Ex Parte YAMAZAKI et al

Patent Trial and Appeal Board

Jan 31, 2019

13085966 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/085,966 04/13/2011 Kei YAMAZAKI
22850 7590 02/04/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
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.
378175US41 3163
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEI YAMAZAKI, REIICHI SUZUKI, and YIMIN YUAN
Appeal2017-004892
Application 13/085,966
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 4--9, and 11. We have jurisdiction under 35 U.S.C.
§ 6(b). 1
We AFFIRM-IN-PART.
1 This matter came before the Board for regularly scheduled oral hearing
January 16, 2018. Citations to the hearing transcript are preceded by the
abbreviation "Tr."
Appeal2017-004892
Application 13/085,966
THE INVENTION
Appellants' invention relates to arc welding. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for high-current-density gas-shielded arc
welding, the method comprising:
performing pulsed arc welding with a flux-cored wire as an
electrode wire, and the flux-cored wire comprises
a steel sheath; and
a flux filled in the sheath, and
the flux-cored wire has a flux filling rate of 10 to 25
percent by mass based on the total mass of the wire and
contains carbon (C) in a content of 0.08 percent by mass or
less, silicon (Si) in a content of 0.5 to 1.5 percent by mass,
manganese (Mn) in a content of 1.5 to 2.5 percent by mass,
and titanium (Ti) in a content of 0.1 to 0.3 percent by mass,
wherein the pulsed arc welding is carried out by passing a
pulsed current so that a pulse peak current density during a
pulse peak time Tp is 400 to 950 A/mm2, a pulse base current
density during a pulse base time Tb is 200 A/mm2 or more and
differs from the pulse peak current density by 200 to 400
A/mm2, and an average current density is 350 to 750 A/mm2,
and
wherein the average current density is calculated by
dividing an average of the pulsed current during the pulsed arc
welding by a sectional area of a current path in the flux-cored
wire.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Gordish
Gault
Arakawa
Hartman
Koshiishi
us 5,233,160
US 6,303,891 Bl
US 2005/0269296 Al
US 2007/0181549 Al
US 2007 /0210048 Al
2
Aug. 3, 1993
Oct. 16, 2001
Dec. 8, 2005
Aug. 9, 2007
Sept. 13, 2007
Appeal2017-004892
Application 13/085,966
The following rejections are before us for review:
1. Claims 1, 4, 5, 6, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Koshiishi, Hartman, and Arakawa.
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Koshiishi, Hartman, Arakawa, and Gault.
3. Claims 7-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koshiishi, Hartman, Arakawa, and Gordish.
Claim 1
OPINION
Unpatentability of Claims 1, 4, 5, 6, and 11
over Koshiishi, Hartman, and Arakawa
The Examiner finds that Koshiishi discloses a pulsed arc welding
method as claimed, except for using a steel sheathed, flux-cored welding
wire that is filled as claimed. Final Action 3--4. The Examiner relies on
Hartman as disclosing a steel sheathed, flux-cored electrode with a flux fill
composition in the range of 12-30 percent of the electrode weight and with
constituent concentrations of carbon, silicon, manganese, and titanium, each
within the claimed range. Id. at 4. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify the method of Koshiishi with a steel sheathed
electrode as taught by Hartman. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to provide a weld with
improved yield strength, tensile strength, and impact toughness. Id.
Appellants' first argument is that the Examiner cited to the wrong
paragraphs in Koshiishi for disclosure of welding current. Appeal Br. 5.
This argument is not persuasive. In their Appeal Brief, Appellants admit
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that Koshiishi discloses the welding current parameters recited in the Final
Action, albeit in paragraph 36 instead of paragraphs 14 and 15. Id. at 6. We
further note that welding current parameters are disclosed in the Abstract of
Koshiishi, which appears on the first page of the patent publication.
Koshiishi, Abstract, see also ,r 18.
We fail to see how Appellants have been prejudiced by the
Examiner's typographical error with respect to paragraph citations in
Koshiishi. Under the facts and circumstances attendant to this case, the
Examiner's incorrect paragraph citation does not rise to the level of
reversible error.
Next, Appellants argue that the applied art fails to disclose the final
limitation of claim 1, namely:
wherein the average current density is calculated by
dividing an average of the pulsed current during the pulsed arc
welding by a sectional area of a current path in the flux-cored
wire.
