Ex Parte Katiyar

Patent Trial and Appeal Board

Jun 17, 2013

11099267 (P.T.A.B. Jun. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAJEEV KATIYAR
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Appeal 2011-006375
Application 11/099,267
Technology Center 3700
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Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 3-16, and 42-63. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE the decision of the Examiner.
CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to the field of welding
and more particularly is directed to cored electrodes. Spec. 1, ll. 1-3.
Claims 1 and 52 are independent claims. Claim 1 is illustrative of the
subject matter on appeal, and recites:
1. A cored electrode having reduce [sic]
moisture pick-up properties and which forms a
weld bead with low diffusible hydrogen in mild
and low alloy steel comprising a metal sheath and
a fill composition, wherein said fill composition is
about 6-80 weight percent of said cored electrode,
said fill composition including titanium dioxide, a
slag forming agent and a moisture resistant
compound, said moisture resistant compound
comprising a sodium-silico-titanate compound,
wherein said sodium-silico-titanate compound is
formed of a combination of a titanium compound,
a potassium compound, a sodium compound and
colloidal silica, said moisture resistant compound
having an average particle size of 30-250 mesh,
said moisture resistant compound including over
50 weight percent titanium compound, said
moisture resistant compound having a weight ratio
of sodium compound to potassium compound of
about a 1.1-5:1, and said moisture resistant
compound including at least about 1 weight
percent colloidal silica, said colloidal silica having
an average particle size of less than about 40 nm.

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REFERENCES
The Examiner relied upon the following prior art references:

REJECTION
Appellant seeks review of the following rejections:
1. Claims 1 and 52 rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement;
2. Claims 1, 3-16, and 42-63 rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention; and
3. Claims 1, 3-16 and 42-63 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kotecki, Zvanut, Hill, and Takimoto.
ANALYSIS
Rejection 1 - 35 U.S.C. § 112, First Paragraph, Nonenabling Disclosure
The entire basis of the rejection of claims 1 and 52 under 35 U.S.C.
§ 112, first paragraph, is the Examiner’s finding that it is not known if the
“titanium dioxide percentage amounts” are with respect to “the total wire,
the fill, the moisture resistant conglomerate and so forth.” Ans. 3. Based on
this finding, the Examiner concluded that claim 1 contains subject matter
which was not described in the Specification in such a way as to enable one
skilled in the relevant technology to make and/or use the invention. Id.
Zvanut US 3,848,109 Nov. 12, 1974
Hill US 4,045,593 Aug. 30, 1977
Takimoto US 5,438,083 Aug. 1, 1995
Kotecki US 6,339,209 B1 Jan. 15, 2002
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The propriety of this rejection turns on whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification. This includes providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement1. In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993).
The relevant language of claims 1 and 52 is different, so we address
the rejection of each claim separately.
Claim 1
Regarding the rejection of claim 1, the Examiner questions whether
the “titanium dioxide percentage amounts” are with respect to “the total
wire, the fill, the moisture resistant conglomerate and so forth.” Ans. 3. We
note that claim 1 does not recite any “titanium dioxide percentage amounts.”
The only reference to titanium dioxide in claim 1 is with respect to the “fill
composition” (“said fill composition including [1] titanium dioxide, [2] a
slag forming agent and [3] a moisture resistant compound”). There is no
percentage amount of any of the three ingredients included in the “fill
composition.” Thus, it is unclear why the Examiner singled out and

1 See generally, MPEP § 2164.04, “Burden on the Examiner Under the
Enablement Requirement.”
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questioned the percentage amounts for only one of the three ingredients,
titanium dioxide.
The Examiner also questions whether the “titanium dioxide
percentage amounts,” which we have noted are not recited in the claim, refer
to “the total wire, the fill, the moisture resistant conglomerate and so forth.”
Ans. 3. However, neither the word “wire”; the phrase “total wire”’; nor the
phrase “moisture resistant conglomerate” appears in claim 12. The only
reference to titanium dioxide in claim 1 is clear and unambiguous and recites
that titanium dioxide is one of three ingredients in the “fill composition.”
Thus, it is uncertain what the Examiner finds not enabled.
The Examiner did not provide any explanation as to why the
Examiner believes that the scope of protection provided by claim 1 is not
adequately enabled by the description of the invention provided in the
Specification. The Examiner made no reference to what was deficient about
the Specification.
The basis of Appellant’s allegation of error is that the claim limitation
“said moisture resistant compound including over 50 weight percent
titanium compound” clearly provides enablement for an amount of the
titanium compound included in the moisture resistant compound.
Both the rejection and the Appellant’s response are difficult to
understand and reconcile. The rejection is based on titanium dioxide;

