Siemens Energy, Inc.

Patent Trials and Appeals Board

Sep 14, 2021

2020003882 (P.T.A.B. Sep. 14, 2021)

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.
14/682,315 04/09/2015 Gerald J. Bruck 2015P04503US 2065
28524 7590 09/14/2021
SIEMENS CORPORATION
IP Dept - Mail Code INT-244
3850 Quadrangle Blvd
Orlando, FL 32817
EXAMINER
LIU, CHRIS Q
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/14/2021 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GERALD J. BRUCK and AHMED KAMEL
____________________

Appeal 2020-003882
Application 14/682,315
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 5–7, 10, 11, 19, and 21–29. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Siemens Energy, Inc.
Appeal Br. 2.
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THE CLAIMED SUBJECT MATTER
As background, the Specification describes it was known to use a
filler wire with electrical energy for various types of arc welding.2 Spec.
1:4–6, 2:7–11; Abstract. The filler wire both provides filler metal and
conducts the electrical energy to effect the arc welding process. Id. at 2:7–
11. The filler wire delivers the energy precisely to the end of the filler wire.
Id.; see also Appeal Br. 7 (providing a similar description).
As an alternative to electrical energy for welding, laser energy may be
used. Spec. 2:7–12; Abstract. With laser energy, as with electrical energy,
the filler wire precisely delivers the energy to the end of the filler wire. Id.
This has the advantage of avoiding the need to separately coordinate laser
beam motion and feed wire motion. Spec. 2:27–29; Abstract; see also
Appeal Br. 7 (providing a similar description).
Claims 1 and 19, the independent claims on appeal, are each directed
to a filler feed wire.
We reproduce claim 1 below.
1. A filler feed wire for additive fabrication comprising:
a laser conductive element extending along and defining a
length of the filler feed wire, the laser conductive element
having a first end and a second end arranged to conduct a laser
energy from the first end to the second end of the laser
conductive element;
a metal filler material that extends along the length of the
filler feed wire, the filler material having an end that is added to
a melt pool for additive fabrication, welding or cladding; and
wherein the laser conductive element comprises at least one
optical fiber arranged such that a portion of the laser conductive
element and the filler material are added to the melt pool.

2 Exemplary types include submerged, gas metal, and flux cored arc
welding.
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We reproduce Figure 1 of the subject application below.

Figure 1 depicts, in side sectional view, an embodiment of filler feed wire 20
for additive fabrication. Spec. 1:18, 2:13–15. Filler feed wire 20 includes a
laser conductive element (e.g., optical fibers 26 in core 27) and jacket 22.
Spec. 2:13–16. Jacket 22 is comprised of filler material that may be added
to melt pool 24. Id. Laser emitter 28 injects laser beam 30 into proximal
end 32 of laser conductive element 26. Id. at 2:16–17. Laser conductive
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element 26 may serve as flux, and this flux may form a protective layer of
slag 36 over melt pool 24. Id. at 2:24–27.
EVIDENCE
We refer to the Specification filed April 9, 2009 (“Spec.”), the Final
Office Action mailed September 6, 2019 (“Final Act.”), the Appeal Brief
filed November 12, 2019 (“Appeal Br.”), the Examiner’s Answer mailed
March 4, 2020 (“Ans.”), and the Reply Brief filed April 28, 2020 (“Reply
Br.”).
The prior art relied upon by the Examiner is:
Name Reference Date
Mase US 2014/0291315 A1 Oct. 2, 2014
Denney US 2014/0021188 A1 Jan. 23, 2014
Auld US 2009/0182313 A1 July 16, 2009
Stottlemyer US 2002/0186938 A1 Dec. 12, 2002
Bonja US 6,404,961 B1 June 11, 2002
REJECTIONS3
I. Claims 19 and 21–29 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite.4
II. Claims 1, 19, and 22 stand rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Bonja.
III. Claims 1, 3, 5, 7, 19, 21–23, and 25 stand rejected under
35 U.S.C. § 102(a)(1) as anticipated by Stottlemyer.5

3 The rejection of claims 8, 9, 26, and 27 under 35 U.S.C. § 103 as
unpatentable over Bonja and Denney has been withdrawn. Ans. 3; see also
Reply Br. 2. As such, claims 8, 9, 26, and 27 are not before us for review.
4 Although the rejection lists claim 20, claim 20 has been cancelled. See
Final Act. 1; Appeal Br. 28.
5 Regarding claim 19, see the analysis of this rejection below.
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IV. Claims 6 and 24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stottlemyer and Auld.
V. Claims 10, 11, 28, and 29 stand rejected under 35 U.S.C. § 103
as unpatentable over Bonja and Mase.

