Ex Parte Nikodym

Board of Patent Appeals and Interferences

Sep 12, 2011

10376185 (B.P.A.I. Sep. 12, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/376,185 02/26/2003 Anthony Franklin Nikodym 483471-002-D1 9489
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 2010-000751
Application 10/376,185
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 2010-000751
Application 10/376,185

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STATEMENT OF THE CASE
Anthony Franklin Nikodym (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 32, 47, 48, and
51-81. Claims 1-31, 33, 49, and 50 have been canceled, and claims 34-46
have been withdrawn. 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 32, reproduced below, is representative of
the subject matter on appeal.
32. A method for forming a low alloy steel or a mild steel
weld having readily removable slag islands which comprises
melting in an electric arc a metal core weld wire to form a low
alloy steel or a mild steel weld, the metal core weld wire
comprising a steel sheath and a core, the core including a
composition disposed therein that includes a slag-modifying
additive selected from the group consisting of antimony and
compounds thereof, the metal core weld wire containing less
than 5% by weight nonmetallic inorganic components and less
than 10% by weight chromium wherein forming a low alloy
steel weld said wire contains based upon the total weight of the
wire about:
ELEMENT Wt.%
C 0.003-0.13
Mn 0.5-3.5
Si 0.2-2.0
Cr <10
Ni 0.0-3.75
Ti 0.0-0.1
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Mo 0.0-1.2
B 0.0-0.1
V 0.0-0.25
Sb 0.04-0.3
Fe 85.6-99.25
and wherein forming a mild steel weld said wire contains based
upon the total weight of the wire about:
ELEMENT Wt.%
C 0.003-0.12
Mn 0.5-3.5
Si 0.2-2.0
Cr 0.0-0.5
Ni 0.0-0.5
Ti 0.0-0.1
Mo 0.0-0.5
B 0.0-0.1
V 0.0-0.5
Sb 0.04-0.3
Fe 96.25-99.25

THE EVIDENCE
The Examiner relies upon the following evidence:
Godai US 4,345,140 Aug. 17, 1982
Nagarajan US 5,824,992 Oct. 20, 1998
Keegan US 5,857,141 Jan. 5, 1999
Kimoto JP 06-142979 A May 24, 1994
Ogawa1 JP 06-182585 Jul. 5, 1994

1 The surname of the lead inventor on this prior art reference is Nagata. We
refer to this reference as “Ogawa” for consistency with the nomenclature
used in the Answer and the Briefs.
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THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 32, 47, 48, 51-55, 57, 59-68, 71-74, and
76-81 under 35 U.S.C. § 103(a) as being unpatentable over Nagarajan
and Kimoto.
2. The Examiner rejected claim 56 under 35 U.S.C. § 103(a) as being
unpatentable over Nagarajan, Kimoto, and Ogawa.2
3. The Examiner rejected claims 58, 69, 70, and 75 under 35 U.S.C.
§ 103(a) as being unpatentable over Nagarajan, Kimoto, and Keegan.
4. The Examiner rejected claims 32, 47, 48, 51-55, 57, 59-68, 71-74, and
76-81 under 35 U.S.C. § 103(a) as being unpatentable over Godai and
Kimoto.
5. The Examiner rejected claim 56 under 35 U.S.C. § 103(a) as being
unpatentable over Godai, Kimoto, and Ogawa.

