Ex Parte Keegan

Board of Patent Appeals and Interferences

Feb 29, 2012

10463259 (B.P.A.I. Feb. 29, 2012)

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.
10/463,259 06/17/2003 James Keegan 22176.24 1981
29127 7590 03/01/2012
HOUSTON ELISEEVA
420 BEDFORD ST
SUITE 155
LEXINGTON, MA 02420
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
03/01/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES KEEGAN
____________________

Appeal 2010-004184
Application 10/463,259
Technology Center 3700
____________________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004184
Application 10/463,259

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
7 and 21-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The claims are directed to a consumable flux cored welding electrode
alloyed with cobalt (Co) for controlling weld metal morphology in a flux
cored arc welding process. (Spec. 1, ll. 11-13.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A weld wire comprising:
a steel sheath encapsulating a fluxed core;
the fluxed core comprising a combination of fluxing
compounds and alloying elements;
the fluxing compounds comprising up to 2% Wt of fluoride
compounds and up to 49% Wt of oxide compounds; and
the alloying elements comprising Mn, Ni, Co, Ti and up to
about 0.98% Wt of C, an amount of Co being sufficient
to produce a ferrite-bainite weld metal morphology of a
weld.
(Appeal Brief, Claims Appendix1 11.)

1 Appeal Brief filed July 14, 2009, hereinafter “App. Br.” and “Claims
App’x,” respectively.
Appeal 2010-004184
Application 10/463,259

3

THE REJECTIONS
I. The Examiner rejected claim 5 under 35 U.S.C. § 112, second
paragraph, as indefinite. (Examiner’s Answer, dated November
10, 2009, “Ans.” 3.)

II. The Examiner rejected claims 1-7 and 21-24 under 35 U.S.C. §
103(a) over Sakai et al. (US 4,465,921, issued August 14, 1984)
in view of Coldren et al. (US 5,523,540, issued June 4, 1996)
and O’Donnell et al. (US 5,304,346, issued April 19, 1994).
(Ans. 4-5.)

35 U.S.C. § 112, 2nd Paragraph Rejection
The Examiner concluded that claim 5 was indefinite because the
weight percentage of the oxides composition in Claim 5 is 52.65% Wt, while
independent claim 1 only allows for an oxide composition in weight
percentages up to 49% Wt. (Ans. 3.)
Appellant does not challenge the merits of the Examiner’s rejection,
but instead argues that claim 5 was cancelled in the response of October 6,
2006 to the Final Rejection mailed August 8, 2006 in favor of new
independent claim 25, which “was, in essence, canceled Claim 5 made
compliant with the requirements of 35 U.S.C. § 112, second paragraph.”
(App. Br. 5.) However, the Examiner did not enter the amendment
submitted after final rejection (Ans. 5).2

2 Appellant requests that Claim 25 should be entered in the application.
(App. Br. 5.) However, this issue is a petitionable matter and not reviewable
by the Board which reviews decisions by a primary examiner to reject, or
not reject, claims. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967)
(issues pertaining to entry of amendments are reviewable by petition under
37 C.F.R. § 1.181 and are not within the jurisdiction of the Board).
Appeal 2010-004184
Application 10/463,259

4
Accordingly, we affirm the Examiner’s rejection of claim 5 under 35
U.S.C. § 112, second paragraph.

35 U.S.C. § 103 Rejection
ISSUE
The Examiner found that Sakai discloses a flux-cored wire for gas
shielded arc welding, which is made up of a mild steel sheath and a flux core
containing Ti, Mn, B, Mg, Si, metal fluorides, and oxides. (Ans. 4.) The
Examiner found that Sakai does not disclose the formation of ferrite and
bainite in the weld morphology or the presence of cobalt. (Ans. 4.)
The Examiner found that Coldren discloses a welding electrode with
weld deposits that contain low carbon bainite and ferrite microstructures.
(Ans. 4.) The Examiner concluded that it would have been obvious to one
of ordinary skill in the art at the time of the invention to form a bainite
ferrite microstructure in the weld deposit as taught by Coldren in Sakai’s
system to obtain the microstructural benefits thereof, such as high yield
strength. (Ans. 4.)
The Examiner further found that O’Donnell discloses a welding
material, that may be configured to function as a flux cored welding wire, in
which the filler contains 25-55% nickel, 0-30% cobalt (nickel substitute),
0.05-0.5% carbon, 0-3% titanium, 0.7% manganese, 0.015% silicon, 0.003%
magnesium, 0.5% zirconium, and the balance consisting of iron. (Ans. 5, 7.)
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art at the time of the invention to use a weld material including
cobalt as taught by O’Donnell, in the system of Sakai. (Ans. 5.)
Appeal 2010-004184
Application 10/463,259

5
Appellant argues that O’Donnell does not recognize or appreciate the
role of cobalt in controlling and producing a ferrite-bainite weld metal
morphology of a weld formed by a fluxed cored wire. (App. Br. 8.) Thus,
Appellant argues that O’Donnell does not teach or suggest cobalt in an
amount sufficient to produce a ferrite-bainite weld metal morphology of a
weld. (App. Br. 8.) Appellant also argues that O’Donnell does not disclose
employing cobalt to control corrosion or crack formation; but instead
teaches the use of various other elements for such purposes. (App. Br. 9.)
Appellant argues, therefore, that there is no motivation or suggestion to use
cobalt in the prior art. (App. Br. 9.)
Therefore, the dispositive issue on appeal is:
Whether the Examiner erred in concluding that it would have been
obvious to use cobalt in the fluxed core of a weld wire as recited in claim 1?

