Ex Parte 6745899 et al

Patent Trial and Appeal BoardAug 30, 2013

95000627 (P.T.A.B. Aug. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,627 04/11/2011 6745899 059410-0142 7798 91854 7590 08/30/2013 Lincoln Electric Company/Perkins COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 EXAMINER FOSTER, JIMMY G ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 08/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ NATIONAL STANDARD, LLC Requester, Appellant v. THE LINCOLN ELECTRIC COMPANY1 Patent Owner, Respondent ____________________ Appeal 2013-003199 Inter partes Reexamination Control 95/000,627 Patent US 6,745,899 B12 Technology Center 3900 ____________________ Before DANIEL S. SONG, KEN B. BARRETT and RAE LYNN P. GUEST, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON APPEAL 1 The Lincoln Electric Company is the Patent Owner and the real party in interest (Respondent Brief (hereinafter "Resp. Br.") 2). 2 Patent US 6,745,899 B1 (hereinafter "'899 patent") issued June 8, 2004 to Barton. Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 2 STATEMENT OF THE CASE Claim 28 is the only claim subject to reexamination (Right to Appeal Notice (hereinafter "RAN") 1). The Examiner confirmed the patentability of claim 28 (id.). The Requester, National Standard, LLC, appeals under 35 U.S.C. Â§Â§ 134 and 315 from the Examiner's refusal to reject claim 28 (Appeal Brief (hereinafter "App. Br.") 1, 3). We have jurisdiction under 35 U.S.C. Â§Â§ 134(c) and 315. The '899 patent is presently involved in the legal action The Lincoln Electric Company et al. v. National Standard LLC, Case no. 1:09-cv-01886-AA (N.D. Ohio, Eastern Div.) (App. Br. 1). We AFFIRM. THE INVENTION The '899 patent is directed to a "wire payout" device which controls the unwinding of a coil of wire from a wire drum (Abstract). Claim 28 reads as follows (App. Br., Claims App'x, italics and paragraphing added): 28. A payout for controlling the unwinding of a coil of wire from a wire drum including an outer drum body having a drum axis and an inner core coaxial with the drum body, the coil of wire being received in an annular passage between the drum body and the of the inner core and having a top end, said passage having a radial width defined by the distance between the inner core surface and the outer drum, said payout comprising: a first substantially planar ring juxtaposed to the top end of the wire coil and having a first inner edge facing said core and a first outer edge adjacent said drum body, said first ring having a width between said first inner and said first outer edges less than the width of said annular passage thereby defining a continuous circular gap about said axis between said Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 3 first inner edge and said core, said gap being above the wire coil such that the wire passes upwardly through said gap as it is payed out from the wire coil, a second substantially planar ring having a second inner edge and a second outer edge, said second ring overlying said first ring and partially covering said gap, said first ring being laterally stationary, and said second ring being laterally displac[e]able relative to said first ring and eccentrically relative to said axis as the wire is payed from said drum. PROPOSED REJECTONS NOT ADOPTED 1. Claim 28 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Nagata3 in view of MÃ¼ller.4 2. Claim 28 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Nagata in view of MÃ¼ller and Admission of the Patent Owner.5 ISSUE The dispositive issue is whether it would have been obvious to one of ordinary skill in the art to modify the wire holding plate disclosed in Nagata in view of MÃ¼ller to result in the payout claimed. 3 Nagata, Masa, JP S58-183570, published October 26, 1983. Citations to the translation of record. 4 MÃ¼ller, GÃ¼nter, EP 0472516 A2, published February 26, 1992. Citations to the translation of record. 5 Specification of the '899 patent, col. 2, ll. 38-44, which states: "Controlling the upward springing effect of the wire convolutions is achieved by maintaining the position of the wire convolutions at the top of the wire coil and especially at a point where the upward springing effect is at is greatest which is towards the radially outer portions of the package." Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 4 FINDINGS OF FACT 1. A. Nagata discloses a wire holding plate for "preventing the entanglement of a metal wire and allowing the wire to be pulled out smoothly," wherein the wire holding plate is "placed on the topmost layer of the wire 3 so that the wire 3 can be prevented from entanglement as well as jumping." (Cols. 1-2). B. Nagata discloses several different embodiments of the wire holding plate, specifically, the embodiments discussed with respect to Figures 3-4; Figures 5(i)-5(ii); Figure 6; Figure 7; and Figures 8(i)-8(ii). C. Figures 8(i)-8(ii) of Nagata are reproduced below: Figures 8(i) and 8(ii) of Nagata depicted above illustrate partial cross sectional views of the wire holding plate in accordance with one embodiment which includes a large holding plate 42A with projecting edge 42D and a small holding plate 42B with projecting edge 42E, these plates defining pullout hole 52 through which wire 3 is pulled out (col. 8; Figs. 8(i) and 8(ii)). Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 5 D. With respect to each of the different embodiments, Nagata illustrates that the large and small holding plates 42A and 42B are sized so as to lay over the wire coil except for the pullout hole 52 there between for allowing the wire to be pulled out (Figs. 4-8(i); see, e.g., col. 4)). E. As to the embodiment shown in Figures 8(i)-8(ii), Nagata states that "the material of the large and small holding plates 42A and 42B is preferably pliable rubber and sponge. Even though they are made of inflexible material, it is preferred that at least the projecting edges 42D and 42E be made of pliable material." (Col. 9). F. As to the embodiment of Figures 8(i) and 8(ii), the wire is grasped between the projecting edges 42D and 42E that bend with the wire, and Nagata states that this allows the wire to "be pulled out easily without straining." (Col. 9; Fig. 8(ii)). G. With respect to each of the different embodiments, Nagata teaches that "overlapping" of the small holding plate and the large holding plate should be prevented (see col. 4, "thereby preventing the small holding plate 4B from overlapping the large holding plate 4A by moving in the horizontal direction"; col. 6, "[a]ll the other aspects of configuration, operation and effect are substantially the same as those of the abovementioned embodiment"; col. 7, "thereby preventing the large and small holding plates 41A and 41B from overlapping each other"; col. 8, "such a configuration enables to Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 6 further prevent the occurrence that the small holding plate 4A and the large holding plate 4B overlap each other"). H. Nagata states that "it is necessary for the material to have a proper weight such that it does not hinder the pullout of the wire 3 and that no plastic deformation occurs in the wire by the weight of the holding plates." (Col. 8). 2. A. MÃ¼ller discloses a container for welding wire including a cover part that "can be easily moved horizontally or laterally by the wire, with the result that firstly any entanglement of the wire with the cover part and individual wire loops with each other is prevented, and secondly, due to the cover part the surface of the wire coil is smoothed or any lifting loops are pressed back onto the surface of the wire coil, thereby achieving a specified trouble-free withdrawal of the wire." (Pg. 1). B. Figures 1-3 of MÃ¼ller are reproduced below. Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 7 Figure 1 of MÃ¼ller reproduced above shows a cross sectional view of a welding wire coil 4 of welding wire 12 that is disposed in a container having an outer barrel 2, a cover 13, a floor 15, inner barrel 3 and a cover part 1 (pg. 2). Figure 2 shows a top view of the cover part 1 that is positioned in the outer barrel 2 (pg. 3). Figure 3 shows a cross sectional profile view of the outer surface or edge 5 of the cover part (pg. 3). C. MÃ¼ller states that the cover part is appropriately weighted based on the wire diameter (pg. 1) and that the "cover part 1 rests snugly on the topmost wire loop or the topmost surface of the wire coil 4." (Pg. 3). D. As to its operation, MÃ¼ller states that when the wire is withdrawn, "wire 12 imparts to cover part 1 a lateral displacement and a rotational motion about inner barrel 3; during one rotation of the cover part 1 about inner barrel 3, the entire topmost layer of Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 8 wire coil 4 is swept over, and any rising wire loops can be ironed down or any uncontrolled withdrawal of wire 12 can be prevented." (Pg. 3). E. MÃ¼ller states that "[a]s a result, a motion is provided to the cover part between the inner barrel and the outer barrel, where the cover part