Ex Parte Nicklas

Board of Patent Appeals and Interferences

Dec 14, 2009

10714090 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PETER J. NICKLAS
____________________

Appeal 2009-005586
Application 10/714,090
Technology Center 3700
____________________

Decided: December 14, 2009

Before RICHARD E. SCHAFER, JAMESON LEE, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Hobart
Brothers Co. (Hobart) under 35 U.S.C. § 134(a) from a final rejection of
claims 10-12, the only claims on appeal. Claim 13 was cancelled prior to
this appeal. Claims 1-9 and 14-20 were withdrawn from consideration as the
result of a requirement under 37 CFR § 1.142(a) prior to this appeal. Hobart
requests reversal of the Examiner’s rejections of claims 10-12. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

References Relied on by the Examiner
Arikawa et al. (Arikawa) 3,531,620 Sep. 29, 1970
Nemoto et al. (Nemoto) 3,855,015 Dec. 17, 1974
Ogawa et al. (Ogawa) 5,861,605 Jan. 19, 1999

The Invention
Hobart’s invention is directed to a tubular weld wire comprising: a
steel sheath encapsulating a core that is formulated for submerged arc
welding. (Spec. ¶ 15; App. Br. 11, Claims App’x.) Claim 10, the only
independent claim, is illustrative of the claimed invention and is reproduced
below:
10. A tubular weld wire comprising: a steel sheath
encapsulating a core; the core formulated for submerged arc
welding and comprising one or more non-metallic compounds
selected from the group of non-metallic compounds consisting
of A12O3, Na2O3, MgCO3, MgA1, CaF2, CaCO3, MgO and
combinations thereof, wherein the total percentage of one or
more nonmetallic compounds in the core composition ranges
from about 1% Wt to about 30% Wt and wherein the non-
metallic compounds are A12O3 and Na2O3 with the total
percentage of 14% Wt.
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(App. Br. 11, Claims App’x.)
The Rejections on Appeal
The Examiner provided the following grounds of rejection for the
claims on appeal:
1. The Examiner rejected claims 10 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Ogawa and Nemoto.
2. The Examiner rejected claims 11 under 35 U.S.C. § 103(a) as
unpatentable over Ogawa, Nemoto, and Arikawa.
Claims 11 and 121 depend directly from claim 10. The claims all
stand or fall on whether the combination of Ogawa and Nemoto taught one
of ordinary skill in the art to utilize a core with the non-metallic compound
composition required by claim 10.

B. ISSUE
Has Hobart shown that the combination of Ogawa and Nemoto would
not have taught one of ordinary skill in the art to utilize a tubular weld wire
core having A12O3 and Na2O3 present in an amount of 14 wt% and no other
“non-metallic” compounds?

1 Claim 10 states “wherein the non-metallic compounds are A12O3 and
Na2O3 with the total percentage of 14% Wt.” We note that while Claim 12
depends from claim 10, claim 12 allows the total percentage of non-
metallics to range from between 5 and 15 Wt%.

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C. FINDINGS OF FACT
Hobart’s Tubular Welding Wire
1. Hobart teaches that “non-metallic” compounds useful in its wire/flux
combination are A12O3, Na2O3, MgCO3, MgA1, CaF2, CaCO3, and MgO.
(Spec., ¶ 16)
2. Hobart teaches that its best performing wire/flux has a core containing
14 wt% of a nonmetallic composition consisting of A12O3, Na2O3, where the
A12O3 and Na2O3 are the only “non-metallic” compounds in the core. (Id. at
¶ 16 and Table 1).