2 We recognize that the phrase “moisture resistant compound” does appear
in claim 1. We decline to speculate whether the Examiner intended to refer
to the “moisture resistant compound” rather than a “moisture resistant
conglomerate” (emphasis added), particularly because there is no reference
in claim 1 to titanium dioxide as a component of the claimed “moisture
resistant compound.”
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Appellant’s response refers to titanium compound3. The rejection is based
on a nonenabling disclosure; the Appellant’s response argues the claim
language and never mentions the disclosure.
Notwithstanding Appellant’s response, we conclude that the Examiner
has not met the burden of establishing a prima facie case in support of the
enablement rejection.
The Specification provides significant disclosure concerning the use
of titanium dioxide in the disclosed invention. The Specification states that
the flux system of the disclosed invention includes titanium dioxide, slag
forming agents and a moisture resistant compound. The titanium dioxide
content of the flux system, not including the titanium dioxide content in the
moisture resistant compound, is disclosed as generally at least about 2
weight percent of the flux system; typically about 5-40 weight percent of the
flux system, and more typically about 5-35 weight percent of the flux
system; but disclosing that other weight percentages can be used. Spec. 3, ll.
20-27.
The Specification also states that the moisture resistant compound is a
combination of at least four elements, namely titanium compound,
potassium compound, colloidal silica, and sodium compound. Id. at 4, ll. 7-
9. Claim 1 refers to this as a “sodium-silico-titanate compound.” The
moisture resistant compound is disclosed as formulated to include a majority
weight percent titanium dioxide. The titanium dioxide content of the
moisture resistant compound is disclosed as at least about 60 weight percent,
typically about 75-92 weight percent, and more typically about 80-88 weight