sweeps over the entire wire coil, while at the same time a sufficient margin is left to withdraw the wire through the opening of the cover part, or between the inner edge of the cover part and the inner barrel, without impeding the untwisting of the wire." (Pg. 2). F. MÃ¼ller makes clear the desirability of allowing the free lateral and rotational movement of the cover part under load of the wire being withdrawn (see, e.g., pg. 1, "[i]n order to enable the cover part to move easily under the load of the wire being withdrawn â€¦" and "in the space between the inner barrel and the outer barrel[,] the cover part is freely displaceable over the topmost layer of the wire coil"; pg. 2, "[a]s a result, little resistance is imposed on a guided motion or rotation of the cover part about the inner barrel"). PRINCIPLES OF LAW "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Intâ€™l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 9 the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The entirety of the reference must be considered. In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) ("It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art."). Furthermore, combination of references that changes the manner of operation of the device does not support a conclusion of obviousness. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) ("This suggested combination of references would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate."). ANALYSIS As noted above, the dispositive issue of the present appeal is whether it would have been obvious to one of ordinary skill in the art to modify the wire holding plate disclosed in Nagata in view of MÃ¼ller to result in the payout claimed. We address the Requester's arguments asserting obviousness of claim 28 as set forth in its briefs, as best as we can understand them. The Requester argues that Nagata discloses most of the limitations of claim 28, but concedes that "Nagata does not explicitly disclose that the second ring is laterally and eccentrically displaceable as claimed." (App. Br. 3-4). The Requester notes that MÃ¼ller "teaches a payout having a floating Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 10 ring that is laterally and eccentrically displaceable." (App. Br. 4; FF 2A-2B, 2D-2E). Hence, the Requester argues that it would have been obvious to one of ordinary skill in the art to modify the device of Nagata as shown in Figure 8(i) to eliminate the small holding plate 42B thereof, and to place the cover part 1 of MÃ¼ller on the large holding plate 42A (App. Br. 4-5; Reb. Br. 9- 10). The Requester's briefs set forth an illustration reproduced below which embodies the proposed modification: (See App. Br. 5, 21; Reb. Br. 9). The illustration from the Requester's briefs reproduced above shows Figure 8(i) of Nagata with small holding plate 42B removed, and cover part 1 of MÃ¼ller placed on top of the large holding plate 42A of Nagata. According to the Requester, [a] skilled artisan would have an apparent reason to modify the payout of Nagata by including the floating ring of MÃ¼ller/EP, thereby yielding the invention of claim 28, to achieve the disclosed benefits of the eccentric motion of MÃ¼ller/EP's floating ring as the wire is payed out (e.g., a smoother payout). The combination of the teachings of Nagata and MÃ¼ller/EP thus leads the skilled artisan to a more effective payout of wire resulting from combining the mechanical rings from each reference. Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 11 (App. Br. 4). The Requester also asserts that: [t]he skilled artisan would readily recognize that placement of MÃ¼ller/EP's cover part 1 on Nagata's [large holding plate] 42A would more readily allow smooth rotation of the cover part 1 (and thus allow its lateral movement about its eccentric path) on the smooth surface of Nagata's [large holding plate] 42A than it would move on the textured coil of wire surface of MÃ¼ller/EP. (App. Br. 19). The Examiner disagrees based on the disclosure in MÃ¼ller that the cover part 1 must be easily movable over the entire coil to allow ironing to keep the wire loops down and prevent entanglement (RAN 7; FF 2C-2E). As such, the Examiner concludes that it would not be obvious to one of ordinary skill in the art to put the cover part of MÃ¼ller on top of large holding plate 42A of Nagata because "such a suppression of loops can only be achieved when the cover is moving directly on top of the topmost layer of the coil, as substantially taught by [MÃ¼ller]." (RAN 7). In other words, in