Ogawa
3. Ogawa discloses a tubular weld wire for arc welding comprising a
stainless steel sheath surrounding a core comprising non-metallic
compounds. (Ogawa 1:6-11, 2:13-25)
4. Ogawa teaches that it is desirable for the weld wire to have a flux core
that comprises 0.5 to 1.5 % wt. A12O3. (Id. at 2:13-25, 3:64 to 4:6)
5. Ogawa teaches that a composition comprising greater than 1.5 % wt.
of A12O3 causes negative effects on weld quality by degrading weld bead
shape. (Id. at 4:1-6)
6. Ogawa provides examples of weld wires having Na2O3 in amounts
ranging from 0.09 to 0.15 % wt. but does not elaborate on why Na2O3 is
present in the wire. (Id. at Tables 7-8)
7. Ogawa states its weight percentages in terms of the total weight of the
wire (core and sheath) whereas the claims recite the weight percentage in
terms of the core. (Id.)
8. For purposes of clarity Ogawa’s weight percentages will hereinafter
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be recited in terms of the weight percentage of the core.
9. Ogawa teaches a flux ratio of approximately 25%, meaning that the
weight of the sheath is 75% of the total weight and the core is 25%. (See,
Table 7).
10. One of ordinary skill in the art would understand that Ogawa teaches
using approximately 2 to 6 % wt. A12O3, when calculated using the claimed
core weight percent, i.e., 0.5% to 1.5% of the total weight of the entire wire,
as the sheath is 75% of the weight and the core is 25%. (See Table 7).
11. One of ordinary skill in the art would understand that the upper limit
of Ogawa’s Al2O3 is approximately 6% when calculated using the claimed
core weight percent, i.e., 1.5% of the total weight of the entire wire, as the
sheath is 75% of the weight and the core is 25%. (See Table 7).
12. One of ordinary skill in the art would understand that Ogawa teaches
providing Na2O3 in amounts ranging from approximately 0.4 to 1% wt. of
the core, i.e. 0.09% to 0.15% of the total weight of the entire wire, as the
sheath is 75% of the weight and the core is 25%. (See Table 7).
13. Similarly, calculating the terms of A12O3 and Na2O3 in terms of
weight percentage of the core reveals that Ogawa teaches a maximum
combined composition of A12O3 and Na2O3 of approximately 7% by weight
of the core, i.e. 1.65% of the total weight of the entire wire as the sheath is
75% of the weight and the core is 25%.

Nemoto
14. Nemoto is directed to a work roll for hot rolling where the work roll
has a weld metal that may have a flux on its surface. (Nemoto, Abstract and
6:50-63)
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15. Nemoto provides a brief description of a specific type of flux that may
be used with its weld metal. In particular, Nemoto’s particular description
of a suitable flux is directed to a single composition having specific
ingredients in specific amounts. (Id. at 11:24-29)2
16. Nemoto’s specifically identified flux contains, among other
compounds, Al2O3, Na2O3, CaCO3 and CaF2 where Al2O3 and Na2O3 are
present in an amount of 15.2% by weight. (Nemoto 11:24-29)

D. PRINCIPLES OF LAW
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Morris, 127 F.3d 1048,
1055 (Fed. Cir. 1997).
Proving obviousness under 35 U.S.C. § 103 requires that one identify
a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

E. ANALYSIS
The Examiner rejected Hobart claims 10 and 12 as obvious over
Ogawa in view of Nemoto. The Examiner reasoned that while Ogawa did
not teach Al2O3 and Na2O3 in a combined amount of 14 wt%, such an
amount would have been obvious in view of Nemoto’s teaching that Al2O3
and Na2O3 are useful in a combined amount of 15.2 wt%. (Ans. 3) The

2 Nemoto also mentions the use of a mixture of two fluxes but the two fluxes
are identified only as a bonded flux for hard-facing available from Kawasaki
Iron Making Co. and a bond flux for high tensile strength steel from Kobe
Steel Works. (Nemoto 8:66 to 9:3)
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Examiner further rejected Hobart claim 11 as obvious over Ogawa and
Nemoto and further in view of Arikawa as Arikawa is said to teach the
presence of Fe, FeMg and FeSi, which are required by claim 11. (Id. at 4)
The Examiner and Hobart dispute whether the combination of Ogawa and
Nemoto teaches a tubular weld wire having a core comprising the recited
composition of non-metallic compounds. (Ans. 3-4, App. Br. 3-7)

Claim Construction
Hobart’s sole independent claim, claim 10, is directed to a weld wire
having a core comprising certain non-metallic compounds. The non-
metallic compounds are identified in claim 10 as limited to A12O3, Na2O3,
MgCO3, MgA1, CaF2, CaCO3, and MgO. Hobart claim 10 however, further
limits the non-metallic compounds present to A12O3 and Na2O3 by stating
“wherein the non-metallic compounds are A12O3 and Na2O3 with the total
percentage of 14% Wt.” (App. Br. 11, Claims App’x, emphasis added.)
We give claim terms their broadest reasonable interpretation so long
as the interpretation is consistent with the specification. Morris, 127 F.3d at
1055. Hobart’s independent claim names seven non-metallic compounds
but goes on to state wherein the nonmetallic compounds in the core of the
wire are A12O3 and Na2O3. (App. Br. 11, Claims App’x.) This recitation
that the non-metallic compounds are only A12O3 and Na2O3 is consistent
with Hobart’s specification, which teaches that weld wire having only A12O3
and Na2O3 as the non-metallic compounds provided the best performance.
(Spec. ¶ 16 and Table 1) As such, based on the plain language of the claim
taken in light of the specification, we hold that that the claim limits the non-
metallic compounds to only A12O3 and Na2O3 to the exclusion of the other
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five non-metallic compounds (MgCO3, MgA1, CaF2, CaCO3, MgO).3