OPINION
I. Indefiniteness – Claims 19, 21–29
The Examiner rejected claim 19 as indefinite under 35 U.S.C.
§ 112(b). Final Act. 2. The Examiner rejected claims 21–29 due to their
dependency from claim 19. Id. at 3.
Appellant did not respond to this rejection in either the Appeal Brief
or the Reply Brief. Consequently, we summarily affirm this rejection. See
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential);
37 C.F.R. § 41.37(c)(1)(iv) (We review the appealed rejections for error
identified by Appellant, and arguments not made are forfeited.).

II. Anticipation by Bonja – Claims 1, 19, 22
Claim 1
The Examiner determined that independent claim 1 was anticipated by
Bonja. Final Act. 3–5. Specifically, the Examiner found that Bonja
discloses a filler feed wire (cable 10) having a laser conductive element
(optical fibers 16, 17) and metal filler material (structure from inner metal
tube 13 to outer metal tube 38).6 Id.
Appellant argues that the Examiner gave no weight to three functional
limitations by treating those limitations as intended use. Appeal Br. 9–10.

6 Parenthetical terms refer to Bonja’s corresponding nomenclature.
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Those three limitations are: (1) the laser conductive element conducting
laser energy from its first to its second end, (2) the metal filler material
having an end that is added to a melt pool for additive fabrication, welding,
or cladding, and (3) the at least one optical fiber of the laser conductive
element and the filler material must be arranged so that a portion of the laser
conductive element and the filler material is added to the melt pool. Id. at
10; Reply Br. 2–4. Elsewhere, Appellant acknowledges that the Examiner
gave the first limitation patentable weight, but maintains the assertion that
the Examiner “dismisses” the second and third limitations. Appeal Br. 11
(“Applicant acknowledges that the optical fibers 16, 17 of Bonja are likely
capable of conducting laser energy from a first end to a second end”), Reply
Br. 2 (again acknowledging that the Examiner gives the laser conductive
element limitation patentable weight). Consequently, Appellant’s argument
is limited to the metal filler and optical fiber limitations (the second and
third limitations listed above). Appellant elaborates that by giving these
limitations no weight, the Examiner’s interpretation would mean that even a
pencil is capable of being added to a melt pool. Appeal Br. 10.
Although the Examiner did refer to the limitations at issue as intended
use, the Examiner gave weight to each of those limitations. Specifically, the
Examiner explicitly determined that both Bonja’s metal filler material
(structure from inner metal tube 13 to outer metal tube 38) and optical fibers
(optical fibers 16, 17) are capable of being added to a melt pool. Final Act.
4–5; see also Ans. 4–5 (noting the lack of a structural difference between
Bonja and the claimed subject matter). Appellant’s assertion that the
Examiner failed to give weight to these limitations is incorrect and does not
apprise us of error.
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Appellant argues that introduction of Bonja’s cable 10 into a melt
pool would destroy the weld and render it unsuitable for use. Appeal Br. 12.
According to Appellant, Bonja’s cable 10 includes materials that are ill-
suited to the welding process. Id. at 11–12. In particular, Appellant
identifies Bonja’s filler material 22 comprising thixotropic gel and grease
compounds, and buffer materials 35 as detrimental to any weld. Id.
Appellant adds that the entirety of Bonja’s cable 10 must be feed into the
melt pool. Id. at 12.
As an initial matter, Appellant’s contention that the entirety of cable
10 must be added to the melt pool is not commensurate in scope with claim
1. Claim 1 requires that “a portion” of the laser conductive element and
filler material are added to the melt pool. Further, as the Examiner points
out, Appellant’s argument that Bonja’s cable contains materials that are ill-
suited to the welding process is unsupported by evidence. See Ans. 6.
Attorney argument unsupported by factual evidence has little probative
value. In re Geislet, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellant’s
unsupported assertion that Bonja’s cable 10 is unsuitable for being added to
a melt pool does not demonstrate error by the Examiner.
Appellant argues that under a “proper 35 U.S.C. 103 analysis, the
Examiner modifies one reference with the teachings of another” but, here,
there is no teaching or suggestion to remove all the features taught by Bonja
other than the optical fibers. Reply Br. 3. Based on this, Appellant argues,
“the entire device of Bonja must be capable of being added to the weld
pool.” Id.
This argument, like the prior one, is not commensurate in scope in that
claim 1 requires that “a portion” of the laser conductive element and filler
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material are added to the melt pool. More importantly, Appellant’s
argument is inapposite because the rejection is based on anticipation, not
obviousness. That is, the rejection does not propose to modify Bonja and
does not include a rationale.
Consequently, Appellant has not demonstrated error in the rejection of
claim 1 as anticipated by Bonja.
Claims 19, 22
The Examiner determined that claims 19 and 22 are anticipated by
Bonja. Final Act. 3, 5. Appellant repeats the arguments for claim 1 in
support of claim 19. Appeal Br. 14–16. We limit our discussion to
independent claim 19 because Appellant argues claims 19 and 22 as a group.
See Appeal Br. 16 (asserting claim 22 depends from claim 19 is allowable
for the reasons asserted in support of claim 19); Reply Br. 2–5; 37 C.F.R.
§ 41.37(c)(1)(iv).
For the reasons given with regard to our analysis of claim 1 above,
these arguments do not demonstrate error by the Examiner. Consequently,
Appellant has not demonstrated error in the rejection of claims 19 and 22 as
anticipated by Bonja.