the proposed modification to Nagata, the added cover part would no longer perform the ironing function since the cover part it would not contact the wire coil. We agree for the reason set forth by the Examiner as well as other reasons discussed infra. The Requester argues that Examiner is ignoring the fact that Nagata's large holding plate 42A performs an ironing function so this function need not be performed by MÃ¼ller's floating ring, and that stacking of the cover part provides added weight to the periphery of the coil which is admitted by the Patent Owner to have the greatest upward spring effect (App. Br. 6, 22; Reb. Br 14). However, as shown by the Requester's own illustration reproduced above, in the proposed combination, neither the large outer plate Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 12 nor the added floating ring is disposed over the interior portion of the coil so as to iron down the wire. In Nagata's original configuration, however, ironing down of the interior portion of the wire was done with the small inner plate. In this regard, as pointed out by the Patent Owner, the asserted admission "by no means, establishes that there are no issues with the wire at the center portions of the stack." (Resp. Br. 16). Such arrangement is contrary to the teaching of Nagata wherein, except for the pullout hole 52 between the rings for withdrawing the wire, the inner and outer plates cover the entirety of the surface of the wire coil (FF 1E; see also RAN 6; Figs. 1- 8(i)). It is also contrary to the general teachings of MÃ¼ller where the "cover part 1 rests snugly on the topmost wire loop or the topmost surface of the wire coil 4." (FF 2B-2C). Whereas the Requester asserts that the cover part 1 of MÃ¼ller is not sized to cover the entirety of the wire coil and "does not 'iron' the entire top of the wire coil" (Reb. Br. 4-7), the Requester ignores the fact that in MÃ¼ller, "during one rotation of the cover part 1 about inner barrel 3, the entire topmost layer of wire coil 4 is swept over, and any rising wire loops can be ironed down or any uncontrolled withdrawal of wire 12 can be prevented." (FF 2D; see also RAN 7). Thus, MÃ¼ller does iron the entire top of the wire coil. No ironing is performed at all by the cover part in the modified device of Nagata as proposed by the Requester. The Requester asserts that in view of the teachings in MÃ¼ller to provide free, lateral and rotational movement of the cover part (FF 2F), the proposed modification would enhance such free movement since the cover part 1 moves on the smooth surface of Nagata's large holding plate 42A instead of the textured coil of wire surface (App. Br. 19; Reb. Br. 5). This Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 13 argument is largely speculative in that it fails to account for the material compositions of Nagata's large holding plate 42A and MÃ¼ller's cover part, or the frictional characteristics there between.6 (See also Resp. Br. 14). It is speculative to assert that the friction between these components would be less than that between MÃ¼ller's cover part and the wire coil. The Requester also argues that Examiner does not consider that the lateral/eccentric motion of the cover part performs an "imparting function" which we understand to be the "lateral/eccentric motion of the floating ring." (App. Br. 6). However, the cover part moves with a lateral/eccentric motion due to its shape and dimension via the action of the wire, the purported benefits being preventing entanglement of the wire loops, and smoothing (i.e., ironing or pressing down) of the entire topmost layer of the wire coil (FF 2A, 2D, 2E). The prevention of entanglement of the wire loops and smoothing of the wire coil are already explicitly disclosed as being attained by the wire holding plate of Nagata (FF 1A). Hence, the Requester's articulated reason for further modifying the wire holding plate of Nagata is not based on some factually demonstrated or adequately articulated deficiency of the device of Nagata, but instead, appear to be based on impermissible hindsight. In addition to the above, Nagata appears to teach away from the Requester's proposed combination because it is explicit in its teaching that 6 In this regard, while not dispositive, Nagata teaches that as to the embodiment of Figure 8(i) which includes projecting edge 42D and 42E, rubber or sponge is the preferred material for the holding plates (FF 1E) whereas plastic, wood and metal are also taught as suitable materials for the other embodiments. Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 14 the plates must not overlap (FF 1G). Hence, a person of ordinary skill in the art "would be discouraged from following the path set out â€¦ or would be led in a direction divergent from the path" that is suggested by the Requester's proposed rejection. In re Gurley, 27 F.3d at 553; see also In re Wesslau, 353 F.2d at 241. The proposed combination ignores this teaching of Nagata. Furthermore, in the pertinent embodiment of Nagata, the projecting edge 42D and projecting edge 42E are made to be bendable, and the wire is dispensed through the pullout hole 52 formed there between so that "the wire 3 can be pulled out easily without straining" (FF 1F). The proposed rejection of the Requester substantively changes the manner and principle in which the wire is dispensed. See In re Ratti, 270 F.2d at 813 (In Ratti, the modification suggested by the Examiner and rejected by the court changed the basic principle of sealing from a rigid, press-fit, interface between the components, to a resilient interface between the components, thereby changing the technical basis of how a seal performed its sealing function and how a sealed interface was attained.). The second rejection proposed by the Requester also relies on the combination of Nagata and MÃ¼ller, but further relies on the Admission of the Patent Owner which acknowledges that the upward springing effect of wire convolutions would be greatest towards the radially outer portions of the package (App. Br. 29). The Requester apparent position is that this admission provides another reason to modify the device of Nagata to eliminate the small holding plate 42B, and to place the cover part 1 of MÃ¼ller on the large holding plate 42A so as to provide additional weight Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 15 along the outer portion (id.). However, this line of reasoning does not adequately address the above discussed issues pertaining to the combination of Nagata and MÃ¼ller. Furthermore, in addition to pressing down on the coils of wire, Nagata teaches that proper weighting of the components is important so that "it does not hinder the pullout of the wire 3 and that no plastic deformation occurs in the wire by the weight of the holding plates." (FF 1H). Hence, Nagata counsels against the simple rationale that more weight is better which appears to be applied upon by the Requester with respect to the outer portion. In responding to the Requester's proposed rejection, the Examiner stated: Accordingly, any substitution by one of ordinary skill in the art, based on the teachings of the MÃ¼ller/EP reference, of a laterally displaceable ring/cover part in place of the inner holding plate/ring 42B in Nagata, would (if anything) have resulted in the displaceable cover part sliding directly on top of the wire coil where its movement and weight can provide the advantages taught by MÃ¼ller/EP: smoothing/ironing down of the top of the coil, pressing back down any lifted loops, and preventing an entanglement of wire loops and lifting/tilting of the cover, while also avoiding exerting an appreciable lateral load on the wire. (RAN 7, emphasis in original). The Examiner also stated: Thus, the only apparent position in Nagata which might permit performance of those functions taught by MÃ¼ller/EP would be the location that is interior of the [large holding plate] 42A and adjacent the top of the coil - the location initially held by the [small holding plate] 42B. (RAN 12). Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 16 Based on the above statements of the Examiner, the Requester asserts that such modification to Nagata also would have been obvious to one of ordinary skill in the art and that such modification satisfies the limitations of claim 28 (App. Br. 24-25). In this regard, the Requester's briefs set forth an illustration reproduced below which embodies this modification: (See App. Br. 25; Reb. Br. 10). The illustration from the Requester's briefs reproduced above shows Figure 8(i) of Nagata with small holding plate 42B modified so as to provide a gap between the outer surface of the inner core and the inner surface of the second inner ring. The Requester and the Patent Owner argue as to whether the above illustrated modification was suggested by the Examiner's statement and whether the Requester can rely on such modification considering that it was not proposed by the Requester or presented in the Request for Inter Partes Reexamination (Resp. Br. 12-13; Reb. Br. 2-4). However, the