Ex Parte Burt et al

Patent Trial and Appeal BoardNov 20, 2012

11471873 (P.T.A.B. Nov. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RANDALL M. BURT and JON P. CHIAPPONE ________________ Appeal 2010-001226 Application 11/471,873 Technology Center 3700 ________________ Before STEVEN D.A. McCARTHY, JOHN W. MORRISON and NEIL T. POWELL, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 2 1 The Appellants identify the real party in interest as Lincoln Global, Inc. Appeal No. 2010-001226 Application No. 11/471,873 2 decision finally rejecting claims 14-43 and 45-52.2 The Examiner rejects 1 claims 14-20, 23-30, 33-39, 42, 43 and 45-52 under 35 U.S.C. § 103(a) as 2 being unpatentable over O’Donnell (US 5,124,530, issued Jun. 23, 1992), 3 Kotecki (US 6,339,209 B1, issued Jan. 15, 2002) and Jensen (US 2,349,550, 4 issued Feb. 12, 1946); and claims 21, 22, 31, 32, 40 and 41 under § 103(a) as 5 being unpatentable over O’Donnell, Kotecki, Jensen and Landis (US 6 2,909,778, issued Oct. 20, 1959). We have jurisdiction under 35 U.S.C. 7 § 6(b). 8 We REVERSE. 9 Claims 14, 27 and 37 are independent. Claim 14 is illustrative: 10 14. A welding electrode comprising a metal core 11 having a front end that is at least partially coated 12 with an end coating material, said end coating 13 material at least partially inhibiting porosity of a 14 weld bead formed during the welding operation, 15 said end coating material only partially coating an 16 outer surface of said welding electrode, said end 17 coating extending from said front end up to about 18 4 inches from said welding electrode. 19 Claim 27 recites a method for forming a weld bead on a workpiece including 20 the step of “providing a welding electrode having a metal core, a flux 21 coating and an end coating material at least partially coated on a front end of 22 said metal core, . . . said end coating material having a different composition 23 from said flux coating.” Claim 37 recites a method of manufacturing a 24 2 On page 2 of the Final Office Action mailed January 8, 2009, the Examiner rejected claims 1-43 and 45-52 on the ground of non-statutory double patenting as being unpatentable over claims 14-51 of Burt (US 7,087,859, issued Aug. 8, 2006). The Examiner withdrew the rejection on page 2 of the Answer in response to the Appellants’ filing of a terminal disclaimer. Claims 1-13 do not appear to be subject to any ground of rejection and are not on appeal. Appeal No. 2010-001226 Application No. 11/471,873 3 welding electrode including the steps of “applying a flux coating at least 1 partially on said metal rod; and . . . at least partially coating a front end of 2 said metal rod with an end coating material, . . . said end coating material at 3 least partially having a different composition from said flux coating.” 4 O’Donnell describes a coated welding electrode including a stainless 5 steel core wire and a flux coating. The flux coating includes up to 14.5 wt% 6 alkaline earth metal fluoride or aluminum fluoride and about 0.5 to 12.5 7 wt% cerium fluoride, for a total metal fluoride content of about 5-15 wt%. 8 In addition, the flux coating includes about 2-25 wt% cerium oxide plus 9 zirconia. A binder holds the flux to the stainless steel core. (O’Donnell, col. 10 2, ll. 16-24). 11 Kotecki describes a flux for use in a flux cored high chromium 12 welding electrode. (Kotecki, col. 3, ll. 26-30). With regard to fluxes in 13 general, Kotecki teaches that: 14 Fluorides advantageously modify the slag 15 properties to allow the flux system to be used in a 16 wide variety of welding applications, to assist in 17 the ease of slag removal after the slag cools, to 18 reduce porosity in the weld bead, and/or to provide 19 shielding to the weld bead from adverse effects of 20 the atmosphere. 21 (Kotecki, col. 6, ll. 52-57). 22 Jensen describes an “electrode for use in underwater oxy-arc cutting.” 23 (Jensen, col. 1, ll. 1-3). A bore 4 extends through the electrode 3 for the 24 purpose of conveying oxygen to the cutting area. (Jensen, col. 1, ll. 43-46). 