Ex Parte Briand et al

Patent Trial and Appeal BoardApr 28, 2016

11826111 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111826, 111 07/12/2007 40582 7590 American Air Liquide, Inc, Intellectual Property Dept. 9811 Katy Freeway Suite 100 Houston, TX 77024 05/02/2016 FIRST NAMED INVENTOR Francis Briand 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. Serie 7215 9463 EXAMINER MAYE,AYUBA ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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): IP-USOffice@airliquide.com Neva.Dare-c@airliquide.com J us tin.Murray@airliquide.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCIS BRIAND, OLIVIER DUBET, and CORINNE CHOVET Appeal2014-004262 Application 11/826, 111 1 Technology Center 3700 Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and MARK A. GEIER, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Francis Briand et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's Final Rejection under 35 U.S.C. Â§ 103(a) of claims 1, 5, 7-10, 12, 13, 15-18, 20, 21, and 23 as unpatentable over Matile (US 2005/0011868 Al, pub. Jan. 20, 2005), Bernhardt (US 2005/0011870 Al, pub. Jan. 20, 2005), Fujii (US 4,854,493, iss. Aug. 8, 1989), and Kresse (US 5,389,761, iss. Feb. 14, 1995); and of claim 3 as unpatentable over Matile, 1 According to Appellants, the real party in interest is L 'Air Liquide Societe Anonyme pour l 'Etude et I 'Exploitation des Procedes Georges Claude. Br. 3. Appeal2014-004262 Application 11/826, 111 Bernhardt, Fujii, Kresse, and Ono (US 2001/0026890 Al, pub. Oct. 4, 2001). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1, the only independent claim, is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A process for laser welding at least one metal workpiece (1) by a laser beam (3), wherein the metal workpiece comprises a surface coating (2) and a lateral edge surface deposit (2a, 2b) on a lateral edge surface ( 1 a) of the metal workpiece, wherein the surface coating (2) and surface deposit (2a, 2b) each contains mainly aluminum and silicon, and wherein the metal workpiece lateral edge ( 1 a) has been previously formed by a cut by shearing, the process comprising the step of applying the laser beam (3) in combination with at least one electric arc ( 4) to melt the metal of the workpiece ( l) and the lateral edge surface deposit (2a, 2b) to thereby weld the at least one metal workpiece (1) without formation of local aluminum concentrations in the weld of greater than 1.2%. ANALYSIS Obviousness of Claims 1, 5, 7-10, 12, 13, 15-18, 20, 21, and 23 over Matile, Bernhardt, Fujii, and Kresse We are persuaded by Appellants' arguments that the Examiner fails to establish a prima facie showing of obviousness in rejecting claims 1, 5, 7- 2 Claims 2, 6, 11, 14, 19, 22, and 24--26 were canceled. Br. 3. 2 Appeal2014-004262 Application 11/826, 111 10, 12, 13, 15-18, 20, 21, and 23 over Matile, Bernhardt, Fujii, and Kresse. See Br. 6-8. In rejecting claim 1, the Examiner first finds that Matile, inter alia, discloses a process for welding at least one metal workpiece by applying a laser beam "in combination with at least one electric arc ... without formation of local metal concentrations in the weld of greater that 1.2 [%] ... since it has been held that discovering optimum or workable ranges involves only routine skill in the art," but looks to Bernard for teaching a "coating (2) [that] contains mainly aluminum and silicon," to Fujii for teaching a "metal workpiece that has been cut by shearing," and to Kresse for teaching a workpiece that, prior to being welded, has a "lateral edge deposit." Final Act. 3--4. Based on the foregoing, the Examiner reasons that [i]t would have been obvious to ... modify Matile in view of Bernhardt with aluminum or silicon to eliminate metallurgical notches as taught by Bernhardt in paragraph 19 [, to] modify Matile with sheering and laser cutting as taught by Fujii in order to achieve high accuracy and high quality weld portion[, and to further] modify Matile, as modified by Bernhardt and Fujii, with deposing the workpiece prior to be[ing] welded as taught by Kresse in order to eliminate oxidation as a factor affecting resistive or laser welding. Id. at 4. In contesting the rejection, Appellants do not dispute that Matile discloses that "hybrid arc/laser welding as a general welding technique is old" and that "clad metal such as galvanized steel is old," but point out that Matile does not disclose the claim limitation of "without formation of local aluminum concentrations in the weld of greater than 1.2%." Br. 6-7. More particularly, Appellants contend that "to apply [optimizing a result-effective 3 Appeal2014-004262 Application 11/826, 111 variable] type of reasoning, the US PTO must show that the variable was known in the art to affect the result for which the variable is being optimized." Id. at 8. We agree. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Furthermore, while acknowledging that Kresse addresses "the problems caused by Al/Si materials on [the lateral edge of] metal surfaces to be welded," Appellants explain that the Kresse solution is "to melt and blow off the surface coating prior to welding," whereas the "instant claims are directed to a process that does not require this kind of pre-weld preparation step." Br. 7-8 (citing Kresse, Abstract). In the Answer, without responding to Appellants' arguments regarding the alleged deficiencies of Matile and Kresse, the Examiner appears to change the rejection, reasoning that the combination of Matile, Bernhardt, and Fujii (without Kresse), "fully meets all the claimed limitations" because "Matile teaches laser type welding for welding metal parts so as to melt and subsequently solidify the metal to be welded," whereas "Bernhardt discloses []using [a] surface coating of [Al/Si] and Fujii discloses [] cutting the surface either by shearing or using laser cutting and combining prior art elements according to known method[ s] to yield predictable results." Ans. 8-9. The Examiner then concludes that the foregoing determination has provided a reason of motivation of combining Matile with Bernhardt and Fujii [where] all the references disclos[ e] using laser welding or cutting and thus, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Matile to coating type material of Bernhardt of Li and to the cutting type such shearing or laser of Fujii would 4 Appeal2014-004262 Application 11/826, 111 have yielded predicable results and resulted in an improved system. Id. at 9. The key to supporting any rejection under 35 U.S.C. Â§ 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), noted that the analysis supporting a rejection under 35 U.S.C. Â§ 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness grounds cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. The Examiner has not made sufficient findings of how Matile would be modified by Bernhardt and Fujii, with or without the teaching of Kresse, to apply "the laser beam (3) in combination with at least one electric arc (4) to melt the metal of the workpiece ( 1) and the lateral edge surface deposit (2a, 2b) to thereby weld the at least one metal workpiece ( 1) without formation of local aluminum concentrations in the weld of greater than 1.2%," as recited by claim 1. Accordingly, we agree with Appellants that, based on the evidence before us, the Examiner has not demonstrated that the claimed subject matter would have been obvious to one having ordinary skill in the art. For the foregoing reasons, we do not sustain the rejection of claims 1, 5, 7-10, 12, 13, 15-18, 20, 21, and 23 as unpatentable over Matile, Bernhardt, Fujii, and Kresse. 5 Appeal2014-004262 Application 11/826, 111 Obviousness of Claim 3 over Matile, Bernhardt, Fujii, Kresse, and Ono The Examiner's rejection of claim 3 is based on the same unsupported findings discussed above with respect to the disclosure of Matile, Bernhardt, Fujii, and Kresse. Final Act. 4--5. The addition of Ono does not remedy the deficiencies of Matile, Bernhardt, Fujii, and Kresse, as discussed supra. Accordingly, for similar reasons as discussed above for claim 1, we do not sustain the Examiner's decision rejecting claim 3. DECISION We REVERSE the Examiner's rejections. REVERSED 6