nickel having a controlled amount in the range of 1.0-
2.0 weight percent of the electrode,
said weld having
a tensile strength of greater than 90 Kpsi,
a yield strength of greater than 80 Kpsi, and
a diffusible hydrogen level of less than 7.0 ml /100 g.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee
Duttera
Munz
Chai
Crockett
US 3,405,250
US 3,643,061
US 4,723,061
US 5,118,919
US 5,365,036
Oct. 8, 1968
Feb. 15, 1972
Feb. 2, 1988
Jun. 2, 1992
Nov. 15, 1994

REJECTIONS
The Examiner made the following rejections:
Claims 1, 6, 8, 10, 12-16 and 39 stand rejected under 35 U.S.C. §112,
second paragraph, as being indefinite. Ans. 3.
Claims 26-32 stand rejected under 35 U.S.C. § 112, second paragraph,
as lacking antecedent basis. Ans. 4.
Claims 1-25 and 37-40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Duttera, Lee, Crockett and Chai. Ans. 4.
Claim 26-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duttera, Lee, Crockett, Chai and Munz. Ans. 7.

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ANALYSIS
Claims 1, 6, 8, 10, 12-16 and 39 as indefinite2and claims 26-32 as lacking
antecedent basis.
The Examiner found claims 1, 6, 8, 10, 12-16 and 39 to be indefinite
since claim 1 does not reference the weight percent of the primary and
secondary particles relative to either the core, or the electrode as a whole.3
Ans. 3.
Appellant argues that the weight percent of the primary and secondary
particles is recited in the claims as being “in said core” and that this
interpretation of claim 1 relates the weight percent to the core, and is
consistent with subsequent dependent claims which specifically recite the
specific primary and secondary particles “by weight percent of the core.”
App. Br. 17.
To be clear, the claim limitation at issue recites “a weight percent of
said primary particles in said core being greater than a weight percent of
said secondary alloy particles in said core.” Clms. Appx. (Emphasis
added). The Examiner’s position is that the claim could be interpreted as
stating that the primary and secondary particles merely reside in the core,

2 Should prosecution be re-opened following this Appeal, we note the open-
ended nature of independent claims 1 and 37 reciting, “a tensile strength of
greater than 90 Kpsi, a yield strength of greater than 80 Kpsi” may raise
issues of enablement under 35 U.S.C. 112, first paragraph, because they are
unbounded. See MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687
F.3d 1377, 1381 (Fed. Cir. 2012) (“a patentee chooses broad claim language
at the peril of losing any claim that cannot be enabled across its full scope of
coverage.”) (emphasis added).
3 A welding electrode for gas-shielded arc welding as described in
Appellant’s Specification includes a flux core of primary and secondary
metal alloy particles, surrounded by a metal (nickel free) metal sheath or
coating. See Spec. 2.
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rather than the weight percentage being referenced to the core. Ans. 8.
However, giving the claim term “in the core” its customary and ordinary
meaning, whether or not the claim relates the weight percentages to the core,
or the electrode as a whole, the claim clearly requires the weight percentage
of the primary particles to be greater than the secondary particles, a
relationship which is not indefinite. Accordingly, we do not sustain the
indefiniteness rejection of claims 1, 6, 8, 10, 12-16 and 39.
With respect to the antecedent basis issue raised by the Examiner, we
are unaware of any rule formal, or informal, which requires that a limitation
recited in a subsequent dependent claim be introduced in the previous
independent claim. See Ans. 9. Despite other core components inter alia,
manganese and rutile, being previously introduced in the base claim, the
introduction of “fluoride” and “titanate” as additional limitations and
components of the flux core in the subsequent dependent claim does not
raise an antecedent basis issue. Thus, we do not sustain the rejection of
claims 26-32 for lack of antecedent basis.
Claims 1-25 and 37-40 as unpatentable over Duttera, Lee, Crockett and
Chai.
