Ex Parte Oishi et al

Patent Trial and Appeal Board

Jan 26, 2015

11886872 (P.T.A.B. Jan. 26, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUKIHIRO OISHI and NOZOMU KAWABE
____________________

Appeal 2012-010115
Application 11/886,872
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and
LEE L. STEPINA, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Yukihiro Oishi and Nozomu Kawabe (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–13. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2012-010115
Application 11/886,872

2
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A magnesium welding wire including:
a wire made of pure magnesium or a magnesium-based
alloy, wherein:
the wire has a shaved surface processed by a shaving
operation, a surface portion of the wire is harder than an inner
portion of the wire, and
the surface of the magnesium welding wire is
substantially free from a coating film and lubricant.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Jarman
Weaver
Shaw
Cucuz
Ziemek
Masumoto
Regazzoni
Matsuguchi
US 2,054,054
US 2,233,928
US 3,157,093
US 3,760,488
US 3,911,541
US 4,990,198
US 5,078,962
US 7,626,139 B2
Sept. 8, 1936
Mar. 4, 1941
Nov. 17, 1964
Sept. 25, 1973
Oct. 14, 1975
Feb. 5, 1991
Jan. 7, 1992
Dec. 1, 2009
Horie
Oishi
US 2003/0000608 A1
US 2004/0163744 A1
Jan. 2, 2003
Aug. 26, 2004
Appeal 2012-010115
Application 11/886,872

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REJECTIONS
The Examiner made the following rejections under 35 U.S.C.
§ 103(a):1
I. Claims 1 and 11 stand rejected as being unpatentable over Jarman
and Shaw.
II. Claim 2 stands rejected as being unpatentable over Jarman, Shaw,
and Regazzoni.
III. Claim 2 stands rejected as being unpatentable over Jarman, Shaw,
and Masumoto.
IV. Claim 2 stands rejected as being unpatentable over Jarman, Shaw,
and Horie.
V. Claims 3, 4, 6, and 12 stand rejected as being unpatentable over
Oishi and Cucuz.
VI. Claims 3–6 and 13 stand rejected as being unpatentable over Oishi
and Shaw.
VII. Claims 3 and 6 stand rejected as being unpatentable over Oishi and
Weaver.
VIII. Claims 3 and 6 stand rejected as being unpatentable over Oishi and
Ziemek.

1 We are sympathetic to Appellants’ frustration with the Examiner’s failure
“to choose the best available prior art” and instead issue cumulative
rejections of the claims. See Appeal Br. 5. However, failure to follow
instructions in the Manual of Patent Examining Procedure (MPEP) is not, in
and of itself, an appealable matter. The Patent Trial and Appeal Board does
not exercise supervisory authority over the Primary Examiner.
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Application 11/886,872

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IX. Claims 710 stand rejected as being unpatentable over Oishi,
Cucuz, and Matsuguchi.
X. Claims 710 stand rejected as being unpatentable over Oishi,
Shaw, and Matsuguchi.
XI. Claims 8 and 10 stand rejected as being unpatentable over Oishi,
Weaver, and Matsuguchi.
XII. Claims 8 and 10 stand rejected as being unpatentable over Oishi,
Ziemek, and Matsuguchi.
XIII. Claims 3, 4, 6, and 12 stand rejected as being unpatentable over
Masumoto and Cucuz.
XIV. Claims 3 and 6 stand rejected as being unpatentable over
Masumoto and Weaver.
XV. Claims 3 and 6 stand rejected as being unpatentable over
Masumoto and Ziemek.
XVI. Claims 3–6 and 13 stand rejected as being unpatentable over
Masumoto and Shaw.
XVII. Claims 7–10 stand rejected as being unpatentable over Masumoto,
Cucuz, and Matsuguchi.
XVIII. Claims 7–10 stand rejected as being unpatentable over Masumoto,
Shaw, and Matsuguchi.
XIX. Claims 8 and 10 stand rejected as being unpatentable over
Masumoto, Weaver, and Matsuguchi.
XX. Claims 8 and 10 stand rejected as being unpatentable over
Masumoto, Ziemek, and Matsuguchi.