Appeal Br. 10, Claims App., claim 1. This argument is not persuasive. The
above quoted limitation is definitional in nature. In other words, it merely
informs a person of ordinary skill in the art how to perform the calculation
that leads to average current density. Thus, as long as the applied art
discloses an average current that, when divided by a sectional area of a
current path, yields an average current density within the claimed range, the
claim is satisfied. In the instant case, Koshiishi discloses both peak and base
current and time durations. Koshiishi, Abstract, ,r,r 18, 36, and 36. This is
sufficient to calculate an average current. Koshiishi and Hartman each
disclose information that relates to a sectional area of a current path of a
flux-cored wire. Koshiishi ,r,r 78, 82, 100, 122, and 140; Hartman ,r,r 29, 33,
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34, and 50. It is not necessary that the references explicitly disclose the
claimed formula. It is sufficient that they disclose the underlying data from
which the necessary calculations can be performed using the claimed
formula. To clarify, we do not construe the claim language as reciting a
positive step of performing the calculation.
Next, Appellants fault the Examiner for relying on Arakawa in the
rejection of claim 1. Appeal Br. 9--10. Appellants argue that Arakawa
relates to machining currents, not welding currents. Id. This argument fails
to apprise us of Examiner error. The Examiner's first ground of rejection
groups claims 1, 4, 5, 6, and 11 together as unpatentable over three
references. Final Action 3-5. However, the Examiner's findings of fact
with respect to the rejection of claim 1 relies only on Koshiishi and
Hartman. Id. 3--4. Arakawa appears to be relied on only as to claims 4, 5,
and 11, and for providing calculations and control operations that are not
claimed in claim 1. Id. at 5. Again, we do not construe the claim language
to require a positive step of performing the calculation. 2
Next, Appellants criticize the Examiner for relying on a statement of
law regarding intended use that is allegedly only applicable to apparatus
claims and, therefore, is not applicable to the instant method claims. Appeal
Br. 10-11. Appellants are technically correct about the statement of law
regarding intended use. See Parker Vision, Inc. v. Qualcomm Inc., 903 F.3d
1354, 1363 (2018). However, even if this point is conceded to Appellants, it
fails to apprise us of reversible error. Koshiishi is directed to a method for
performing pulsed arc welding. Koshiishi, Abstract. The issue presented on
2 Appellants concede that claim 1 does not require a controller. Tr. 10:5-6;
17:1-3.
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appeal is whether a person of ordinary skill in the art would have found it
obvious to use the flux-cored wire of Hartman in the method of Koshiishi.
The Examiner finds that a person of ordinary skill would have had a reason
to combine Koshiishi and Hartman in a manner that achieves the claimed
method. Final Action 4. This is sufficient to satisfy the requirements of
Parker Vision pertaining to obviousness of a method claim. Parker Vision,
903 F.3d at 1363.
Finally, Appellants take the Examiner to task for failing to make
sufficient findings of fact with respect to the sectional area of the current
path of the weld wire. Appeal Br. 8, Reply Br. 6. Appellants' Specification
defines current density as current value divided by the sectional area of the
current path in the wire. Spec. 9. The Specification then explains why flux-
cored wire is used in the invention. Id. 9--11. The Specification then
explains that the flux core of the welding wire "does not substantially allow
a current to pass therethrough and therefore a high current passes mainly
through the steel sheath. Id. 11-12. Thus, we agree with Appellants that
"sectional area of the current path" should exclude the sectional area of the
flux core.
The Specification is replete with references to various current
densities. Id. 4, 5, 10, 12, 13, 14, 17, 18, 22, and 26. However, although
claim 1 recites that current density is determined by dividing average current
by sectional area, the Specification is silent as to: (1) the average current;
and (2) the sectional area, which are the two parameters that are used to
calculate such density. See generally Spec. 3 The Specification teaches that,
3 The Specification discloses the diameter of the weld-wire in three places.
Id. 19, 22, and 26 (disclosing diameters from 1.2 to 1.6 mm). However, it is
clear from the surrounding context that the Specification is referring to
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in a preferred embodiment, the flux-cored wire used in the invention has a
flux filling rate of 10 to 25 percent mass. Id. 16. Otherwise, the
Specification teaches that:
The flux-cored wire for use in the present invention is not
limited in its conditions or parameters such as chemical
composition, material of the steel sheath, ratio of the cross-
sectional area of the steel sheath to the total cross-sectional area
of the wire, wire cross-sectional shape, wire diameter, and
filling rate of the flux.