III. Anticipation by Stottlemyer – Claims 1, 3, 5, 7, 19, 21–23, 25
Claim 1
The Examiner determined that independent claim 1 was anticipated by
Stottlemyer. Final Act. 6–7.
Appellant argues that the Examiner’s analysis is deficient because it
fails to give patentable weight to the same three limitations argued with
regard to the rejection of claim 1 as anticipated by Bonja. Appeal Br. 12–14.
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Our analysis here parallels our analysis of claim 1 as anticipated by Bonja.
Specifically, the Examiner explicitly determined that both Stottlemyer’s
metal filler material (stainless steel tube 22) and Stottlemyer’s optical fibers
(optical fibers 14) are capable of being added to a melt pool. Final Act. 6–7.
Therefore, contrary to Appellant’s assertion, the Examiner gave weight to
the limitations at issue.
Appellant argues that cable 20 of Stottlemyer cannot be added to a
melt pool to produce a useable weld. Appeal Br. 17. Also paralleling our
analysis of the prior rejection, and as correctly noted by the Examiner,
Appellant’s argument is unpersuasive because it is attorney argument
without supporting evidence. See Ans. 6.
Consequently, Appellant has not demonstrated error in the rejection of
claim 1 as anticipated by Stottlemyer.
Claim 3
Claim 3 depends from independent claim 1 and adds, “wherein the
laser conductive element defines a tubular jacket surrounding a core
comprising the filler material.”
The Examiner found that Stottlemyer’s laser conductive element
(optical fibers 14) defines a tubular jacket surrounding a core comprising the
filler material (stainless steel jacket 22). Final Act. 6–7.
Appellant repeats the arguments made for claim 1. Appeal Br. 17.
These arguments are unpersuasive for the reasons given in our analysis of
claim 1 above.
Appellant argues that Stottlemyer does not disclose a tubular jacket
that surrounds a filler material core as claimed because a cross section of
Stottlemyer’s tow cable 20 would reveal that there is only a single tube 10
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(containing optical fibers 14) bundled with plurality of armor wires 28.
Appeal Br. 17–18 (citing Stottlemyer ¶ 40).
The issue is whether Stottlemyer’s optical fibers 14 form a tubular
jacket that surrounds the core comprising filler material (stainless steel
jacket 22). We begin with the claim and then turn to the prior art. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (the first
step in an anticipation analysis is a proper construction of the claims, and the
second step is to compare the properly-construed claim to the prior art).
The Specification does not provide a lexicographical definition for the
claim term “tubular.” As asserted by Appellant, the ordinary meaning of
“tube” is “any of various usually cylindrical structures or devices: such as: a
hollow elongated cylinder.” Appeal Br. 24 (quoting Merriam-
Webster.com). This suggests that the laser conductive element of claim 3
must be a usually cylindrical structure such as a hollow elongated cylinder.
Stottlemyer discloses a tow cable for protecting optical fibers.
Stottlemyer ¶ 4, Figs. 2, 3. The tow cable can be seen as two major
components: a core and a surround. The core (portion within plastic jacket
34) includes filler material (stainless steel tube 22). Id. ¶¶ 36, 40. The
surround is formed from tube 10 “helixed in among” galvanized steel armor
wires 28 around the core. Id. ¶ 37, Fig. 3. Tube 10 contains a laser
conductive element (plurality of optical fibers 14). Id. ¶¶ 36–38.

