Ex Parte Rajan

Patent Trial and Appeal Board

Oct 25, 2012

11063080 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VAIDYANATH B. RAJAN
____________________

Appeal 2010-009782
Application 11/063,080
Technology Center 3700
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Before: JOHN C. KERINS, EDWARD A. BROWN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009782
Application 11/063,080

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-28 and 80-109. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse all rejections and enter a new ground of rejection of all
claims.

THE CLAIMED SUBJECT MATTER
The claimed subject matter concerns “electrodes that form weld beads
with enhanced slag placement and removal properties.” Specification, p. 1,
l. 3. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A metal electrode to form a weld bead with
improved slag forming properties with respect to
reduced accumulation of slag in toes of the weld
bead comprising a metal rod that includes a slag-
modifying additive, said slag modifying agent
including metallic indium, indium compound, and
mixtures thereof.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Longini
Mataré
Sverdrup
Shibata
Kuwayama
Weiner
Nikodym
US 2,836,520
US 2,944,167
US 3,558,360
US 4,161,403
US 4,432,937
US 5,114,876
US 6,608,284 B1
May 27, 1958
Jul. 5, 1960
Jan. 26, 1971
Jul. 17, 1979
Feb. 21, 1984
May 19, 1992
Aug. 19, 2003

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Application 11/063,080

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REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym and Sverdrup.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym and Kuwayama.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym and Weiner.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym and Longini.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym and Mataré.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym, Sverdrup, and Shibata.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym, Kuwayama, and Shibata.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym, Weiner, and Shibata.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym, Longini, and Shibata.
Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Nikodym, Mataré, and Shibata.1

1 Appellant refers to a rejection of claims 80 and 94 under 35 U.S.C.
§ 132(a) (App. Br. 6), but no such claim rejection is of record. The
Examiner’s objection to the specification under 35 U.S.C. § 132(a) (Ans.
3-4) is not an appealable matter because no related claim rejection under 35
U.S.C. 112, first paragraph has been made. See M.P.E.P. § 2163.06(II).
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ANALYSIS
We observe at the outset that every claim recites that the slag
modifying agent includes “metallic indium, indium compound, and mixtures
thereof” (emphasis added).2 Use of the conjunction “and” in the listing of
materials can be reasonably construed as requiring the slag modifying agent
to include all four of these materials (i.e., metallic indium, indium
compound, and at least two mixtures thereof) in the slag modifying agent.3
The Examiner’s rejections and Appellants’ arguments, however, appear to
interpret the claims as requiring one or more of these materials, which is
inconsistent with the recitation of the term “and.” Moreover, the
Specification appears not to disclose any single embodiment that
simultaneously includes metallic indium, indium compound, and at least two
mixtures thereof, and thus does not appear to support such other construction
of the claims. Consequently, we cannot arrive at an unambiguous
interpretation of the claims consistent with the Specification. As a result, the
claims are so indefinite as to require “considerable speculation as to meaning
of the terms employed and assumptions as to the scope of such claims.” See
In re Steele, 305 F.2d 859, 862, (CCPA 1962).
We must therefore reverse pro forma all prior-art rejections of the
appealed claims without reaching their merits. See id. In view of the lack of
clarity in the claims, and pursuant to our authority under 37 C.F.R.
§ 41.50(b)(2011), we enter a new ground of rejection against claims 1-28

2 We note that “said slag modifying agent” lacks antecedent basis in claims 1
and 94.
3 Claim 1 as originally filed recited “metallic indium, indium compound, or
mixtures thereof” and was amended to its present form by Amendment filed
May 15, 2008. Claim 94 was newly presented in the same Amendment.
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and 80-109 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
Applicant regards as the invention. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim . . . indefinite.”).

DECISION
For the above reasons, the Examiner’s rejection of claims 1-28 and
80-109 is REVERSED.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1-28 and 80-109 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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