Id. 15-16.
We tum now to the applied art. Koshiishi discloses the use of weld
wire in the range of 1.0 to 1.6 mm in diameter. Koshiishi ,r 78. Specific
examples are given using a wire diameter of 1.2 mm. Id. ,r,r 82, 100, 122.
For purposes of the rejection, the Examiner modifies Koshiishi's solid wire,
which is 1.0 to 1.6 mm in diameter, with the teachings of Hartman to yield a
flux-cored weld wire with a sectional area of 1 mm2. Final Action 3.
Appellants argue that the Examiner fails to explain how Koshiishi' s teaching
of 1.0 to 1.6 mm wire yields a sectional area of 1 mm2. Reply Br. 6.
However, this argument overlooks the fact that the Examiner's rejection is
based on modifying Koshiishi with the teachings of Hartman. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (explaining that non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references). Consequently, in an obviousness analysis, "we do not ignore
the modifications that one skilled in the art would make to a device
diameter of the entire weld wire as opposed to a section thereof that excludes
the flux core.
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Application 13/085,966
borrowed from the prior art." In re Icon Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007).
The cross-sectional area of circular wire ranging from 1.0 to 1.6 mm
in diameter yields a range of about 0.8 to 2.0 mm2 or, in other words, a range
that extends from less than to greater than 1 mm2. The sectional area of a
sheath of flux-cored wire such as taught by Hartman would, of course, be
less than the cross-sectional area of solid wire of equal diameter. 4
Appellants present neither evidence nor persuasive technical reasoning that
presents a serious challenge to the conclusion that a Hartman flux-cored
weld wire will have a current path sectional area of 1 mm2 somewhere
within the range of total wire diameter taught by Koshiishi. Although
Appellants complain that the Examiner did not provide a detailed
explanation or computation as to how the 1 mm2 figure in the rejection was
arrived at, we are mindful that: ( 1) Appellants' own Specification teaches
that the flux-cored wire of the present invention is not limited by its ratio of
the cross-sectional area of the sheath to the total cross-sectional area of the
wire; and (2) Appellants do not explicitly disclose the current path sectional
area of the wire disclosed in their Specification. 5 Spec. 15-16. Here, the
4 We are mindful that sectional areas other than 1 mm2 may be used to
calculate current densities within the claimed range. We use the sectional
area of 1 mm2 herein for exemplary purposes, for ease of calculation, and
because the Examiner relied on this parameter in the final rejection.
Furthermore, we are mindful that Hartman discloses a fill rate of 12-30
percent by weight which provides at least some indication as to the relative
size of the flux core vis-a-vis the thickness of the sheath of a Hartman weld
wire.
5 Indeed, the flux-core weld wire used in the examples cited in the
Appellants' Specification appears to be a known, off-the-shelf, commodity
product. Spec. 21 (identifying the flux-cored wire used in the examples
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Examiner's finding of fact that substituting Koshiishi's solid wire with
Hartman's flux-cored wire will yield a sectional area current path of 1 mm2
is supported by a preponderance of the evidence. Appellants' complaints
about "how" the Examiner reached such finding does not undermine our
determination "that" the Examiner's finding is correct.
At a minimum, the Examiner has established a reasonable basis for
believing that the 1 mm2 current path sectional area is met by the prior art.
See In re Spada, 911 F.2d 705 (Fed.Cir.1990). This is sufficient to shift the
burden of proof to Appellants to demonstrate, with an evidentiary showing,
that the Examiner is incorrect. In other words, "when the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not." Id. at 708.
Appellants' naked assertions and unsubstantiated attorney argument are
insufficient to meet Appellants' burden.
Koshiishi teaches a peak current of 300-700A for a first peak pulse
period and a peak current of 200-600A for a second peak pulse period.
Koshiishi, ,r 3 6( a), ( e ). This peak current is sufficient to satisfy Appellants'
claimed peak current density of 400 to 950 A/mm2 when used in conjunction
with the 1 mm2 sectional area current path of the Examiner's rejection.