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Figures 2 and 3 of Stottlemyer follow.

Figure 2 (upper) is a perspective view of a preferred
embodiment and Figure 3 (lower) depicts incorporation of tube
10 shown in Figure 2 into a tow cable. Stottlemyer ¶¶ 34, 35,
36, 40.
From these disclosures, we determine that Stottlemyer’s laser
conductive element (optical fibers 14) is laid in tube 10 and helixed among
galvanized steel armor wires 28 to surround a core of filler material
(stainless steel tube 22). In this configuration, Stottlemyer’s laser
conductive element (optical fibers 14) surrounds a core comprising filler
material (stainless steel tube 22) in a helix. The question then becomes
whether the surrounding helix is tubular as claimed.
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A helix is a coil formed by winding wire around a uniform tube.7
Stottlemyer’s laser conductive element (optical fibers 14) are wires that are
wound around a tube (plastic tube 34) to form a helix. Given that a helix is
formed around a tube, that helix is then tube shaped, or tubular. As
explained above, claim 3 requires that the laser conductive element is
tubular, meaning a usually cylindrical structure. The helix formed by
Stottlemyer’s laser conductive element (optical fibers 14) is tubular in shape,
but is not a solid tube. Appellant has not identified, not do we discern,
anything in claim 3 requiring that the structure defined must be a solid. In
other words, claim 3 is broad enough to cover both a solid tubular structure
and one that is not a solid. Consequently, we agree with the Examiner that
the helix pattern of Stottlemyer’s optical fibers 14 forms a tubular jacket for
the metal filler material (stainless steel tube 22). See Ans. 10.
Accordingly, Appellant has not demonstrated error in the rejection of
claim 3 as anticipated by Stottlemyer.
Claims 5, 21
Claim 5 depends from independent claim 1 and adds “wherein the
laser conductive element comprises a circular array of optical fibers that
surrounds a core comprising the filler material.” Claim 21 depends from
claim 19 and is similar.
The Examiner found that Stottlemyer discloses a laser conductive
element (optical fibers 14) that comprises a circular array of optical fibers
that surrounds a core comprising the filler material (stainless steel tube 22).
Final Act. 7.

7 www.merriam-webster.com/helix, def. 1.b. Last accessed Aug. 26, 2021.
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Appellant argues that when a cross section of Stottlemyer’s tow cable
20 is taken, there is a single tube 10 that includes optical fibers surrounded
by a plurality of armor wires 28. Appeal Br. 18. Appellant contends that
such a configuration is not a circular array of optical fibers surrounding a
filler material core as claimed. Id.
The issue is whether Stottlemyer’s optical fibers 14 form a circular
array that surrounds the filler material (steel tube 22). We begin with the
claim and then turn to the prior art.
Claim 5 requires that the optical fibers form a “circular array”
surrounding the filler material. Figure 4 of the subject application follows.

Figure 4 is a transverse sectional view of the filler feed wire of
Figure 1 taken along line 4-4 shown in Figure 2.
As an example, the Specification refers to optical fibers 46, shown in
Figure 4 above, as arranged in a “circular array” that completely surrounds
filler material 42. Spec. 3:20–24.
From these disclosures, a person of ordinary skill would discern that
“circular” refers to the array as viewed in a cross section perpendicular to the
longitudinal axis of the filler feed wire. Claim 5 requires that the laser
conductive element comprises optical fibers that surround the filler material
in a circular array as viewed in cross section. With this claim interpretation
in mind, we turn to the prior art.
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The Examiner finds that Stottlemyer’s Figure 3 “clearly shows” that
optical fibers 14 form “a jacket in a circular array.” Ans. 11. For the
reasons that follow, we disagree.
Stottlemyer’s optical fibers 14 are laid in opening 12 of protective
tube 10, and then tube 10 is “helixed in among” galvanized steel armor wires
28 around the core (jacket 34). Stottlemyer ¶¶ 36, 37, 40; Figs. 2, 3. In this
configuration, Stottlemyer’s optical fibers are laid within protective tube 10,
and tube 10 is helixed among wires 28 surrounding the core (jacket 34). If
viewed in cross section, this configuration would place optical fibers 14
within tube 10 in one location on the circumference of the core (jacket 34).
The Examiner has not adequately explained how this configuration places
optical fibers 14 in a circular array that surrounds the core (jacket 34).
We determine that Appellant has demonstrated error in the rejection
of claims 5 and 21 as anticipated by Stottlemyer.
Claims 7, 25
Claim 7 depends from independent claim 1 and adds, “wherein the
laser conductive element comprises optical fibers braided around a core
comprising the filler material.” Claim 25 depends from independent claim
19 and adds a similar limitation.
The Examiner found that Stottlemyer discloses a laser conductive
element (optical fibers 14) that is braided around a core comprising the filler
material (steel tube 22). Final Act. 7.
Appellant argues that Stottlemyer’s optical fibers 14 are randomly
organized within tube 10 and are not braided as claimed. Appeal Br. 20.
The Examiner responds that Stottlemyer’s “optical fibers 14 braid
around Stainless tube 22; wherein the optical fibers 14 within wire 28 weave
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together around stainless steel tube 22.” Ans. 13 (citing Merriam-Webster
definitions of “braid”). The definitions are
to do up by interweaving three or more strands,