The Examiner found that Duttera discloses most of the limitations of
the welding electrode as recited in claim 1 including among other things the
core being 15-60 weight percent of the electrode, the carbon content of the
sheath being less than 0.05 weight percent of the sheath, and the core
comprising granular metal alloy particles including, iron, manganese,
magnesium, nickel and silicon alloy. Ans. 4. The Examiner also found “that
it is well known in the welding arts that low carbon mild steel sheaths
typically do not contain nickel.” Ans. 5. The Examiner turned to Lee for
the disclosure of the tensile and yield strength of the resulting weld being
Appeal 2011-001622
Application 11/130,739
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greater than 90 Kpsi and 80 Kpsi respectively, as also recited in claim 1, and
reasoned that one of skill in the art would “modify Duttera et al. to measure
the yield and ultimate strength as taught by Lee because this is a standard
characterization of the electrode and helps to form high strength weld
joints.” Ans. 5. The Examiner further found that Crockett teaches a core
including a boron alloy not disclosed in Duttera, and that Chai discloses a
weld metal with less than 2.0 ppm diffusible hydrogen which value is
equivalent to ml/100g as recited in claim 1. Ans 5-6.
Independent claims 1 and 37, and dependent claims 2-4, 17-25 and
40.
Appellants argue claims 1 and 37, and respective dependent claims 2-
4, 17-25 and 40 as a group, where claims 1 and 37 are the only independent
claims. See App. Br. 17-26. Appellants offer no separate arguments for the
patentability of claims 2-4, 17-25 and 40 and rely, instead, on their
arguments asserted in support of claims 1 and 37. We initially select claim 1
as representative of the group where claims 2-4, 17-25 and 40 stand or fall
with claims 1 and 37 respectively. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
Independent claims 1 and 37 include the limitation of “a nickel free
sheath.” Appellant argues that the Examiner’s assertion that low carbon
mild steel sheaths typically do not contain nickel, is in error. App. Br. 18.
Appellant contends that the prior art cited by the Examiner not only fails to
disclose such a negative limitation, but also that Duttera’s sheath actually
contains nickel (Ni). App. Br. 17-18. Appellant points out that Example 2
(see Duttera col. 5, ll. 30-44) discloses “12.5% Ni in electrode core while
final weld contains 12.99% Ni showing at least .49% Ni in the sheath.”
App. Br. 18. In other words, Appellant asserts that because the final weld
metal contains a higher weight percent of Ni as compared to the electrode
Appeal 2011-001622
Application 11/130,739
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core prior to the welding operation, the sheath must contain the additional
Ni percentage manifesting itself in the weld metal.
To support the finding that low-carbon steel is generally known in the
industry to not contain nickel the Examiner cites to the ASM (American
Society for Metals) Metals Handbook®, which discusses low-carbon steel
compositions and discloses besides carbon, various components such as
silicone, manganese phosphorus and sulfur in low-carbon steels, but not
nickel. Ans. 9. Our review of the ASM Metals Handbook®, Vol. 1, Low-
Carbon Sheet and Strip (Ninth Edition), also fails to reveal nickel as one of
the included elements in low-carbon sheet and strip steel. For its part,
Duttera discloses only that low-carbon mild steel strip is used as the sheath
and also provides no indication that the low-carbon steel contemplated by
Duttera contains a nickel component. See Duttera col. 5, ll. 6-7. With
respect to Appellant’s position that the additional weld metal nickel
component must come from the sheath, the Examiner pointed out that it is
just as likely that the additional nickel is imparted to the weld metal from the
underlying work piece or that the difference between the core nickel and
final weld metal nickel is essentially within a reasonable statistical error.
Ans. 12.
The Examiner has provided a technical reason supported by a well-
known industry standards publication and the Appellant has provided no
evidence to refute the Examiner’s finding that, “it is well known in the
metallurgical industry that high alloy and stainless steels may contain nickel,
however low carbon mild steels typically do not contain nickel.” Id.