Koshiishi then teaches a base current of 30-200A for a first base period and
a base current of 30-200A for a second base period. Id. ,r 36((c), (g). Such
base current satisfies Appellants' claimed base current density of 200
A/mm2 ( or more) when used in conjunction with the 1 mm2 sectional area
current path of the Examiner's rejection. If we use a first peak pulse current
tabulated in Table 1 on page 22 of the Specification as JIS Z3 313: 1999
YFW-C50DM material). See EP 2 179 813 Al, pub. Apr. 4, 2010, i131.
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of 600A or a second peak pulse current of 600A and a base current of 200A
from Koshiishi, the difference between Koshiishi' s peak current and base
current is 400A/mm2 which satisfies the limitation in claim 1: "and differs
from the pulse peak current density by 200 to 400 A/mm2" using a 1 mm2
sectional area.
To compute an average current density for Koshiishi using a 1 mm2
sectional area, we perform a weighted average calculation using the first and
second peak and base time periods disclosed in paragraph 3 6. Koshiishi,
,r 36. For purposes of illustration, we select the upper end of each pulse
period so that the first peak pulse period is 5 ms, the first base period is 10
ms, the second peak pulse period is 15 ms, and the second base period is 20
ms. Id. The weighted average calculation yields an average current of 360A
which when applied over a sectional area of 1 mm2 yields an average current
density of 3 60A/mm2 . The Examiner's finding of fact that Koshiishi as
modified by Hartman yields the claimed current densities is supported by a
preponderance of the evidence.
Appellants' disclose current density, but not current and sectional
area, whereas Koshiishi discloses current and wire diameter, but does not
calculate current density therefrom. However, the fact that Appellants
perform a current density calculation using current and sectional area
parameters known in the prior art does not establish the non-obviousness of
Appellants' invention. Deriving current density by dividing current by
sectional area is a simple straightforward calculation. It is well settled that a
claim does not become nonobvious simply because the patent specification
provides a more comprehensive explication of the known relationships
between the variables and the affected properties. In re Applied Materials,
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Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Here, as determined after
performing the appropriate calculations, the prior art discloses parameters
that overlap the ranges in Appellants' claims. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) ("A prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art"). 6
Appellants do not challenge the Examiner's determination that
Koshiishi and Hartman could have been combined in the manner proposed
in the rejection using no more than ordinary skill. See generally Appeal Br.,
Reply Br., Final Action 4. When a work is available in a field of endeavor,
design incentives and other market forces can prompt variations of it, such
that a person of ordinary skill can implement a predictable variation,
Section 103 likely bars its patentability. KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,417 (2007). Where "a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." Id. Here, Koshiishi shows that it was known to reduce
spatter using current densities in the claimed range. 7 Koshiishi ,r 78. Using
6 Appellants complain about the "massive amount of raw data" that could
lead to "infinite numbers of possibilities" in connection with the calculation
of average current densities from the ranges of peak and base currents and
times disclosed in Koshiishi. Tr. 18:7-19:12. However, as shown herein,
only a handful of calculations is needed to demonstrate, by a preponderance
of the evidence, that the range of current densities disclosed in Koshiishi, as
modified by Hartman, overlaps Appellants' claimed range, thereby
demonstrating a prima facie case of obviousness.
7 Koshiishi discloses a solid wire diameter range of 1.0 to 1.6 mm.
Koshiishi ,r 78. A solid welding wire with a diameter of between 1.1 and 1.2
mm, which falls within the disclosed range of Koshiishi, yields a current
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a weld wire from Hartman with a current path sectional area of 1 mm2
entails no more than a simple substitution of Hartman's wire for Koshiishi's
wire using Koshiishi's method while yielding a predictable result. Evidence
that current and current path sectional area of flux-cored wire may interact in
an unpredictable or unexpected way could render the combination
nonobvious, see KSR, 550 U.S. at 421, but Appellants fail to show anything
unpredictable or unexpected in the interaction of current and current path
sectional area of flux-cored wire.
In view of the foregoing discussion, we determine that the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claim 4
Claim 4 depends from claim 1 and adds the limitation: "wherein the
pulsed current includes a current waveform with repeating pulse forms that
are all identical." Claims App. Koshiishi teaches the use of a first pulse and
second pulse, which pulses are alternately repeated. Koshiishi, ,r 35, Fig. 1.
