10375574 (B.P.A.I. Sep. 12, 2011)

Ex Parte Nikodym

Board of Patent Appeals and InterferencesSep 12, 2011

10375574 (B.P.A.I. Sep. 12, 2011)

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. 10/375,574 02/27/2003 Anthony Franklin Nikodym 483471-002-C1 9144 33375 7590 09/12/2011 THOMPSON HINE LLP Intellectual Property Group P.O Box 8801 DAYTON, OH 45401-8801 EXAMINER ELVE, MARIA ALEXANDRA ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 09/12/2011 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 ANTHONY FRANKLIN NIKODYM ____________ Appeal 2009-014208 Application 10/375,574 Technology Center 3700 ____________ Before LINDA E. HORNER, JOHN C. KERINS, and FRED A. SILVERBERG, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014208 Application 10/375,574 2 STATEMENT OF THE CASE Anthony Franklin Nikodym (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 19, 20, 22-30, and 34-42.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to metal-core weld wires which produce weld deposits having self-peeling or readily removable slag islands. Spec. 1, ll. 3-5. Claim 19, reproduced below, is representative of the subject matter on appeal. 19. A metal core weld wire for producing weld deposits with improved removability of slag islands comprising a steel sheath and a core, a core composition disposed in the core, the core composition including a slag-modifying additive selected from the group consisting of bismuth, germanium and compounds thereof, the metal core weld wire containing less than 5% by weight nonmetallic inorganic components and less than 10% by weight chromium. THE EVIDENCE The Examiner relies upon the following evidence: Godai US 4,345,140 Aug. 17, 1982 Keeven US 4,595,600 Jun. 17, 1986 Kotecki US 5,120,931 Jun. 9, 1992 1 The Examiner withdrew a rejection under 35 U.S.C. § 112, second paragraph of claims 43-46. Supp. Ans. dated June 8, 2009. Appeal 2009-014208 Application 10/375,574 3 THE REJECTIONS Appellant seeks review of the following rejections: 1. The Examiner rejected claims 19, 20, 22-30, 41, and 42 under 35 U.S.C. § 103(a) as being unpatentable over Godai and Kotecki. 2. The Examiner rejected claims 34-40 under 35 U.S.C. § 103(a) as being unpatentable over Godai, Kotecki, and Keeven. CONTENTION AND ISSUE Appellant argues that the claim limitation of the metal core weld wire containing less than 10% by weight chromium distinguishes claim 19 over Godai and Kotecki. App. Br. 10. The issue presented by this appeal is whether one of ordinary skill would have been led to modify the flux cored weld wire of Godai, which is disclosed as being designed for stainless steel welding, to have a chromium content of less than 10% by weight based on the teachings of Kotecki. PRINCIPLES OF LAW “[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)). ANALYSIS Godai discloses “a composite wire for stainless steel welding” that includes a flux core and a sheath. Col. 1, ll. 7-8; col. 2, ll. 65-66. Godai discloses that the alloy ingredients applied to the flux and/or to the wire Appeal 2009-014208 Application 10/375,574 4 sheath include chromium, nickel, and silicon as principal ingredients and that the amount of chromium in the weld wire is greater than or equal to 10% by weight. Col. 2, l. 66 – col. 3, l. 4 and 17. Godai teaches that chromium “serves to increase the corrosion resistance of a weld zone and is necessary when an object to be welded is stainless steel and should be within a range from an upper limit to a lower limit both of which must meet the above requisites” and that “[t]he lower limit is an amount necessary for [chromium] to exhibit corrosion resistance, while the upper limit is an amount over which ductility drops and fragility rises drastically at high temperatures.” Col. 3, ll. 29-36. As such, we agree with the Examiner that Godai does not disclose a metal-core weld wire containing less than 10% by weight chromium as called for in claim 19. Ans. 4 (“Godai et al. does not teach the exact amount of chromium.”). Kotecki discloses “a flux to be used with a high chromium weld bead, such as a weld bead having over 1.0% chromium and preferably for a