Requester's objections are largely moot as the Board has the discretion to enter a new ground of rejection (see 34 C.F.R. Â§41.77(b)). Nonetheless, upon consideration, we agree with the Examiner's conclusion that such Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 17 modification would not result in the invention of claim 28 for the reason set forth by the Examiner as well as other reasons discussed infra. In particular, with respect to modifying the small holding plate 42B but maintaining its position on top of the wire coil, the Examiner further stated that such a combination would: obviate using projecting edges (see Nagata at 42D, 42E) which would no longer be required for restricting the narrow gap around the wire being removed. Consequently, the overlap of projecting edges would be obviated. However, even if it were considered that a wire withdrawal at an outer edge of the second ring could easily displace the cover part/second ring, a need for eccentric, easy displacement and a desire to exert no appreciable horizontal force component on the wire by the ring, which displacement would also tend to cause a widening of the gap at the instant location of wire withdrawal, would obviate against maintaining any projecting edges that overlap each other and ultimately clasp the wire as it is withdrawn. â€¦ Thus, at best, any combination of Nagata in view of the teaching of MÃ¼ller/EP would have had the position of the cover part being on the top of the coil of Nagata and inside the [large holding plate] 42A, and would not have included the displaceable cover part/inner ring overlying the outer (first) ring. Any such combination would fail to meet all of the claimed subject matter in claim 28 because it would not meet the claim's limitation requiring that the displaceable second ring overlie the first ring and partially cover the gap. (RAN 8). We agree with the Examiner's analysis. The Requester argues that the Examiner's analysis "defies the inference of Nagata and MÃ¼ller/EP where a gap is shown to be near the inner core" (App. Br. 26) thereby implying that the wire would be dispensed in this gap, but then, in the following paragraph, states that "[a]s the wire is payed out, it passes through the gap Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 18 between the inner edge 42D of the [large holding plate] of Nagata 42A, and engages the 'rounded shaped' inner edge of the floating ring," (id.) thereby stating that the wire would be dispensed in the gap between the smaller inner plate and the larger outer plate. However, as explained by the Examiner, whether the wire is withdrawn between the outer surface of the inner core and the inner surface of the small holding plate, or alternatively, between the inner surface of the large holding plate and the outer surface of the small holding plate, the combination would obviate the projecting edges of these plates. Specifically, if the wire is withdrawn between the outer surface of the inner core and the inner surface of the small holding plate, the protruding edges 42D and 42E would be unnecessary since it would no longer serve any function. If the wire is withdrawn between the inner surface of the larger outer plate and the outer surface of the inner plate, the protruding edges 42D and 42E that grab the wire would have been undesirable for the reasons noted by the Examiner including the teachings in MÃ¼ller to ensure free movement of the plate (FF 2F) and minimizing the lateral force. Even if the protruding edge 42E of the small holding plate 42B may be argued to be analogous to the radius profile of the cover part 1 of MÃ¼ller (FF 2B, Fig. 3), that does not address the protruding edge 42D of the large holding plate 42A which would not have served any purpose. As the Examiner also noted, the gap or pullout hole 52 between the inner and outer plates would have expanded as the small holding plate 42B moved in the manner disclosed by MÃ¼ller. Without such protruding edges, the combination fails to result in a laterally displaceable second ring overlying the stationary first ring as recited Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 19 by claim 28. Furthermore, as also discussed supra, this second modification also substantially changes the basic principle of operation for dispensing of the wire from that of Nagata. See In re Ratti, 270 F.2d at 813. In its brief, the Requester appears to propose yet another theory as to why claim 28 should be rejected. In particular, the Requester asserts that: Nagata's Fig. 5(i) arguably shows