The respective ranges of peak pulse, base pulse, peak period, and base
period overlap. Id. ,r 36. For example, a peak pulse of 600A and base pulse
of 200A fall within the range of both the first pulse and second pulse. Id.
Likewise, a pulse period of 5 ms falls within the range of both the first and
second peak and base pulses. Id. Such currents and periods yield current
densities within the claimed range, including an average current density of
400A. Id.
path sectional area of about 1 mm2·, which, in tum, yields current densities
in the claimed range.
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Appellants argue that this limitation is not met by Koshiishi. Appeal
Br. 12. Appellants' argument amounts to little more than a recitation of the
claim limitations and a naked assertion that the limitations are not met by the
prior art. Such is insufficient to set forth an argument for patentability. See
37 C.F.R. § 41.37; In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(Rule 41.37 requires more than recitation of the claim elements and a naked
assertion that the elements are not found in the prior art).
We sustain the Examiner's rejection of claim 4.
Claim 5
Appellants do not argue for the separate patentability of claim 5,
which depends from claim 1. We sustain the rejection of claim 5. See 37
C.F.R. § 4I.37(c)(l)(iv) (failure to separately argue claims).
Claim 6
Claim 6 depends from claim 1 and adds the limitation: "wherein the
pulse base current density during the pulse base time Tb is more than 200
A/mm2." Claims App. Koshiishi discloses a base current of 200A.
Koshiishi, ,r 36. Thus, any sectional area current path that is anything less
than 1 mm2 will yield a pulse base current density of more than 200A/mm2. 8
The Examiner finds that this limitation is met by Koshiishi as modified by
Hartman. Final Action 3--4, Ans. 9--10.
In traversing the rejection, Appellants essentially repeat the same
argument regarding Koshiishi' s cross-sectional shape that we considered and
8 For example, a sectional area of 0.9999 mm2 will yield a base current
density of "more than 2 00 A/mm2." The claim does not require any specific
incremental amount above 200 A/mm2.
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found unpersuasive in connection with claim 1 and find equally
unpersuasive here. Appeal Br. 12-13.
We sustain the Examiner's rejection of claim 6.
Claim 11
Claim 11 depends from claim 1 and adds the limitation:
calculating the average of the pulsed current during the pulsed
arc welding using the formula Ia=(Ip·Tp + Ib·Tb)/(Tp +Tb),
where Ia is the average of the pulsed current, Ip is a pulse peak
current, lb is a pulse base current, Tp is a duration of the pulse
peak current, and Tb is a duration of the pulse base current.
Claims App. Using the recited formula, the exemplary embodiment of
Koshiishi, as modified by Hartman, discussed in connection with claim 1
above, yields an average current density of 360 A/mm2, thus satisfying the
average current density limitation of claims 1.
Appellants argue that Arakawa relates to control of wire electrical
discharge machines to perform electrical discharge machining not pulsed arc
welding. Appeal Br. 13-14, Reply Br. 5. In response, the Examiner points
out that the controller of Arakawa could be used with a welding process.
Ans. 10-11. Appellants also argue that Arakawa does not teach calculating
an average of the pulsed current during the pulsed arc welding, using the
precise formula recited in claim 11.
Arakawa teaches a controller for an electrical discharge machine that
calculates average current densities Id, which reflect an average machining
current Im divided by workpiece thickness t and machined groove width g.
Arakawa ,r 91. The Examiner does not adequately explain, and it is not
immediately apparent, why this teaching would have prompted a person
having ordinary skill in the art to calculate the average current density
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conducted through the electrode wire in Koshiishi' s pulsed arc welding
method using the precise formula recited in claim 11.
Appellants' argument is persuasive of error in the rejection.
Accordingly, we do not sustain the rejection of claim 11.
Unpatentability of Claim 2
over Koshiishi, Hartman, Arakawa, and Gault
Appellants do not argue for the separate patentability of claim 2,
which depends from claim 1. For reasons set forth above in sustaining the
rejection of claim 1, we sustain the rejection of claim 2.
Unpatentability of Claims 7-9
over Koshiishi, Hartman, Arakawa, and Gordish
Claim 7
Claim 7 depends from claim 1 and adds the limitation: "wherein the
performing pulsed arc welding includes welding at a deposition rate of 150
grams per minute or more." The Examiner finds that Gordish discloses this
limitation. Final Action 6-7, Ans. 11-12. The Examiner further finds that
the electrode of Gordish can be used with Koshiishi. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the electrode of Koshiishi
as taught by Gordish. Id. According to the Examiner, a person of ordinary
skill in the art would have done this to increase the repeatability and safety
of the process. Id.