2 This a new ground of rejection first presented in the Examiner’s Answer.
Ans. 6. The Examiner failed to prominently identify the new ground of
rejection in the “Grounds of Rejection to be Reviewed on Appeal” section
and the “Grounds of Rejection” section of the Answer. See MPEP
§ 1207.02 and 1207.03(I). See also Ans. 3 (“The appellant’s statement of
the grounds of rejection to be reviewed on appeal is correct.”). As such,
Appellant did not specifically address the new ground of rejection in the
Reply Brief. Reply Br. 3 (“The grounds of rejection have not changed and
remain as set forth in the Appeal Brief.”). However, Appellant presented
arguments against the underlying combination of Nagarajan and Kimoto in
the Reply Brief. We treat these arguments as equally applicable to the new
ground of rejection of claim 56 based on Nagarajan, Kimoto, and Ogawa.
Thus, we do not dismiss the appeal as to claim 56. See 37 C.F.R. § 41.39(b).
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CONTENTIONS AND ISSUES
With regard to Rejections 1-3, Appellant argues that the Examiner
failed to adequately articulate a reason with rational underpinnings to
explain why one of ordinary skill would have been led to combine the
components of Nagarajan and Kimoto in the manner claimed to result in the
method of claim 32. App. Br. 10-11, Reply Br. 4. The Examiner stated that
“Kimoto et al. is merely used to teach the use of Sb (antimony) to negate or
minimize surface build up during the welding process.” Ans. 9. Appellant
argues that Kimoto “does not teach [antimony] to minimize surface build up
(slag), thus there is no motivation or suggestion to combine Kimoto et al.
with Nagarajan et al.” Reply Br. 5-6. One issue presented by this appeal is
whether one of ordinary skill in the art would have been led to modify the
electrode of Nagarajan to add antimony in view of the teachings of Kimoto.
With regard to Rejections 4 and 5, Appellant argues that the claim
limitation of the metal core weld wire containing less than 10% by weight
chromium distinguishes claim 32 over Godai and Kimoto. App. Br. 9. The
Examiner does not rely on Kimoto to teach less than 10% by weight
chromium and acknowledges that Godai does not teach less than 10% by
weight chromium. Ans. 5, 14. Rather, the Examiner determined that
Godai’s teaching of 10% to 35% chromium closely approximates the
claimed composition and that one of ordinary skill in the art would have
considered the claimed compositions to have been obvious in light of the
chromium range disclosed in Godai. Ans. 14-15. Another issue presented
by this appeal is whether one of ordinary skill in the art would have found
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the claimed weld wire having less than 10% by weight chromium obvious in
view of the disclosure of 10% by weight chromium in Godai.
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
Rejections based on Nagarajan and Kimoto
The Examiner’s rejection relies on Kimoto “to teach the use of Sb
(antimony) to negate or minimize surface build up during the welding
process.” Ans. 9. We disagree with the Examiner’s finding that Kimoto
teaches the use of antimony to minimize surface build up during welding.
Kimoto relates to “gas shield arc welding wires that yield a solidly
welded metal that is not prone to defects, particularly to pits and blow holes,
when steel materials that are zinc plated or otherwise pretreated for anti-
corrosion are subjected to gas shield arc welding.” Kimoto 2, para. [0001].
Kimoto explains that “[w]hen a zinc-plated steel material is welded, zinc on
the surface of the steel material . . . enters a molten droplet or a weld pool
from the steel material surface at the time of welding” and “[a]ir is sucked in
as zinc vapor bumps and remain as bubbles, . . . resulting in numerous
defects, such as pits and blow holes.” Kimoto 3, para. [0003]. Kimoto
discloses a gas shield arc welding wire that reduces the occurrence of pits
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and blow holes. Kimoto 4, para. [0006]. Kimoto’s weld wire contains 0.020
– 0.200% antimony. Kimoto 5, para. [0007]. Kimoto teaches that a suitable
quantity of antimony will “erupt from within the molten droplets to outside
the droplets, thereby controlling the entry of zinc and nitrogen into the
molten drops.” Kimoto 8, para. [0013], see also Kimoto 10, para. [0016].
As such, Kimoto teaches the use of antimony to reduce the occurrence of
pits or blow holes that form during welding of a zinc-plated steel material
that are caused when zinc on the surface of the steel material enters a molten
droplet or a weld pool from the steel material surface. Kimoto does not
disclose the addition of antimony to negate or minimize surface build up
during the welding process.
Further, Kimoto’s solution to the problem of pits and blow holes is
not limited to the addition of antimony to the weld wire. Rather, Kimoto
teaches that reduction of pits or blow holes during welding of a zinc-plated
steel material is achieved by:
the combined effect of actions that include activating oxidation
reaction by adding a larger quantity of C, increasing the partial
pressure of CO, and adding suitable quantities of Si, Al and/or
Ti, in order to promote the oxidation of zinc; facilitating the
release of gas from the weld pool by increasing the oxygen
potential, through the activation of oxidation, in order to reduce
the viscosity of the molten metal; and immobilizing nitrogen in
the material by adding an appropriate amount of Al and/or Ti,
which have a strong affinity for nitrogen.
Kimoto 7-8, para. [0012]. The Examiner appears to have impermissibly
picked the disclosure of antimony from Kimoto without consideration of
what the totality of the disclosure in Kimoto would have fairly suggested to
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one of ordinary skill in the art. See In re Hedges, 783 F.2d 1038, 1041 (Fed.
Cir. 1986) (“It is impermissible within the framework of section 103 to pick
and choose from any one reference only so much of it as will support a given
position, to the exclusion of other parts necessary to the full appreciation of
what such reference fairly suggests to one of ordinary skill in the art.”
(citations omitted)).
The Examiner does not rely on Ogawa or Keegan to teach the use of
antimony, and thus neither Ogawa nor Keegan cures the deficiency in the
Nagarajan/Kimoto combination. Ans. 6. As such, we cannot sustain the
Examiner’s rejections of independent claim 32, or its dependent claims 47,
48, 51-55, 57, 59-68, 71-74, and 76-81 under 35 U.S.C. § 103(a) as being
unpatentable over Nagarajan and Kimoto, or dependent claim 56 under
35 U.S.C. § 103(a) as being unpatentable over Nagarajan, Kimoto, and
Ogawa, or dependent claims 58, 69, 70 and 75 under 35 U.S.C. § 103(a) as
being unpatentable over Nagarajan, Kimoto and Keegan.
Rejections based on Godai and Kimoto
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
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
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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 32. Ans. 14 (finding that “the exact
amounts of each of the constituents as presently claimed are not disclosed in
the prior art” and that “less than 10% and 10% are closely approximating.”).
In light of the teaching in Godai that at least 10% chromium is
“necessary . . . to exhibit corrosion resistance,” we find no suggestion in the
prior art that would have led one of ordinary skill to lower the chromium
content of Godai. 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 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.
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The Examiner does not rely on Kimoto or Ogawa to teach the claimed
chromium content, and thus neither Kimoto nor Ogawa cures the deficiency
in the disclosure of Godai. Ans. 4, 7. As such, we cannot sustain the
Examiner’s rejections of independent claim 32, or its dependent claims 47,
48, 51-55, 57, 59-68, 71-74, and 76-81 under 35 U.S.C. § 103(a) as being
unpatentable over Godai and Kimoto, or dependent 56 under 35 U.S.C.
§ 103(a) as being unpatentable over Godai, Kimoto, and Ogawa.
CONCLUSIONS
One of ordinary skill would not have been led to modify the electrode
of Nagarajan to add antimony in view of the teachings of Kimoto.
One of ordinary skill would not have found the claimed weld wire
having less than 10% by weight chromium obvious in view of the disclosure
of 10% by weight chromium in Godai.
DECISION
The decision of the Examiner to reject claims 32, 47, 48, and 51-81 is
REVERSED.

REVERSED

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