Appeal 2012-010115
Application 11/886,872

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OPINION
Rejections I–IV
Independent claim 1 requires the surface of the magnesium welding
wire to be “substantially free from a coating film and lubricant.” Appeal Br.
14, Claims App. Appellants point out that “Shaw discloses that a lubricant
is necessary for the drawing and shaving process.” Appeal Br. 6 (citing
Shaw, col. 3, ll. 49–53; col. 4, ll. 49–53). Appellants assert that “[s]ince a
lubricant is used during the shaving process and applied to the freshly cut
surface, the wire of Shaw necessarily has lubricant on its surface after
shaving.” Id.
The Examiner does not dispute Appellants’ assertion. Rather, the
Examiner responds to Appellants’ argument by pointing out that Jarman
does not disclose a film or presence of lubricant or oxide. Ans. 15. This
response is unavailing because we understand the Examiner’s rejection as
proposing to modify Jarman by using shaving, which introduces lubricant to
the surface of the wire, in combination with wire drawing (i.e., reduction) as
taught by Shaw to impart the surface hardening to the wire to enhance its
cut-ability. Id. at 5, 15.
The Examiner additionally points out that claim 1 merely requires that
the wire be “substantially free from a coating film and lubricant” and, thus,
by virtue of the use of the qualifier “substantially,” “does not preclude a
small amount of film and lubricant.” Id. at 15. We agree with the Examiner
that claim 1, in using the term “substantially,” does not preclude a small
(i.e., insubstantial) amount of film and/or lubricant. However, Appellants’
Specification explains that following a processing step (i.e., drawing)
utilizing a lubricant, an alkali cleaning operation or a grease removing
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Application 11/886,872