and

to form (something such as hair) into a braid: to weave together
(three or more strands or parts of something).
Id.
Appellant does not dispute the Examiner’s definitions; rather,
Appellant contends that the Examiner only relies on the requirement that the
fibers are mixed or mingled while the Examiner ignores interweaving three
or more strands. Reply Br. 5–6.
We agree with Appellant that claims 7 and 25 require optical fibers to
be braided in that three or more strand are interwoven.
The Examiner’s finding does not assert that Stottlemyer’s tube 10
contains three or more optical fibers 14. More importantly, Stottlemyer
discloses that optical fibers 14 are “laid” within tube 10. Stottlemyer ¶ 37;
Fig. 2. Stottlemyer does not explicitly describe optical fibers 14 as braided
nor do any of the Figures depict optical fibers 14 as braided. Consequently,
a preponderance of the evidence does not support a finding that
Stottlemyer’s optical fibers 14 are braided as claimed.
Possibly the Examiner meant that optical fibers 14 are braided with
armor wires 28. This finding, like the previous, does not address that three
or more optical fibers are included. It is also deficient in that claims 7 and
25 require that the optical fibers themselves are braided, not that the optical
fibers are braided with other elements. Further, even if claims 7 and 25
cover optical fibers braided with other elements, the Examiner has not
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sufficiently explained how tube 10 (containing optical fibers 14) being
“helixed in among” galvanized steel armor wires 28 (Stottlemyer ¶ 37, Figs.
2, 3) corresponds to being braided as claimed.
We determine Appellant has demonstrated error in the rejection of
claims 7 and 25 as anticipated by Stottlemyer.
Claims 19, 22
The Examiner did not separately address claim 19 in this rejection.
See Final Act. 6–8. Appellant acknowledges that claim 22 depends from
independent claim 19, and for that reason, the rejection of claim 22 (see
Final Act. 7) necessarily included the rejection of claim 19. Appeal Br. 14.
An argument to the contrary is now forfeited.
For claims 19 and 22, Appellant both refers to and restates the
arguments made in support of claim 1. Appeal Br. 14–17. Our analysis of
claim 1 as anticipated by Stottlemyer is applicable here.
Appellant has not demonstrated error in the rejection of claims 19 and
22 as anticipated by Stottlemyer.
Claim 23
Claim 23 depends from independent claim 19 and adds, “wherein the
laser conductive element is tubular and surrounds a core defined by the filler
material.”
Appellant repeats the arguments for claim 19, which cites in turn to
the arguments for independent claim 1. See Appeal Br. 24–25 (claim 23),
14–17 (claim 19), 12–14 (claim 1). Our analysis of claim 1 above is
applicable here.
We determine that Appellant has not demonstrated error in the
rejection of claim 23 as anticipated by Stottlemyer.
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IV. Obviousness over Stottlemyer and Auld – Claims 6, 24
Claim 6 depends from independent claim 1 and adds, “wherein the
laser conductive element and filler material comprises a semi-circular or C-
shape in transverse section with a core disposed within the semi-circular or
C-shape.” Claim 24 depends from independent claim 19 and adds a similar
limitation. Although Appellant asserted that the claim phrase “and filler
material” should be deleted (Appeal Br. 19), that amendment was not
entered (Ans. 11).
The Examiner acknowledges that Stottlemyer does not disclose the
laser conductive element and filler material having a semi-circular or C-
shape in transverse section. Final Act. 9. The Examiner relies on Auld as
disclosing optical fibers in the claimed shape. Final Act. 9–10. The
Examiner reasons that it would have been obvious to modify Stottlemyer so
that laser conductive elements were arranged as in Auld because Appellant
has not disclosed that the shape provides an advantage, solves a problem, or
serves a particular purpose and for that reason it appears the device will
perform equally well as other designs. Id. at 10. The Examiner states that a
change in form or shape is generally recognized as being within the level of
ordinary skill in the art. Id.
The Specification describes an embodiment having optical fibers that
completely surround the filler material. Spec. 3:5–24. This configuration
provides a large laser conductive cross section which provides high energy
transmission capacity that uniformly heats the melt pool. Id. at 3:22–24. A
person of ordinary skill would recognize that the configuration of the optical
fibers impact the laser conductive cross section which impacts function with
regard to how the melt pool is heated.
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Where, as here, a modification changes the function of a device,
design choice is not an adequate rationale for the proposed modification.
See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design
choice precluded when claimed structure and the function it performs are
different from the prior art).
We determine that Appellant has demonstrated error in the rejection
of claims 6 and 24 as obvious over Stottlemyer and Auld.