Appellants argue that Gordish relates to electric arc welding, but does
not explicitly teach that it is used in pulsed arc welding. Appeal Br. 15.
However, Appellants provide neither evidence nor persuasive technical
reasoning that deposition rate is materially affected by using pulsed arc
welding as opposed to electric arc welding.
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Gordish is directed to a formulation of ingredients in the flux material
of a flux-cored welding electrode. Gordish, col. 5, 11. 5-20.
The electrode comprises low carbon steel sheath with less than
0.07% by weight of the sheath being carbon and a fill material
within the sheath, which fill material is essentially free of non-
ferrous carbon compounds and contains 0.5-5.0% metallic
aluminum powder.
Id. 11. 16-20. Appellants present neither evidence nor persuasive technical
reasoning to challenge the Examiner's finding that the teachings of Gordish
can be combined with that of Koshiishi and Hartman. See generally Appeal
Br., Reply Br. In particular, Appellants provide no evidence that the
metallic aluminum powder constituent of Gordish could not be successfully
combined with the constituent elements of the flux material of Hartman or
that making the combination requires more than ordinary skill.
We are not apprised of error and, therefore, sustain the Examiner's
rejection of claim 7.
Claim 8
Appellants do not argue for the separate patentability of claim 8. We
sustain the rejection of claim 8. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 9
Claim 9 depends from claim 1 and adds the limitation: "wherein the
performing pulsed arc welding includes welding by spray transfer." The
Examiner finds that Gordish discloses this limitation. Final Action 6-7,
Ans. 11-12. The Examiner further finds that the electrode of Gordish can be
used with Koshiishi. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify the electrode of Koshiishi as taught by Gordish. Id.
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According to the Examiner, a person of ordinary skill in the art would have
done this to increase the repeatability and safety of the process. Id.
Appellants argue that Gordish relates to electric arc welding, but does
not explicitly teach that it is used in pulsed arc welding. Appeal Br. 16.
Appellants further argue that Gordish is silent as to welding by "spray
transfer." Id. In response, the Examiner states Gordish teaches that an arc
melts the metal sheath 12 before the material is deposited. Ans. 11. The
Examiner characterizes such process as "spray transfer." Id. citing Gordish,
Fig. 1.
The issue with respect to "spray transfer" is largely a matter of claim
construction. During examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). During patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. See In re Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Construing claims broadly during prosecution is not unfair to the applicant,
because the applicant has the opportunity to amend the claims to obtain
more precise claim coverage. Am. Acad. of Sci., 367 F.3d at 1364.
Gordish discloses an electrode 10. Gordish, col. 9, 1. 65. Gordish
further teaches that:
The electrode has an outer low carbon sheath 12 with
particulate interior fill material or core 20. During the welding
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Appeal2017-004892
Application 13/085,966
process, electrode 10 is connected to a power supply to deposit
molten metal in a weld bead pool 30 by the heat of electric arc
or plasma 40. The arc melts metal sheath 12 and melts the
material within core 20 before the material is deposited into the
weld bead pool 30.
Id. col. 9, 1. 65 - col. 10, 1. 4.
Appellants direct our attention to page 2, lines 6-15 and Figure 2 of
their disclosure as suggesting a sufficiently narrow construction of spray
transfer that arguably excludes Gordish. Appeal Br. 16. However,
Appellants fail to provide any persuasive argument as to why the Examiner's
construction and application of "spray transfer" is unreasonable in light of
Appellants' disclosure. Furthermore, Appellants fail to adequately explain
how or why their construction satisfies the "broadest reasonable" standard,
yet excludes the above quoted teaching of Gordish as relating to something
other than spray transfer. Appellants' argument that Gordish is silent
regarding explicit use of the term "spray transfer" is not sufficient to
persuade us that the Examiner's construction is unreasonable. See In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference need not satisfy
an ipsissimis verbis test).
We sustain the Examiner's rejection of claim 11.
DECISION
The decision of the Examiner to reject claims 1, 2, and 4--9 is
AFFIRMED.
The decision of the Examiner to reject claim 11 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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