Appellant’s position as to the apparent increase in nickel in the weld metal is
merely conjecture and such attorney argument provides no technical
reasoning or evidence which apprises us of error in the Examiner’s findings.
Appeal 2011-001622
Application 11/130,739
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Accordingly, we sustain the Examiner’s rejection of claims 1 and 37 as
unpatentable over Duttera, Lee, Crockett and Chai, and claims 2-4, 17-25
and 40 fall therewith.
Claims 5-16, 26-32, 38 and 39.
Appellant next argues that the certain weight percentages recited in
certain claims depending from claims 1 and 37 are not disclosed by Duttera.
App. Br. 19. Specifically, Appellant alleges that no recitation of titanium
dioxide (TiO2) is found in Duttera (claims 5, 7, 9, 26, 27, 29-32, and 38) and
the Examiner has not shown how the value of silicon in the amount of 1-4%
by weight of the core was found (claims 6, 8, 10, 12-16 and 39), nor for
manganese metal and magnesium metal (claims 5, 7, 9, 11, 26-31 and 38).
Id.4 The Examiner explained that based on the conversion factors: 100/15
=6.66667 and 100/60=1.66667 (where Duttera discloses that the core weight
is between 15-60% of the electrode weight) Duttera discloses the ranges of
core components encompassing, or closely approximating, most all of the
claimed component percentages. Ans. 13. The Examiner set out at page 18
of the Answer the conversions from Duttera in a table, reproduced below,
for each of the claimed components:

4 Appellant does not specifically identify the claims encompassed by these
issues. We select claim 5 as representative of claims 7, 9, 11, and 38, claim
26 as representative of claims 27-32, and claim 6 as representative of claims
8, 10,12-16 and 39. Appellant presents further arguments for claims 26-32,
which we address separately below.
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Appeal 2011-001622
Application 11/130,739
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electrode weight: (6.67 (core 15% of electrode weight) x 7) = 46.9% slag
former (rutile) core weight. See Duttera col. 1, ll. 49-53. This is of course
within the claimed range of 40-60% of core weight for rutile as recited in
Appellant’s dependent claims.
The Examiner points out that the ranges of the claimed components
are either encompassed by, overlap, or are very close to Duttera’s disclosed
ranges (with the exception of boron which the Examiner found in Crockett)
and therefore, such close approximations and overlap would be considered
obvious to one of ordinary skill in the art. Ans. 6. Our reviewing court has
made clear that “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.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)). The
Examiner has provided a technical reason with rational underpinnings
indicating that such close approximations and overlap would have the same
properties as the claimed invention. Appellant has not provided any
persuasive argument, evidence, or indication of secondary considerations
with respect to the specifically claimed percentages and ranges that would
apprise us of error in the Examiner’s findings.
Appellant also argues that the Examiner has used an improper
standard giving the references their broadest reasonable interpretation.
Reply Br. 5. We do not see the Examiner as having applied the wrong
standard. While we give claims their broadest reasonable interpretation, the
Examiner here was not interpreting the claims, but pointing out that the
broadest ranges disclosed by Duttera were used to formulate the obviousness
rejection. “The examiner respectfully notes that the broadest ranges for the
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composition were taken from Duttera et al.” Ans. 12. While perhaps the
choice of “broadest interpretation” to explain the prior art ranges is
inarticulate given the normal use of such language being in regards to claim
construction, the specific language used by the Examiner was “broadest
interpretation,” not “broadest reasonable interpretation.” It is clear to us, in
the context of the Examiner’s analysis and reasoning that such language was
intended to explain the approximation, or overlap, of Duttera’s material
composition with that of the claimed core. See Ans. 15, 16 and 19. Our
understanding is that the Examiner was not applying any type of claim
construction or claim interpretation in this regard and therefore did not apply
the wrong standard.