PRINCIPLES OF LAW
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court explained that “Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.”’ KSR, 550 U.S. at 406. “If a person of
ordinary skill can implement a predictable variation . . . §103 likely bars its
patentability.” KSR, 550 U.S. at 417. “In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective
Appeal 2010-004184
Application 10/463,259

6
reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” KSR, 550 U.S. at 419.

ANALYSIS
Appellant does not separately argue the dependent claims on appeal.
(App. Br. 10.) Accordingly, we confine our discussion to appealed claim 1,
which contain claim limitations representative of the arguments made by
Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
We agree with the Examiner it would have been obvious to have
employed cobalt in the fluxed core of a weld wire as recited in Appellant’s
claims. Specifically, it is not necessary that the reasons disclosed in the
prior art for using cobalt in the fluxed core of a weld wire be the same as
Appellant’s reasons for using the same. See KSR, 550 U.S. at 419. In this
case, O’Donnell teaches that it would be advantageous for the ratio of
nickel, iron, and cobalt in the filler metals to approximate the ratio of nickel,
iron, and cobalt in the base metal to limit thermal deflections and strain.
(Col. 1, ll. 25-30; Col. 6, l. 40 – Col. 7, l. 38.) Therefore, one of ordinary
skill in the art at the time of the invention would have had a reason to use
cobalt in situations where the base metal contained cobalt for the advantages
disclosed by O’Donnell.
Regarding the weight percentages of cobalt recited in the claims,
O’Donnell teaches the use of cobalt preferably in a range of 0 – 30%. (Col.
2, ll. 35-38.) Appellant’s dependent claims 4 and 21 require cobalt in an
amount of 4.98% Wt. Appellant’s Specification states that the “invention
contemplates the amounts of Co in the core to be up to 4.98% Wt.” (Spec.,
7, ll. 10-11.) Further, original claim 5 recites cobalt in an amount of 9.99%
Appeal 2010-004184
Application 10/463,259

7
Wt. Thus, the range taught by O’Donnell encompasses the amounts recited
in Appellant’s claims. As the court stated in In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003):
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In
fact, when, as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap . . . We therefore
conclude that a prior art reference that discloses a range
encompassing a somewhat narrower claimed range is sufficient
to establish a prima facie case of obviousness. That is not to
say that the claimed composition having a narrower range is
unpatentable. Rather, the existence of overlapping or
encompassing ranges shifts the burden to the applicant to show
that his invention would not have been obvious.

(emphasis in original).

Regarding Appellant’s argument that O’Donnell does not teach
certain properties of the claimed welding wire (i.e. an amount sufficient to
produce a ferrite-bainite weld metal morphology), it is well settled that the
structure of a claimed composition and its properties are inseparable for
purposes of Section 103. See Genetics Inst., LLC v. Novartis Vaccines and
Diagnostics, Inc., 655 F.3d 1291, 1307 (Fed. Cir. 2011) (citing Sanofi-
Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008) (“For
chemical compounds, the structure of the compound and its properties are
inseparable considerations in the obviousness determination.”)).
Accordingly, the Examiner’s conclusion that a fluxed core
composition including cobalt in the amounts recited in the claims would
have been obvious in view of combination of prior art references is
Appeal 2010-004184
Application 10/463,259

8
supported by a preponderance of the evidence. As a result, it was reasonable
to find that the weld wire suggested by the combined teachings of the prior
art would possess “an amount of Co [] sufficient to produce a ferrite-bainite
weld metal morphology . . . .” (emphasis added).
Appellant has failed to present persuasive evidence of criticality or
unexpected results. Accordingly, we sustain the Examiner’s rejection of
claim 1 as obvious in view of Sakai, Coldren, and O’Donnell. See In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”); see also In re
Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“[I]t is also clear that
the discovery that a claimed composition possesses a property not disclosed
for the prior art subject matter, does not by itself defeat a prima facie case.”).

CONCLUSION
The Examiner did not err in concluding that it would have been
obvious to use cobalt in the fluxed core of a weld wire as recited in claim 1.

DECISION
We affirm the Examiner’s rejection of claim 5 under 35 U.S.C. § 112,
second paragraph, as indefinite.
We affirm the Examiner’s rejection of claims 1-7 and 21-24 under 35
U.S.C. § 103(a) over Sakai in view of Coldren and O’Donnell.

Appeal 2010-004184
Application 10/463,259

9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED
ack