Ogawa and Nemoto Fail to Teach the Claimed Invention
Ogawa teaches that it is desirable to provide a weld wire having a flux
core that comprises 2 to 6 % wt. A12O3. (Ogawa 2:13-25, 3:64 to 4:6)
Ogawa further teaches that using a core composition comprising greater than
6 % wt. of A12O3 causes negative effects on weld quality by degrading weld
bead shape. (Id. at 4:1-6)
Ogawa Tables 7-8, provide a variety of examples of flux compositions
comprising both A12O3 and Na2O3. (Id. at Tables 7-8) Specifically, Tables
7-8 teach providing Na2O3 in amounts ranging from approximately 0.4 to
1% wt. (Id.) From these tables, one of ordinary skill in the art would
understand that Ogawa teaches an upper limit of 7 % wt. on the combined
amount of A12O3 and Na2O3 (i.e. 6% +1%). Accordingly, Ogawa does not
teach a core composition wherein “the non-metallic compounds are Na2O3
and A12O3 with the total percentage of 14% wt.”
Nemoto teaches a welding flux. Nemoto however, provides a very
limited disclosure of the flux composition that may be used in its welding
flux. Specifically, Nemoto describes only a single flux composition that is
akin to a data point in that it does not vary in components, nor does it
provide a range of amounts.4 (Nemoto 11:24-29) Nemoto’s single flux

3 To the extent Hobart desired non-metallics other than A12O3 and Na2O3 the
burden was on Hobart to clearly set forth the bounds of its claims.
4 Nemoto’s flux composition is “a 4:1 mixture of a flux composed of 16
wt% of SiO2, 16 wt% of A12O3, 21 wt% of CaO, 31 wt% of MnO, 7 wt% of
CaF2, 4 wt% of Fe2O3 and 3 wt% of Na2O3 and a flux composed of 20 wt%
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composition comprises both CaCO3 and CaF2 in addition to 15.2 wt. %
Al2O3 and Na2O3. (Nemoto 11:24-29, App. Br. 7) As such, Nemoto fails to
teach using 15.2 wt. % Al2O3 and Na2O3 in the absence of any of the
excluded non-metallic compounds (MgCO3, MgA1, CaF2, CaCO3, MgO).
The combined teachings of Ogawa and Nemoto would not have led
one of ordinary skill in the art to the claimed invention. Specifically, Ogawa
teaches a maximum of 7 wt% Al2O3 and Na2O3. Ogawa informs one of
ordinary skill in the art that higher levels of Al2O3 in a wire flux core are
detrimental to weld quality and Ogawa does not provide a reason to employ
more than 1 wt. % Na2O3. Nemoto teaches the use of a particular amount
(15.2%) of Al2O3 and Na2O3, but does not teach using the amount claimed in
the absence of either CaCO3 and CaF2 (which are excluded by the claim).
Accordingly, the cited references would not have lead one of ordinary skill
in the art to exceed Ogawa’s upper limit (7%) on the amounts of Al2O3 and
Na2O3 in the wire core, where the only nonmetallics are Al2O3 and Na2O3.
Based on the foregoing we reverse the Examiner’s rejections of claims 10
and 12 because it has not been established on this record that one of ordinary
skill in the art would have been guided to a wire core where the only
nonmetallics are Al2O3 and Na2O3 and present in an amount of 14% by
weight of the core.
Claim 11 depends from claim 10. The Examiner relied on Arikawa in
addition to Ogawa and Nemoto to reject claim 11. Arikawa does not remedy
the deficiencies of Ogawa and Nemoto as it does not, alone or in
combination with Ogawa and Nemoto, provide a reason to utilize a wire core

of CaCO3, 40 wt% of CaF2, 15 wt% of Mn and 25 wt% of Fe-Ti.” (Nemoto
11:24-29)
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where the nonmetallics are Al2O3 and Na2O3 present in an amount of 14%
by weight of the core. Accordingly, we reverse the Examiner’s rejection of
claim 11.

F. CONCLUSION
Hobart has shown that the combined teachings of Ogawa and Nemoto
would not have suggested to one of ordinary skill in the art to utilize a
tubular weld wire core having A12O3 and Na2O3 present in an amount of 14
wt% and no other “non-metallic” compounds.

G. ORDER
The rejections of claims 10 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ogawa and Nemoto are reversed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Ogawa, Nemoto, and Arikawa is reversed.
REVERSED

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