Appellant points out that the Examiner has used the component ranges
from various and different embodiments and examples disclosed in Duttera,
and argues in this regard that Lee teaches that even minor changes in the
relative chemical components of welding flux systems would “yield
unpredictable results and thus one of ordinary skills would not alter or
combine the references as suggested by the Examiner.” Reply Br. 5, and see
Lee col. 1, ll. 55-61. Based on this, Appellant asserts that “[t]herefore, a
broad interpretation of Duttera would not support combining components in
amounts by picking and choosing the amounts from various examples.”
Reply Br. 6. We acknowledge that Lee explains that altering the
components of a flux system can lead to different welding electrode
characteristics and that Appellant has provided certain examples of alleged
error (titanium dioxide, silicone) by the Examiner as to the determination of
the percentages from Duttera. However, as discussed supra, Duttera
discloses titanium dioxide, i.e. rutile, as a slag former, within the claimed
percentages. With respect to Appellant’s claimed silicon range of 4-8% of
Appeal 2011-001622
Application 11/130,739
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core weight, besides the issue of whether it is appropriate to add FeSi and
CaSi (Ans. 13) we note that Duttera discloses silicone in the range of .3 to
1.3% of electrode weight. Duttera col. 3, l. 59. Using the Examiner’s
conversion factors (6.67 where core is 15%, and 1.67 for 60% of electrode
weight) x 1.3, Duttera discloses an overlapping range of silicone being 2.17
to 8.67 % core weight. It is well settled that “A reference may be read for all
that it teaches, including uses beyond its primary purpose.” In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418-421.
Accordingly, the noted discrepency in the Examiner’s analysis in this regard
does not apprise us of error in the Examiner’s overall conclusion and
reasoning that silicone is shown by Duttera in approximately the same range
as recited in the claims.
Appellant also argues that the manipulation of the ranges in Duttera is
based on improper hindsight and that the Examiner is improperly picking
and choosing from multiple patents. Reply Br. 7. The Examiner explained
that “any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning” and pointed out that the cited ranges were
not taken from Appellant’s disclosure, but from Duttera, Lee, Crockett and
Chai. Ans. 16. The Examiner determined the ranges independent of the
pending claims, and then merely compared the ranges in Duttera to the
claimed ranges. This reasoning is applicable here. Thus, we find unavailing
Appellant’s contention that the Examiner has relied on impermissible
hindsight reconstruction. Given the ranges recited in Appellant’s claims, we
are not persuaded that combining the respective familiar elements and
approximate and overlapping ranges of chemical and material components
of the cited references in the manner proffered by the Examiner was
“uniquely challenging or difficult for one of ordinary skill in the art” (see
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Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Accordingly, these arguments do not apprise us of error in the Examiner’s
rejections of claims 5-16, 26-32, 38 and 39.

Claims 26-32 as unpatentable over Duttera, Lee, Crockett, Chai and Munz.
Dependent claims 26-32 each include the further limitation of .4 %
ferro boron by core weight. Appellant additionally argues that Munz does
not provide disclosure that cures the deficiencies of Duttera, Lee, Crocket
and Chai for claim 1. App. Br. 27, Reply Br. 7-8. The Examiner has cited
Munz solely for the disclosure of boron in the range of 0.0032-0.026 as
approximate to the claimed core weight and that boron can be added as an
element, ferro alloy, or an alloy. Ans. 19. As we sustain the rejection of
claim 1, this argument is not persuasive. Accordingly, we sustain the
rejection of claims 26-32 as unpatentable over Duttera, Lee, Crockett, Chai
and Munz.

DECISION
For the above reasons, the Examiner’s 35 U.S.C. § 112, second
paragraph, rejections of claims 1, 6, 8, 10, 12-16, and 39 as being indefinite,
and claims 26-32 for lack of antecedent basis are REVERSED.
The rejection of claims 1-25 and 37-40 under 35 U.S.C. § 103(a) as
being unpatentable over Duttera, Lee, Crockett and Chai is AFFIRMED.
The rejection of claims 26-32 under 35 U.S.C. § 103(a) as being
unpatentable over Duttera, Lee, Crockett, Chai and Munz is AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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