MILLER, PHILIP L. et al.

Patent Trials and Appeals Board

Dec 31, 2020

2019003526 (P.T.A.B. Dec. 31, 2020)

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.
14/107,275 12/16/2013 PHILIP L. MILLER 13472-US 7876
27182 7590 12/31/2020
LINDE INC.
LAW DEPARTMENT
10 RIVERVIEW DRIVE
DANBURY, CT 06810-5113
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
LG.US.IP@linde.com
ToniAnn.Fonte@linde.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP L. MILLER, KEVIN A. LYTTLE,
JEREMY B. NEFF, DOUGLAS A. STEYER, and
KEITH G. PIERCE
____________

Appeal 2019-003526
Application 14/107,275
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appeal 2019-003526
Application 14/107,275

2
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 8, 11, 12, 14, 15, and 18–23.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED INVENTON
Appellant’s invention “relates generally to welding gas compositions
used as shielding gases for electric arc welding processes” and, more
particularly, to “shielding gas compositions comprising small amounts of
oxygen and nitrous oxide and/or nitrogen in an inert gas such as argon or an
argon/helium mixture for improving the welding characteristics obtained
when welding aluminum or aluminum alloy containing work pieces with
such processes.” Spec. ¶ 1. Claims 8, 15, and 21 are the independent claims
on appeal. Claim 8, reproduced below, is illustrative of the claimed subject
matter:
8. A method for gas metal or tungsten metal electric arc welding
comprising:

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references the Final Office Action (“Final Act.,”
mailed Apr. 3, 2018), Appeal Brief (“Appeal Br.,” filed Oct. 2, 2018),
Answer (“Ans.,” mailed Jan. 28, 2019), and Reply Brief (“Reply Br.,” filed
Mar. 26, 2019). Appellant identifies Praxair Technology, Inc. as the real
party in interest. Appeal Br. 3.
2 The Final Office Action indicates that claim 13 is rejected. Final Act. 1.
However, no rejection for this claim is set forth therein. See Final Act. 3–7.
The Examiner adds claim 13 to a rejection heading in the Answer. Ans. 3, 6.
However, the Examiner does not articulate a basis for the rejection of this
claim. See Ans. 3–4, 6–7. Accordingly, claim 13 is not subject to rejection
for purposes of this appeal.
Appeal 2019-003526
Application 14/107,275

3
providing a shielding gas composition to a gas metal or
tungsten metal electric arc welding process, said shielding
gas composition consisting essentially of:
a first active gas comprising oxygen, said first
active gas concentration from 200 to less than 400
ppm oxygen;
a second active gas comprising a second active gas
concentration from 200 to less than 400 ppm said
second gas selected from the group consisting of:
nitrous oxide, nitrogen and or a combinations
thereof; and
the remaining balance being an inert gas; and
welding aluminum-containing workpieces, said
aluminum-containing workpieces selected from the
group consisting of: aluminum, an aluminum alloy
and combinations thereof.

REJECTIONS
Claims 8, 11, 12, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Fawer (US 5,558,791, iss. Sept. 24, 1996) and Farwer
(US 6,303,892 B1, iss. Oct. 16, 2001). Final Act. 3–4.
Claims 15 and 18–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Fawer, Farwer, and Miklos (US 7,189,941 B2, iss.
Mar. 13, 2007). Final Act. 4–5.
Claims 21–23 are rejected under 35 U.S.C. § 103 as unpatentable over
Fawer, Farwer, and Teale (US 2007/0011873 A1, pub. Jan. 18, 2007). Final
Act. 5–7.

Appeal 2019-003526
Application 14/107,275

4
ANALYSIS
Independent Claim 8 and Dependent Claims 11, 12, and 14
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 8 under 35 U.S.C. § 103 because the
combination of Fawer and Farwer does not teach or suggest “a first active
gas comprising oxygen, said first active gas concentration from 200 to less
than 400 ppm [parts per million] oxygen,” as recited in claim 8. Appeal
Br. 8–12; Reply Br. 1–5.
In rejecting claim 8 under 35 U.S.C. § 103, the Examiner primarily
relies upon Fawer. Final Act. 3. Fawer discloses a method for the arc
welding of aluminum using argon or mixtures of argon and
helium. Fawer 1:4–6. The Examiner correctly finds that Fawer does not
disclose the argued limitation. Final Act. 4. However, the Examiner finds
that the secondary reference, Farwer, “teaches an inert gas mixture for
welding aluminum having a . . . concentration of oxygen in 100 to 600 vpm
[(i.e., volume per million, which is parts per million per volume (ppm (v))].”
Id. (citing Farwer 2:5–8). The Examiner concludes that it would have been
obvious to modify Fawer’s inert gas to have “100 to 600 vpm (ppm (v)) of
oxygen[,] as taught by Farwer[,] in order to improve quality during welding
aluminum.” Id.
Setting aside that claim 8 recites 200 to less than 400 ppm, and not
100 to 600 vpm, Fawer teaches that when other components are added to the
inert gas for aluminum welding, “detrimental effects occur immediately”
due to the high reactivity of aluminum. Fawer 1:17–20. Adding oxygen
forms oxides, which “is not acceptable.” Id. at 1:20–24. “Therefore, when
aluminum is being welded, technically pure inert gases are used, in other
Appeal 2019-003526
Application 14/107,275

5
words, argon or argon-helium mixtures having a degree of purity of at least
99.996%. Therefore, the sum of all impurities amounts to 40 ppm at the
maximum.” Id. at 1:24–28.
In light of Fawer’s teachings about the detrimental effect of having
oxygen (and other impurities) above 40 ppm, the Examiner’s determination
that it would have been obvious to increase Fawer’s oxygen above this
threshold to improve quality during welding aluminum is not adequately
supported by Fawer.
In the Answer, the Examiner points out that Fawer teaches that in
special cases oxygen can be added to a nitrogen and dinitrogen admixture
for inert gas in an amount “only slightly above the level of the impurities in
the inert gas.” Ans. 7 (quoting Fawer 2:13–16) (emphasis omitted). The
Examiner finds that 100 to 600 vpm, as disclosed by Farwer, is only
“slightly above” Fawer’s maximum level of impurities of 40 ppm. Id. at
6–7. However, claim 8 requires at least 200 ppm oxygen — an amount of
oxygen that is 5 times Fawer’s maximum level of impurities of 40 ppm.
Here, the Examiner does not provide adequate factual support for finding
that 200 ppm is only slightly above Fawer’s maximum level of impurities,
particularly in light of Fawer’s disclosure that the inert gas should maintain a
degree of purity of at least 99.996%. See Fawer 1:24–27.
For at least these reason, we are persuaded that the Examiner erred in
rejecting claim 8 and its dependent claims under 35 U.S.C. § 103.
Independent Claims 15 and 21 and Dependent Claims 18–20, 22, and 23
Independent claims 15 and 21 recite language similar to claim 1, and
stand rejected based on a rationale similar to that applied in rejecting
claim 1. See Final Act. 4–7. Therefore, we do not sustain the Examiner’s
Appeal 2019-003526
Application 14/107,275

6
rejection under 35 U.S.C. § 103 of independent claims 15 and 21, and claims
18–20, 22, and 23, which depend therefrom, for reasons substantially similar
to those set forth above with respect to claim 1.

Appeal 2019-003526
Application 14/107,275

7
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 11, 12, 14 103 Fawer, Farwer 8,11,12, 14
15, 18–20 103 Fawer, Farwer, Miklos 15, 18–20
21–23 103 Fawer, Farwer, Teale 21–23
Overall
Outcome
8, 11, 12, 14,
15, 18–23

REVERSED