12417849 (P.T.A.B. Jun. 24, 2016)

Ex Parte Suzuki et al

Patent Trial and Appeal BoardJun 24, 2016

12417849 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/417,849 0410312009 Reiichi SUZUKI 22850 7590 06/28/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 340525USO 7244 EXAMINER MAYE,AYUBA ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 06/28/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REIICHI SUZUKI, YU UMEHARA, and TOSHIHIKO NAKANO Appeal2014-000883 Application 12/417,849 Technology Center 3700 Before LINDA E. HORNER, STEP AN STAICOVICI, and JAMES J. MAYBERRY, Administrative Patent Judges. MAYBERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Reiichi Suzuki et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's rejections of claims 2-7. An oral hearing regarding this appeal was held on June 21, 2016. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a method for Metal Inert Gas (MIG) welding using pure argon (Ar) shielding gas and a flux-cored wire. Spec. 1. Appeal2014-000883 Application 12/417,849 Claim 5, the sole independent claim on appeal, is illustrative of the claimed subject matter and is reproduced below: 5. A MIG arc welding method, comprising MIG welding using a flux-cored wire formed with a steel outer sheath filled with a flux, said flux-core wire comprising in said flux, graphite: 0.16 to 2.00 mass% on the basis of a total flux-core wire mass; and iron powder: 20 mass % or more on the basis of a total flux mass, wherein a pure Ar gas conforming to JIS K 1105 Class 1 or 2 is used as a shielding gas, and an arc is generated between the wire set to a positive pole and a base metal set to a negative pole, wherein said iron powder has an Fe concentration of 95 mass % or more and a granularity of 500 Âµm or less. Appeal Br. 8-9, Claims App. REJECTIONS I. Claims 2-7 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. II. Claims 2-7 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kasuya (JP 2006-272405, published Oct. 12, 2006), Wakamoto (JP 62161481, published July 17, 1987), and Yamada (JP 08- 290296 A, published Nov. 5, 1996). ANALYSIS Rejection I Independent claim 5 recites, in relevant part, "wherein ... an arc is generated between the wire set to a positive pole and a base metal set to a negative pole." Appeal Br. 8-9, Claims App. The Examiner determines that 2 Appeal2014-000883 Application 12/417,849 claim 5 is indefinite because the claim term "the wire" lacks sufficient antecedent basis. Final Act. 2 (mailed Oct. 12, 2012). Appellants contend that a person having ordinary skill in the art would understand that the phrase "the wire" refers to the "flux-cored wire" recited in the first line of the claim. Appeal Br. 7. We agree. As Appellants explain, an artisan of ordinary skill would understand that an arc used in arc welding is produced between the positive welding wire and negative base metal and claim 5 clearly defines the welding wire as the recited flux-cored wire. Id. Accordingly, we do not sustain the Examiner's rejection of claim 5 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. We also do not sustain the rejection of claims 2--4, 6, and 7, which depend, directly or indirectly, from claim 5 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Rejection II Independent claim 5 recites a MIG welding method that employs a flux-cored wire and a pure argon shielding gas. See Appeal Br. 8-9, Claims App. The Examiner finds that Kasuya, as modified by the teaching of Yamada, discloses the flux-cored wire of claim 5. Final Act. 3, 5, The Examiner finds that Kasuya does not disclose using pure argon gas as a shielding gas with its flux cored wire, but that W akamoto discloses this subject matter. Id. at 4. The Examiner determines that "[i]t would have been obvious to one [of] ordinary skill in the art to modify Kasuya with MIG arc welding with pure Ar as taught by Wakamoto in order to perform [Wakamoto's] pulse MIG welding [to produce a] welding bead having a 3 Appeal2014-000883 Application 12/417,849 narrow bead width and deep penetration." Final Act. 5 (referencing Wakamoto, Abstract). Appellants contend that a person having ordinary skill in the art would have had no reason to employ W akamoto' s pure argon shielding gas with Kasuya's wire as Kasuya teaches a shield gas that includes argon and from 3 percent to 25 percent carbon dioxide (C02). Appeal Br. 4-6. As Appellants explain, Kasuya teaches that the arc is unstable if the shielding gas includes a concentration of carbon dioxide that is less than 3 percent. Id. at 5. We understand that "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (emphasis added). We agree with Appellants that the Examiner's obviousness conclusion lacks the requisite rational underpinning. The Examiner's rejection fails to explain adequately why an artisan of ordinary skill would employ Wakamoto's pure argon shielding gas with Kasuya's wire in light of Kasuya's teaching that the resulting welding arc is unstable when the shielding gas includes a concentration of carbon dioxide that is less than 3 percent. Further, W akamoto' s disclosure is unclear that it is the argon shielding gas alone, and not the argon shielding gas in conjunction with W akamoto' s welding wire and helium shielding gas, or the pulse welding process that results in W akamoto' s welding bead having a narrow bead width and deep penetration. See Reply Br. 3. As such, the reasoning to combine the references relied on by the Examiner, without further explanation, fails to support the conclusion that a person of ordinary skill 4 Appeal2014-000883 Application 12/417,849 would look past Kasuya's teaching and employ pure argon shielding gas with Kasuya's flux-cored wire. For the reasons above, we do not sustain the Examiner's rejection of claim 5 under 35 U.S.C. Â§ 103(a) as being unpatentable over Kasuya, Wakamoto, and Yamada. We also do not sustain the rejection of claims 2- 4, 6, and 7, which depend, directly or indirectly, from claim 5 under 35 U.S.C. Â§ 103(a) as being unpatentable over Kasuya, Wakamoto, and Yamada. DECISION We reverse the Examiner's rejections of claims 2-7. REVERSED 5