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treatment is performed on the surface of the wire to “remove the lubricant
and coating therefrom as much as possible.” Spec. 11. Further, the
Specification explains that if the shaving operation, which presumably is
conducted in Appellants’ process without using lubricant, is performed after
a first drawing step, the shaving operation sufficiently removes both the
lubricant or coating and oxides introduced from the first drawing step. Id. at
12. Even if a second drawing operation is performed on the wire for fine
dimensional adjustment following the shaving operation, the second drawing
operation aims at such small reduction that it can be performed at lower
temperatures, even at room temperature, thereby reducing the possibility of
generating oxides, and oil or wet lubricants can be removed subsequently by
a cleaning treatment or grease removing treatment. Id.at 13–14.
A person having ordinary skill in the art would understand from the
aforementioned disclosure in Appellants’ Specification that the claim
limitation “substantially free from a coating film and lubricant” does not
allow for the amount of lubricant that would be left behind by a processing
step in which lubricant is applied to the wire surface, without any subsequent
cleaning or grease removing treatment as disclosed by Appellants. The
Examiner does not point to any teaching of a cleaning or grease removing
treatment in either Jarman or Shaw, and does not propose modifying
Jarman’s wire, made by a process including shaving and drawing as taught
by Shaw, by subjecting it to a subsequent cleaning or grease removing
process, much less articulate a reason why it might have been obvious to do
so.
For the above reasons, the Examiner fails to establish a prima facie
case that the subject matter of claim 1 would have been obvious. Thus, we
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do not sustain the rejection of claim 1 or its dependent claim 11 as being
unpatentable over Jarman and Shaw.
In rejecting claim 2, which depends from claim 1, the Examiner does
not rely on any teachings from Regazzoni, Masumoto, or Horie that would
remedy the deficiency of the combination of Jarman and Shaw vis-à-vis
claim 1. Thus, we also do not sustain the rejection of claim 2 as being
unpatentable over Jarman, Shaw, and Regazzoni; the rejection of claim 2 as
being unpatentable over Jarman, Shaw, and Masumoto; or the rejection of
claim 2 as being unpatentable over Jarman, Shaw, and Horie.
Rejection V
Appellants group independent claims 3 and 6 together in contesting
this rejection. Appeal Br. 8–10. Further, Appellants rely solely on their
arguments for independent claim 3 in contesting the rejection of claim 4,
which depends from claim 3. Id. at 12. Appellants present a separate
argument for claim 12. Id. at 11. Thus, we decide the appeal of this
rejection on the basis of claims 3 and 12, with claims 4 and 6 standing or
falling with claim 3.
Appellants argue that Cucuz is directed to shaving wires made of
“‘soft’ materials,” such as steel, not magnesium wires, and, thus, one of
ordinary skill in the art would not have been motivated to apply the shaving
process for non-magnesium wires to magnesium wires because of the
differences between magnesium and steel. Appeal Br. 8. Appellants
additionally argue that Oishi’s magnesium wires have excellent strength and
toughness and that one of ordinary skill in the art would not have been
motivated to apply the shaving process of Cucuz to Oishi’s magnesium wire
because this “would change the property of the magnesium wire.” Id. at 9.
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Appellants’ arguments are not convincing. The invention of Cucuz
“relates to the cold finishing of metals, and more particularly, to the
simultaneous surface removal and warm or hot drawing of wire.” Cucuz,
col. 1, ll. 3–5. In other words, the teachings of Cucuz are not, as Appellants
assert, limited to steel. Further, Cucuz teaches that the drawing, shaving,
and drawing process removes undesirable surface imperfections while
simultaneously improving the physical and mechanical properties of the
wire. Id., col. 1, ll. 59–64; col. 3, ll. 9–15, 39–46; col. 4, ll. 16–20, 24–28;
Ans. 8. Appellants do not point to any disclosure in Cucuz that suggests that
the Cucuz process would change any property of the magnesium wire in an
undesirable way.
Appellants also argue that the Examiner fails to provide any reason
why the proposed combination of Cucuz with Oishi necessarily results in the
order of the drawing process and the shaving process called for in claim 3.
Appeal Br. 9.
Claim 3 recites a step of drawing an extruded or rolled magnesium
material to obtain a drawn wire and, after the step of drawing, a step of
shaving the surface of the wire. Appeal Br. 14, Claims App. Cucuz
discloses drawing a hot-rolled workpiece through lead die 22 and then, after
the drawing step, shaving the surface of the drawn wire with cutting tool 24.
Cucuz, col. 3, ll. 1–15, 39–46; Figs. 1, 2. Accordingly, applying the Cucuz
process to the wire material of Oishi as proposed by the Examiner (Ans. 8)
would result in the order of drawing and shaving called for in claim 3.2

2 We also note that Cucuz teaches passing the wire through finish die 30
after the shaving step. Cucuz, col. 4, ll. 23–27; Fig. 2. Thus, applying the

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For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 3. Thus, we sustain the rejection
of claims 3, 4, and 6 as being unpatentable over Oishi and Cucuz.
Claim 12 depends from claim 3, and further recites “an amount of
shaving in the step of shaving is not larger than 200 µm from a surface of the
drawn wire.” Appeal Br. 16, Claims App. The Examiner finds that the
shaving step of Cucuz satisfies this requirement. Ans. 8, 17. Appellants
argue that “the Examiner failed to provide where in Cucuz this value is
disclosed.” Appeal Br. 11. In response to that argument, the Examiner
explains that Cucuz discloses a lead die diameter of 0.405/0.406 inches and
a cutter diameter of 0.391/0.392 inches. Ans. 17; see also Cucuz, col. 5, ll.
24–25. With such lead die and cutter diameters, the shaving step of Cucuz
would reduce the wire diameter by 0.014 inches (355 µm), thereby removing
175.5 µm, which is not larger than 200 µm, from the surface of the wire.
Ans. 17.
Presumably acknowledging this disclosure in Cucuz, Appellants argue
that the Examiner fails to provide any basis that the amount of shaving
taught by Cucuz is applicable to a magnesium wire. Reply Br. 7. However,
there is nothing in either Cucuz or Oishi that would suggest that this amount
of shaving would not be applicable to Oishi’s magnesium wire, and
Appellants do not provide any evidence or technical reasoning to show that a
person of ordinary skill in the art would have had reason to believe the this
degree of shaving would have been inappropriate for Oishi’s magnesium
wire.

