Fonte, Matthew V.

Patent Trials and Appeals Board

Nov 27, 2019

14747705 - (D) (P.T.A.B. Nov. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/747,705 06/23/2015 Matthew V. Fonte AFP-2259 4503
66376 7590 11/27/2019
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 SIX PPG PLACE
PITTSBURGH, PA 15222-5479
EXAMINER
WU, JENNY R
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
ATIDocketing@atimetals.com
maria.dunn@atimetals.com
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW V. FONTE

____________

Appeal 2019-001321
Application 14/747,705
Technology Center 1700
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–5, 7, 8, and 11–30 under 35 U.S.C.
§ 103 as unpatentable over at least the combined prior art of Fonte ‘688 (US
2006/0070688 A1; published Apr. 6, 2006), Ashida (US 2010/0183112 A1;

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies ATI Properties LLC as the real party in
interest (Appeal Br. 1).
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published July 22, 2010), and Fonte ‘122 (US 2010/0236122 A1; published
Sept. 23, 2010).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
1. A process for the production of a tube comprising:
deforming a corrosion resistant alloy plate to form a
hollow cylindrical preform having a longitudinal seam region
located between two abutting ends of the deformed plate;
welding the longitudinal seam region to join together the
abutting ends, wherein the welding is performed using a filler-
less welding technique; and
flowforming the hollow cylindrical preform to produce a
corrosion resistant alloy tube.

Appellant’s arguments focus on the sole independent claim 1 (see
generally Briefs). Accordingly, all other claims, including those separately
rejected, stand or fall with claim 1.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,

2 The additional references applied to various dependent claims are listed in
the Summary Table located at the end of this Decision. A discussion of
these references is not necessary for disposition of this appeal.
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1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contentions are that Ashida does not teach “using
only filler–less welding” and teaches away from this technique (Appeal Br.
9 (emphasis omitted); Reply Br. 5–7). Appellant also argues that there is no
motivation to combine Ashida with Fonte ‘688 (Appeal Br. 13, 14; Reply
Br. 8). Appellant’s arguments are not persuasive of reversible error for
reasons presented by the Examiner (Ans. 6–11).
Contrary to Appellant’s argument, a plain reading of claim 1 clearly
does not require “only” a filler-less welding; furthermore, in contrast to the
case law discussed by Appellant in the Reply Brief, the word “only” is not
used in the claim (Ans. 6). In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claim may not be relied upon for
patentability). In addition, Appellant does not direct us to any limiting
definition in the Specification. In any event, the Examiner aptly points out
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that Ashida explicitly teaches that “it is possible to weld only by the laser
beam irradiation without feeding the weld wire” (Ashida ¶ 58; Ans. 6–8).
The argument that Ashida teaches away from filler-less welding is not
persuasive for reasons stated by the Examiner (e.g., Ans. 7–10). It is well
established that a prior art reference must be considered in its entirety, i.e.,
as a whole, when determining if it would lead one of ordinary skill in the art
away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1550 (Fed. Cir. 1983); In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005) (whether a reference teaches away from a claimed invention
is a question of fact). As pointed out by the Examiner, one of ordinary skill
in the art would have inferred and readily appreciated that a known
filler-less welding technique (laser beam irradiation), as discussed in Ashida,
may be used to weld Fonte ‘688’s tube (Fonte ‘688 ¶ 41 (“the edges can be
welded to produce the desired integral tube shape”)). An artisan of ordinary
skill would have weighed the advantages and disadvantages of known
welding techniques. “The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8
(Fed. Cir. 2000).
Likewise, Appellant’s arguments regarding the lack of motivation to
combine the cited art (Appeal Br. 13–14) are also unpersuasive for the
reasons given above. That is, the arguments fail to account for “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” See KSR, 550 U.S. at 418.
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Thus, Appellant has not shown reversible error in the Examiner’s
position that it would have been obvious for one of ordinary skill to have
used a known filler-less welding technique as exemplified in Ashida on the
tube of Fonte ‘688/Fonte ‘122. See KSR, 550 U.S. at 417 (the predictable
use of known prior art elements or steps performing the same functions they
have been known to perform is normally obvious; the combination of
familiar elements/steps is likely to be obvious when it does no more than
yield predictable results); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
“inferences and creative steps,” as well as routine steps, that an ordinary
artisan would employ) (emphasis omitted).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that no dependent
claims are separately argued (Appeal Br. generally).

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 7, 8, 15,
16, 22–27, 30
103 Fonte ‘688,
Ashida, Fonte ‘122
1–5, 7, 8, 15,
16, 22–27, 30

11, 12 103 Fonte ‘688,
Ashida,
Fonte ‘122, Lamb
11, 12
13, 14 103 Fonte ‘688,
Ashida,
13, 14
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
Fonte ‘122,
Nakamura
17, 28 103 Fonte ‘688,
Ashida,
Fonte ‘122, Mok
17, 28
18 103 Fonte ‘688,
Ashida,
Fonte ‘122,
Rawson
18
19–21 103 Fonte ‘688,
Ashida,
Fonte ‘122,
Rawson, Mok
19–21
29 103 Fonte ‘688,
Ashida,
Fonte ‘122, Mok,
Manning
29
Overall
Outcome

1–5, 7, 8, 11–
30

TIME PERIOD FOR RESPONSE
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).

AFFIRMED