12279470 (P.T.A.B. Jan. 9, 2017)

Ex Parte Katoh et al

Patent Trial and Appeal BoardJan 9, 2017

12279470 (P.T.A.B. Jan. 9, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/279,470 08/14/2008 Jun Katoh 329474US0PCT 1436 22850 7590 01/11/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER ROSS, DANA ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 01/11/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN KATOH, MIKAKO TAKEDA, SEIJI SASABE, KATSUSHI MATSUMOTO, HIDEKAZU IDO, and TSUYOSHI MATSUMOTO Appeal 2015-0037231,2 Application 12/279,470 Technology Center 3700 Before ANTON W. FETTING, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 3—6, 14—18, 20, 21, and 23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants’ Specification (“Spec.,” filed Aug. 14, 2008) and Appeal Brief (“Br.,” filed Oct. 3, 2014), as well as the Examiner’s Answer (“Answer,” mailed Dec. 9, 2014). 2 According to Appellants, “[t]he real party in interest is Kabushiki Kaisha Seiko Sho (Kobe Steel, Ltd.).” Br. 1. Appeal 2015-003723 Application 12/279,470 According to Appellants, “[t]he invention relates to a flux cored wire (FCW: Flux Cored Wire) for joining dissimilar materials with each other, that is, a steel-base material and an aluminum-base material with each other, and a method for joining the dissimilar materials with each other.” Spec. 11. Claim 1 is the only independent claim on appeal. See Br., Claims App. We reproduce claim 1, below, as representative of the appealed claims. 1. A flux cored wire suitable for enhancing bonding strength in melt weld bonding, comprising an aluminum alloy envelope and a flux wherein the aluminum alloy envelope is filled up with the flux, wherein the flux comprises aluminum fluoride in a range of 0.4 to 15 mass % based on the total mass of the flux cored wire, wherein the flux contains no chloride, wherein the flux has a melting temperature in a range of 700 °C to 1000 °C, and wherein an amount of the flux is in a range of 0.3 to 20 mass % based on the total mass of the flux cored wire. REJECTIONS AND PRIOR ART The Examiner rejects claims 1, 14, 15, 18, 20, 21, and 23 under 35 U.S.C. § 103(a) as unpatentable over Yamada (US 5,099,103, iss. Mar. 24, 1992), Hida (JP 6-304780, pub. Apr. 23, 1993)3, andNishimura (US 5,802,716, iss. Sept. 8, 1998). 3 In this Decision, our references to Hida are to the English-language translation. 2 Appeal 2015-003723 Application 12/279,470 The Examiner rejects claims 3, 4, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Yamada, Hida, Nishimura, and Keegan (US 6,933,468 B2, iss. Aug. 23, 2005). The Examiner rejects claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Yamada, Hida, Nishimura, and Kamiyama (JP 2003-211270, pub. July 29, 2003). Answer 2—5. ANALYSIS With respect to the rejection of independent claim 1, the Examiner relies on a determination that it would have been obvious to combine Yamada, Hida, and Nishimura to provide a flux cored wire in which “the use of chlorides” is “expressly prohibit[ed],” based on a teaching in Nishimura. Answer 3. Based on our review, we find that the Examiner’s reason for combining the references lacks the required rational underpinning. See Br. 3—5; see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, for reasons discussed in further detail below, we do not sustain the rejection. Specifically, we agree with Appellants that Yamada and Hida are directed to welding, while Nishimura is directed to brazing. Br. 4. With respect to the difference between these two metal attachment techniques, “welding” is “unit[ing] (metallic parts) by heating and allowing the metals to flow together” (https://www.merriam-webster.com/dictionary/weld (last visited Jan. 6, 2017); while “brazing” is “soldering with a nonferrous alloy having a lower melting point than the metals being joined” (https://www.merriam-webster.com/dictionary/braze (last visited Jan. 6. 3 Appeal 2015-003723 Application 12/279,470 2017)). In other words, welding and brazing are two distinct metal attachment techniques in that welding melts the base metal and brazing does not. Yamada describes welding without reference to the inclusion or omission or chloride. See Br. 4. “Hida discloses an aluminum wire for welding. . . . The flux of this wire contains chloride.” Id. (citing Hida 1 8). The Examiner does not point to anything in any welding-related reference that describes the omission of chloride, or why it would have been advantageous to omit chloride. Instead, the Examiner relies on Nishimura, which as we state above describes brazing, to provide a reason to omit chloride from the welding disclosed in Yamada and Hida. See id.', see also, e.g., Answer 3. Because Yamada and Hida are directed to a different joining operation than Nishimura, we determine that the Examiner does not establish, based on any evidence, that omitting chloride from a welding operation would “produce the desired melting temperature range[,] . . . improve the corrosion resistance of the weld[,] and improve the bonding strength in the weld” as determined by the Examiner, even if omitting chloride would, in fact, provide such advantages during a brazing process. Answer 3. For this reason, we determine that the Examiner’s reason for omitting chloride from a welding process lacks the required rational underpinning, and, thus, we do not sustain the rejection. See KSR, 550 U.S. 398 at 418. Because we do not sustain the rejection of claim 1, we also do not sustain the rejection of claims 14, 15, 18, 20, 21, and 23 that depend from claim 1. Further, inasmuch as the Examiner does not establish that any other reference remedies the deficiency in the rejection of claim 1, we also do not sustain the rejections of claims 3—6, 16, and 17. 4 Appeal 2015-003723 Application 12/279,470 5 Appeal 2015-003723 Application 12/279,470 DECISION We REVERSE the Examiner’s obviousness rejections of claims 1, 3—6, 14—18, 20, 21, and 23. REVERSED 6