Cucuz process to the wire material of Oishi as proposed by the Examiner
would also result in the order of shaving and drawing called for in claim 6.
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Moreover, the Examiner also reasons that it would have been obvious
for a person of ordinary skill in the art to select the claimed values as a
matter of routine optimization. Ans. 8. Appellants do not contest this
reasoning by the Examiner. See Appeal Br. 11–12. The Examiner’s
reasoning has rational underpinnings because Cucuz teaches that the shaving
step removes undesirable surface defects such as seams, laps, slivers, and
decarburization, and takes into account the depth of these imperfections
detected by inspection before selecting the lead die and cutter diameters.
Cucuz, col. 3, ll. 42–46; col. 5, ll. 6–8.3
For the above reasons, Appellants do not apprise us of error in the
Examiner’s rejection of claim 12 as unpatentable over Oishi and Cucuz.
Thus, we sustain the rejection of claim 12 as unpatentable over Oishi and
Cucuz.
Rejection VI
Appellants group independent claims 3 and 6 together in contesting
this rejection. Appeal Br. 8–10. Further, Appellants rely solely on their
arguments for independent claim 3 in contesting the rejection of claims 4, 5,
and 13, which depend from claim 3. Id. at 12. Thus, we select claim 6 to
decide the appeal of this rejection, with claims 3–5 and 13 standing or
falling with claim 6.
In contesting this rejection, Appellants rely on substantially the same
arguments asserted against the combination of Oishi and Cucuz. See Appeal

3 In cases where the optimized variable is a result-effective variable and the
general conditions of a claim are disclosed in the prior art, “it is not
inventive to discover the optimum or workable ranges by routing
experimentation.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) (citation omitted).
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Br. 8–10. For essentially the same reasons set forth above, Appellants’
arguments are not convincing.
Like Cucuz, Shaw does not specifically mention magnesium.
Although Shaw mentions steel (col. 1, ll. 34–35), Shaw’s invention “relates
to the removal of surface metal from . . . wire” (col. 1, ll. 10–11). In other
words, Shaw’s teachings are directed to metal generally and are not limited
to steel, as Appellants assert. See Appeal Br. 8. Further, Shaw teaches that
“the reduction step taken in advance of the shaving step will . . . eliminate
non-uniformities in the surface of the work and . . . round out or smooth the
surface prior to advancement through the shaving tool,” thereby stabilizing
the shaving operation. Shaw, col. 4, ll. 8–12, 16–17. Shaw also teaches
that the reduction step preceding the shaving step tends to work the surface
of the material to cause hardening thereof, thereby enhancing its cut-ability
from the work. Id., col. 4, ll. 17–19. Thus, Shaw’s multiple step process
provides a rapid and efficient method for removing surface metal from the
work, while avoiding problems experienced with prior art shaving methods
combining reduction dies and shaving tools and ensuring a better wire
surface. Id., col. 1, ll. 27–37; col. 7, ll. 5–17; Ans. 9. Appellants do not
point to any disclosure in Shaw that suggests that Shaw’s process would
change any property of the magnesium wire in an undesirable way.
Claim 6 requires a step of shaving the surface of an extruded or rolled
base magnesium material and, after the shaving step, a step of drawing the
material. Appeal Br. 15, Claims App. Shaw discloses such a method. See
Figs. 2, 3. Accordingly, applying Shaw’s process to the wire material of
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Oishi as proposed by the Examiner (Ans. 9) would result in the order of
shaving and drawing called for in claim 6.4
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 6. Thus, we sustain the rejection
of claims 3–6 and 13 as being unpatentable over Oishi and Shaw.
Rejections IX and X
Appellants rely solely on their arguments asserted against the
rejections of independent claim 6 in contesting the rejections of claims 7–10.
Appeal Br. 12. For the reasons discussed above, these arguments do not
apprise us of error in the rejection. Thus, we also sustain the rejection of
claims 7–10 as being unpatentable over Oishi, Cucuz, and Matsuguchi and
the rejection of claims 7–10 as being unpatentable over Oishi, Shaw, and
Matsuguchi.
Rejections VII, VIII, and XI–XX
Our affirmance of Rejections V, VI, IX, and X above is dispositive for
claims 3–10, 12, and 13 (i.e., all of the claims subject to Rejections VII,
VIII, and XI–XX). Thus, we need not reach a determination as to the
propriety of Rejections VII, VIII, and XI–XX.