3 The Specification does not define or mention a “titanium compound.” The
first appearance of this phrase is in original claim 1of the application.
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percent; but disclosing that other weight percentages can be used. Id., ll. 17-
21.
Additionally, the Specification discloses that the sodium-silico-
titanate compound, as called for in claim 1, typically includes titanium
dioxide, potassium silicate, sodium silicate and colloidal silica. The titanium
dioxide content of the sodium-silico-titanate compound typically is disclosed
as a majority weight percent. Id. at 8, ll. 21-23. Three specific example
compositions of the sodium-silico-titanate compound are listed on pages 9
and 10 of the Specification. Each example provides a specific weight
percent of titanium dioxide.
The Examiner’s rejection under Section 112, first paragraph, made no
mention of the extensive disclosure of “titanium dioxide percentage
amounts” in the Specification, as discussed above. Thus, the Examiner has
failed to make the factual findings which must be made before a conclusion
of “lack of enablement” may properly be reached. Accordingly, because the
rejection did not satisfy the initial burden of setting forth a reasonable
explanation as to why the Examiner believes that the scope of protection
provided by claim 1 is not adequately enabled by the Specification, we
reverse the rejection of claim 1 under 35 U.S.C. § 112, first paragraph.
Claim 52
Unlike claim 1, claim 52 specifically recites a weight percent of
titanium dioxide for the fill composition (“said fill composition including
titanium dioxide, wherein said titanium dioxide constitutes about 5-40
weight percent of said fill composition”). The Examiner’s rejection of claim
52 under Section 112, first paragraph, as failing to comply with the
enablement requirement, is identical to the rejection of claim 1 on this same
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ground (“It is not known if the titanium dioxide percentage amounts are with
respect to the total wire, the fill, the moisture resistant conglomerate and so
forth.” Ans. 3.)
The Examiner made no reference to the Specification, which states, in
relevant part, that the titanium dioxide content of the flux system, not
including the titanium dioxide content in the moisture resistant compound, is
generally at least about 2 weight percent of the flux system; typically about
5-40 weight percent of the flux system, and more typically about 5-35
weight percent of the flux system; but disclosing that other weight
percentages can be used. Spec. 3, ll. 20-27.
Appellant argues that the claim language clearly defines the amount of
titanium dioxide included in the fill composition and in the moisture
resistant compound. App. Br. 4. Again, Appellant makes no reference to
the Specification for a disclosure that would enable this claim limitation.
Nonetheless, the Examiner has failed to make those factual findings which
must be made before a conclusion of “lack of enablement” may properly be
reached. Accordingly, as explained above in the analysis of the rejection of
claim 1, because the rejection did not satisfy the initial burden of setting
forth a reasonable explanation as to why the Examiner believes that the
scope of protection provided by claim 52 is not adequately enabled by the
Specification, we reverse the rejection of claim 52 under 35 U.S.C. § 112,
first paragraph.
Rejection 2 - 35 U.S.C. § 112, Second Paragraph, As Indefinite
All the claims rise or fall based on the propriety of the rejections of
claims 1 and 52.
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The entirety of the Examiner’s rejection under Section 112, second
paragraph is the statement that “[t]itanium dioxide is a known slag forming
agent as well as moisture resistant.” Ans. 4. Nothing in this statement
identifies what the Examiner finds indefinite about the claim language.
In response to the rejection, Appellant argues that “[t]he claim [sic]
should be interpreted such that the slag forming agent and the moisture
resistant compound only contain titanium dioxide alone.” App. Br. 19. This
response does not directly address the Examiner’s basis for finding the
claims indefinite.
Notwithstanding the merits of the response, the Examiner bears the
initial burden of establishing a prima facie case of indefiniteness under 35
U.S.C. § 112, second paragraph. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability.”) The Examiner has not analyzed or discussed the language
of the appealed claims and thus has not carried the burden of establishing a
prima facie case of indefiniteness. The Examiner has advanced no
substantive basis to support the rejection of the claims as indefinite.
Accordingly, we reverse the Examiner’s section 112, second paragraph,
rejection of claims 1, 3-16, and 42-63.
Rejection 3 - 35 U.S.C. § 103(a)
All of the claims are rejected based on the four applied references.
Appellant argues:
1. Kotecki and Zvanut are directed to cored electrodes for use in
conjunction with stainless steel, whereas the claims are intended for use in
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mild and low alloy steel, and the “chemistry of mild and low alloy steel is
much different than that of stainless steel” (App. Br. 19);
2. the means for limiting moisture in the applied references is not part
of the fill composition within the core of the electrode, as required by claims
1 and 52 (App. Br. 20);
3. there is no evidence that the colloidal particles taught by Takimoto
would function within the aqueous solution disclosed in Hill (App. Br. 21);
and
4. that potassium titanate is not a suitable filler component for the
electrode of Zvanut, and Zvanut teaches away from the claimed invention
(Reply Br. 6).
The Examiner found or concluded that:
1. Kotecki discloses the invention in claims 1 and 52 and closely
approximates or overlaps Appellant’s claimed composition, but does not
disclose moisture control, colloidal silica, or mesh or particle size as claimed
(Ans. 6-7);
2. Zvanut teaches the use of core materials which are naturally low in
moisture content (Ans. 14);
3. Hill teaches the use of a coating to make a material moisture
resistant (Ans. 14);
4. it would have been obvious to one of ordinary skill in the art at the
time of the invention to monitor and choose reduced moisture filler materials
as taught by Zvanut in the Kotecki electrode because this mitigates porosity
in the weld metal to an acceptable level (Ans. 10);
5. it would have been obvious to one of ordinary skill in the art at the
time of the invention to modify the Kotecki silica by substituting colloidal
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silica as taught by Hill because these are functional equivalents which help
to negate moisture absorption (Ans. 10);
6. it would have been obvious to one of ordinary skill in the art at the
time of the invention to modify the colloidal silica particle size of Hill to
encompass the range of 20 to 60 nm as taught by Takimoto because this is
merely a more specific range of the less than 1 micrometer size (Ans. 11);
and
7. the intended use in mild or low alloy steel, recited in the preamble,
is not given patentable weight (Ans. 13).
Neither the Examiner nor the referenced prior art provides any
discussion as to the combinability or compatibility of the long list of
compounds and elements disclosed in the cited references to yield the
specific moisture resistant compound called for in claims 1 and 52. We
know from Zvanut, however, that “the chemistry and physics of welding are
very complex.” Zvanut, col. 2, ll. 54-55. We also recognize that the
claimed invention need not be expressly suggested in any one or all of the
references to reach a conclusion of obviousness. Here, however, the cited
prior art, taken as a whole, presents a vast number of possible chemical
compounds that could be constructed from a vast number of constituent
components. The Examiner cites no guidance as to why one skilled in the
art would select the specific components recited, and why one would have a
reasonable expectation such combination would be successful. The
Examiner appears to have simply selected from a myriad of possible
components of various types of compounds or chemicals in order to
reconstruct the claimed subject matter with the benefit of hindsight. We
cannot agree that such an approach properly supports the Examiner’s
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conclusion of obviousness based on the evidence of record. See, e.g., In re
Baird, 16 F.3d 380 (Fed. Cir. 1994); Takeda Chem. Indus. v. Alphapharm
Pty., 492 F.3d 1350 (Fed. Cir. 2007). Accordingly, we reverse the
Examiner’s section 103 rejection of claims 1, 3-16, and 42-63.

DECISION
Upon consideration of the record as a whole in light of Appellant’s
contentions and the preponderance of relevant evidence, we REVERSE the
Examiner’s decision rejecting claims 1, 3-16, and 42-63.

REVERSED

mls