that the wire is payed out in an elliptical path (or eccentrically relative to the axis of the inner core). As the path of the wire payout is elliptical (or eccentric) and the inner ring moves upwardly about the eccentric path, Nagata's FIGS. 5(i) and 8(ii) shows a ring that moves laterally displaceable relative to the first ring and eccentrically to the axis of the drum. (App. Br. 14-15) While the Patent Owner argues that Requester's reliance on Figure 5 of Nagata at this stage of appeal is improper, upon consideration, we find the Requester's assertion unpersuasive. Firstly, Nagata discloses the elliptical configuration of Figure 5(i) to address the small chance that the coil wire that aligns just below the opening could potentially jump out of the opening if the opening was circular (such as that shown in Figure 4) (see col. 6; Figs. 4, 5(i)). This problem is not present in the embodiment of Figure 8(i) which is described by Nagata as having a pullout hole 52 with a stepped structure (due to the projecting edges 42D and 42E of the respective plates) which does not allow "one round of wire to jump out of the pullout hole 52." (See col. 8; FF 1C; Fig. 8(ii)). In addition, to the extent that the projecting edge 42E of the small holding plate 42B is considered to be laterally displaced upon withdrawal of the wire relative to the outer ring because projecting edge 42E is made of a pliable material, same can be said of the large holding plate 42A. Hence, as Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 20 noted by the Examiner, under such application of Nagata, the outer ring is not "laterally stationary" as required by claim 28 (RAN 5-6; see also Resp. Br. 9-10, 17). The Requester also sets forth numerous peripheral arguments asserting Examiner error. In particular, Requester argues that there is a reasonable expectation of success "in combining Nagata's outer ring and MÃ¼ller/EP's floating ring." (App. Br. 5, 26-27; Reb. Br. 11). While reasonable expectation of success is required to conclude obviousness, this issue is not really pertinent to the disposition of the present appeal, the dispositive issues having been discussed supra. The Requester also argues that Examiner "omitted" various facts with respect to the scope and content of Nagata and MÃ¼ller (App. Br. 8-12). However, to the extent that any of the asserted omitted facts were actually material to determining obviousness of claim 28, we expect that the Requester has brought them to our attention in its presentation of the arguments which have been considered and addressed in this decision (see also Resp. Br. 4-9). The Requester further asserts that the Examiner erred because the Examiner failed to resolve the level of skill for one of ordinary skill in the art (App. Br. 15-17). However, the cited prior art can be considered as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the absence of specific findings on the level of skill in the art does not give rise to reversible error "where the prior art itself reflects an appropriate level and a need for testimony is not shown"). Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 21 CONCLUSION We again observe that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 550 U.S. at 418. In our view, the manner in which the respective devices in Nagata and MÃ¼ller operate as well as those teachings that would have led one of ordinary skill in the art in a divergent direction from that taken by the inventors favors a conclusion of nonobviousness. In re Gurley, 27 F.3d at 553; In re Wesslau, 353 F.2d at 241. To conclude otherwise would be to engage in impermissible hindsight, picking and choosing selective elements to substantially reconstruct and redesign the elements in its attempt to establish obviousness of the claimed invention. Thus, the Examiner did not err in concluding that it would not have been obvious to one of ordinary skill in the art to modify the wire holding plate of Nagata in view of MÃ¼ller to result in the payout claimed. ORDER The Examiner's refusal to reject claim 28 based on the combination of Nagata in view of MÃ¼ller, or in further view of Admissions of the Patent Owner, is AFFIRMED. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. Â§Â§ 1.956. AFFIRMED Appeal 2013-003199 Reexamination Control 95/000,627 Patent US 6,745,899 B1 22 PATENT OWNER: LINCOLN ELECTRIC COMPANY/PERKINS COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 THIRD PARTY REQUESTER: KENNETH L. CAGE McDERMOTT WILL & EMERY LLP 600 13th STREET, NW WASHINGTON, DC 20005-3096 alw