DECISION
I. The Examiner’s decision rejecting claims 1 and 11 as being
unpatentable over Jarman and Shaw is REVERSED.

4 Moreover, as already mentioned above, Shaw discloses a reduction step
taken in advance of the shaving step. Shaw, col. 4, ll. 8–12. Thus, applying
Shaw’s process to the wire material of Oishi as proposed by the Examiner
would also result in the order of drawing and shaving called for in claim 3.
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II. The Examiner’s decision rejecting claim 2 as being unpatentable
over Jarman, Shaw, and Regazzoni is REVERSED.
III. The Examiner’s decision rejecting claim 2 as being unpatentable
over Jarman, Shaw, and Masumoto is REVERSED.
IV. The Examiner’s decision rejecting claim 2 as being unpatentable
over Jarman, Shaw, and Horie is REVERSED.
V. The Examiner’s decision rejecting claims 3, 4, 6, and 12 as being
unpatentable over Oishi and Cucuz is AFFIRMED.
VI. The Examiner’s decision rejecting claims 3–6 and 13 as being
unpatentable over Oishi and Shaw is AFFIRMED.
VII. We do not reach a determination on the Examiner’s decision
rejecting claims 3 and 6 as being unpatentable over Oishi and
Weaver.
VIII. We do not reach a determination on the Examiner’s decision
rejecting claims 3 and 6 as being unpatentable over Oishi and
Ziemek.
IX. The Examiner’s decision rejecting claims 710 as being
unpatentable over Oishi, Cucuz, and Matsuguchi is AFFIRMED.
X. The Examiner’s decision rejecting claims 710 as being
unpatentable over Oishi, Shaw, and Matsuguchi is AFFIRMED.
XI. We do not reach a determination on the Examiner’s decision
rejecting claims 8 and 10 as being unpatentable over Oishi,
Weaver, and Matsuguchi.
XII. We do not reach a determination on the Examiner’s decision
rejecting claims 8 and 10 as being unpatentable over Oishi,
Ziemek, and Matsuguchi.
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XIII. We do not reach a determination on the Examiner’s decision
rejecting claims 3, 4, 6, and 12 as being unpatentable over
Masumoto and Cucuz.
XIV. We do not reach a determination on the Examiner’s decision
rejecting claims 3 and 6 as being unpatentable over Masumoto and
Weaver.
XV. We do not reach a determination on the Examiner’s decision
rejecting claims 3 and 6 as being unpatentable over Masumoto and
Ziemek.
XVI. We do not reach a determination on the Examiner’s decision
rejecting claims 3–6 and 13 as being unpatentable over Masumoto
and Shaw.
XVII. We do not reach a determination on the Examiner’s decision
rejecting claims 7–10 as being unpatentable over Masumoto,
Cucuz, and Matsuguchi.
XVIII. We do not reach a determination on the Examiner’s decision
rejecting claims 7–10 as being unpatentable over Masumoto,
Shaw, and Matsuguchi.
XIX. We do not reach a determination on the Examiner’s decision
rejecting claims 8 and 10 as being unpatentable over Masumoto,
Weaver, and Matsuguchi.
XX. We do not reach a determination on the Examiner’s decision
rejecting claims 8 and 10 as being unpatentable over Masumoto,
Ziemek, and Matsuguchi.

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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)(iv).

AFFIRMED-IN-PART
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