stainless steel having greater than 15% chromium . . . .” Col. 2, ll. 37-40. Kotecki discloses that “when chromium is added to the electrode for the purpose of depositing a chromium-bearing alloy, such as stainless steel onto the workpiece, slag behavior and removal tend to deteriorate . . . .” Col. 2, ll. 60-64. Kotecki further discloses that “[w]hen the chromium percentage in the deposited alloy exceeds 15-20%, as in stainless steel, the non-metallic constituents of the flux system in the core should be selected to quiet the slag behavior and allow easy removal of the slag.” Col. 2, l. 64 – col. 3, l. 1. Appeal 2009-014208 Application 10/375,574 5 See also col. 7, ll. 12-20 (disclosing that chromium content is generally above 15% by weight in the alloying portion of a stainless steel electrode). In light of the teaching in Godai that at least 10% chromium is “necessary . . . to exhibit corrosion resistance” and in view of the disclosure in Kotecki that the flux cored electrode has at least about 15% chromium for welding stainless steel, we find no suggestion in Kotecki that would have led one of ordinary skill to lower the chromium content of Godai. The Examiner points to the statement in Kotecki that when chromium is added to the electrode for the purpose of depositing a chromium-bearing alloy, such as stainless steel, onto the workpiece, slag behavior and removal tend to deteriorate, as a suggestion to lower the amount of chromium in Godai. Ans. 4 (citing Kotecki, col. 2, ll. 57-68). Kotecki, however, teaches that in instances where the “chromium percentage in the deposited alloy exceeds 15-20%, the non-metallic constituents of the flux system in the core should be selected to quiet the slag behavior and allow easy removal of the slag.” Col. 2, l. 64 – col. 3, l. 1. Thus, Kotecki does not teach or suggest lowering the chromium content to improve slag removal. Rather, Kotecki uses a bismuth releasing compound to quiet the slag behavior and improve slag removal. Col. 3, ll. 12-15. As such, it appears that the Examiner relied on impermissible hindsight in concluding that a person of ordinary skill in the art would have been led by Kotecki to lower the chromium content in Godai to less than 10%, as called for in claim 19. One of ordinary skill in the art interested in optimizing the amounts of chromium employed in the weld wire of Godai would not expect to depart Appeal 2009-014208 Application 10/375,574 6 from the range of amounts specifically taught by Godai to provide desired slag removal properties. To do so would run counter to the direction and guidance of Godai. Godai does not provide any expectation on the part of one of ordinary skill in the art that a weld wire formed using the claimed amounts of chromium would have substantially similar properties as the weld wire disclosed in Godai. According to Godai, employing the claimed amount of chromium would result in unacceptable corrosion resistance properties, not the same or similar properties as the weld wire disclosed in Godai. Thus, the factual basis for the rationale set out in Titanium Metals, 778 F.2d at 783, does not exist in this instance. As such, we cannot sustain the Examiner’s rejection of independent claim 19, or its dependent claims 20, 22-30, 41, and 42, under 35 U.S.C. § 103(a) as being unpatentable over Godai and Kotecki. The Examiner relies on Keeven to teach using germanium on a weld wire. Ans. 5. The Examiner does not rely on Keeven to teach the claimed chromium content, and thus Keeven does not cure the deficiency in the combination of Godai and Kotecki. As such, we cannot sustain the Examiner’s rejection of dependent claims 34-40 under 35 U.S.C. § 103(a) as being unpatentable over Godai, Kotecki, and Keeven. CONCLUSION One of ordinary skill would not have been led to modify the flux cored weld wire of Godai, which is disclosed as being designed for stainless steel welding, to have a chromium content of less than 10% by weight based on the teachings of Kotecki. Appeal 2009-014208 Application 10/375,574 7 DECISION The decision of the Examiner to reject claims 19, 20, 22-30, and 34- 42 is REVERSED. REVERSED nlk