25 A waterproof, dielectric coating 6 surrounds the electrode 3 (Jensen, col. 1, 26 ll. 47-50 and fig. 1) and “makes possible continuous maintenance of the arc 27 underwater” (Jensen, col. 1, ll. 3-14). One manner in which the coating 6 28 Appeal No. 2010-001226 Application No. 11/471,873 4 facilitates maintenance of the arc under water is “by burning off at a slower 1 rate than the material forming the electrode core thereby forming a crater 2 which protects the arc from the water and which acts as a spacer to keep the 3 electrode material and the material to be cut in a fixed relationship.” (Id.; 4 see also id., fig. 2). Another manner in which the coating 6 facilitates 5 maintenance of the arc under water is “by emitting gases which assist in 6 stabilizing the arc and which aid in driving the water away from the region 7 of the arc.” (Jensen, col. 1, ll. 3-14). 8 The Examiner concludes that it would have been obvious “to use a 9 coating as taught by Jensen in the O’Donnell et al. system because of the 10 coated electrode is protected from the environment and hence the resulting 11 weld would have reduced contamination and porosity effects.” (Ans. 5). 12 The Examiner explains that: 13 O’Donnell et al. and Kotecki both teach a flux 14 coating and Jensen discloses an end coating. The 15 O’Donnell et al. and Kotecki flux coatings contain 16 fluoride and so forth. Fluoride being a known 17 porosity inhibitor by use of shielding. Jensen 18 teaches polyvinyl chloride coatings used on the 19 end tip of the electrode. Thus the combination of 20 the references does in fact teach the two different 21 coatings and compositions. 22 (Ans. 9-10). 23 The Examiner’s proposed reason why the subject matter of 24 independent claims 14, 27 and 37 would have been obvious does not explain 25 persuasively why one of ordinary skill in the art familiar with the teachings 26 of Jensen would have had reason to apply to O’Donnell’s welding electrode 27 a coating similar to that described by Jensen. The Examiner reasons that the 28 application of such a coating to O’Donnell’s welding electrode would have 29 Appeal No. 2010-001226 Application No. 11/471,873 5 protected the electrode from the environment. Jensen teaches a coating 1 designed to protect the arc of an underwater cutting tool from an underwater 2 environment. (See Jensen, col. 1, ll. 3-14). The Examiner has not 3 articulated reason to believe that O’Donnell’s welding electrode is adapted 4 for use in underwater welding. Since O’Donnell’s welding electrode and 5 Jensen’s underwater cutting tool are designed to perform different functions, 6 one of ordinary skill in the art familiar with the teachings of Jensen would 7 not thereby acquire reason to add a coating like Jensen’s to O’Donnell’s 8 welding electrode. (See Reply Br. 6-7). Neither has the Examiner 9 adequately explained how a coating such as that described by Jensen (which 10 does not appear to include any fluoride salts) might have reduced porosity in 11 a weld formed using a welding electrode to which such a coating had been 12 applied. 13 Therefore, the Examiner has not provided persuasive reasoning with 14 some rational underpinning adequate to support the rejection of independent 15 claims 14, 27 and 37. The Examiner’s reasoning in the middle of page 5 of 16 the Answer does not remedy the deficiencies in the combined teachings of 17 O’Donnell, Kotecki and Jensen for purposes of the rejection of dependent 18 claims 25, 35 and 49. We do not sustain the rejection of claims 14-20, 23-19 30, 33-39, 42, 43 and 45-52 under § 103(a) as being unpatentable over 20 O’Donnell, Kotecki and Jensen. 21 With regard to the rejection of dependent claims 21, 22, 31, 32, 40 22 and 41, the Examiner reasons that it would have been obvious “to note the 23 surface tension of the electrode material, as taught by Landis et al. in the 24 O’Donnel et al., Kotecki and Jensen system because too low a surface 25 tension will create a protective environment around the weld bead and 26 Appeal No. 2010-001226 Application No. 11/471,873 6 negate harmful contamination effects.” (Ans. 6; see also Landis, col. 8, ll. 1 39-45). This reasoning does not explain persuasively how Landis might 2 remedy the deficiencies in the teachings of O’Donnell, Kotecki and Jensen. 3 We do not sustain the rejection of claims 21, 22, 31, 32, 40 and 41 under 4 § 103(a) as being unpatentable over O’Donnell, Kotecki, Jensen and Landis. 5 6 DECISION 7 We REVERSE the Examiner’s decision rejecting claims 13-43 and 8 45-52. 9 REVERSED 10 11 mls 12