V. Obviousness over Bonja and Mase – Claims 10, 11, 28, 29
Claim 10 depends from independent claim 1 and adds, “wherein the
filler material and the laser conductive element extend side-by-side along the
length of the filler feed wire and are joined by a binding material.” Claim 28
depends from independent claim 19 and adds a similar limitation. Claims 11
and 29 depend from claims 10 and 28, respectively.
The Examiner found that Bonja discloses filler material (stainless
steel tube 22) and a laser conductive element (optical fibers 16, 17) that
extend side-by-side along the length of the filler wire, but does not disclose
that filler material and conductive element are joined by a binding material.8
Final Act. 13. The Examiner found that Mase discloses a binder used to
bind the structure of an electrode. Id. (citing Mase ¶ 94). The Examiner
concludes that it would have been obvious to add Mase’s binder to Bonja’s
wire to join and fix the two structures together. Id. at 14.

8 The Examiner mistakenly refers to the element of Stottlemyer alleged to
correspond to filler material (stainless steel tube 22) rather than the
corresponding material in Bonja (structure from inner metal tube 13 to outer
metal tube 38). See Final Act. 13, 3–5.
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As an initial matter, the rationale offered by the Examiner, namely
that Mase’s binder would fix the two structures together, is a description of
what is done and does not provide a reason why a person of ordinary skill
would have made such a modification. See Final Act. 14; see also
PersonalWeb Tech., LLC v. Apple, Inc., 848 F.3d 987, 994–95 (Fed. Cir.
2017) (an observations that references could be combined does not imply a
motivation to do so). Beyond this, for the reasons that follow, the reference
does not support such a modification.
Mase discloses a honeycomb structure device that carries a catalyst. .
Mase ¶ 3. When voltage is applied, the device functions as a heater and
treats harmful substances in exhaust gas discharged from a car engine. Id. at
¶¶ 3, 5, see also ¶ 13 (describing that a high voltage can be applied to the
device). The honeycomb structure can include a binder. Id. at ¶ 94.
Based on this, a person of ordinary skill would understand that Mase
discloses a binder for use in a honeycomb device that treats harmful
substances in car engine exhaust gas. The Examiner does not identify, not
do we discern, any disclosure that the binder is appropriate for use in a filler
feed wire. Nor does the Examiner provide technical reasoning to explain
why use in a device such as Mase’s was known to also be usable in a filler
feed wire. Further, Mase energizes the device with electricity. While
Appellant’s Specification evidences that a filler feed wire may be energized
with laser or electrical energy, the Examiner has presented no technical
reasoning or evidence that the binder used in Mase’s device is compatible
with laser energy as well as electrical.
In light of this, we agree with Appellant (Appeal Br. 23–24) that the
Examiner has not provided an adequate rationale for the proposed
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modification. We determine Appellant has demonstrated error in the
rejection of claims 10, 11, 28, and 29.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19, 21–29 112(b) Indefiniteness 19, 21–29
1, 19, 22 102(a)(1) Bonja 1, 19, 22
1, 3, 5, 7, 19,
21–23, 25
102(a)(1) Stottlemyer 1, 3, 19,
22, 23
5, 7, 21, 25
6, 24 103 Stottlemyer and
Auld
6, 24
10, 11, 28, 29 103 Bonja and Mase 10, 11, 28,
29
Overall
Outcome
1, 3, 19,
21–29
5–7, 10, 11
AFFIRMED IN PART