Ex Parte Colvin et al

Patent Trial and Appeal Board

Aug 21, 2017

14034661 (P.T.A.B. Aug. 21, 2017)

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.
14/034,661 09/24/2013 Nathanael Micah Colvin 1800CZ00711 9733
13866 7590 08/23/2017
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Boulevard
Suite 750
Gaithersburg, MD 20878
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN MICAH COLVIN, VALERIO COZZI,
and JAMES G. SCHOOP 1
Appeal 2016-005359
Application 14/034,661
Technology Center 3700
Before DANIEL S. SONG, KEN B. BARRETT, and LEE L. STEPINA,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 12, 14, 16, and 20-23 in the present application (App. Br.
6). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We REVERSE.
1 Collectively referred to as “Appellant” herein. The real party in interest is
The ESAB Group (Appeal Brief (hereinafter “App. Br.”) 4).
Appeal 2016-005359
Application 14/034,661
The claimed invention is directed to a bimetallic welding electrode
(Spec. Title; Abstract). Representative independent claim 12 reads as
follows (App. Br. 17, Claims App’x, emphasis added):
12. A bimetallic welding wire, comprising:
a welding wire having a longitudinal axis, the welding
wire having an elongated channel formed on a surface thereof,
the elongated channel aligned with the longitudinal axis;
an arc enhancing material disposed in the elongated
channel; and
a metal filament disposed in the elongated channel such
that the metal filament lays on top of the arc enhancing material;
wherein the elongated channel is offset from a center of
the welding wire.
The Examiner rejects claims 12, 14, 16 and 20—232 as unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of over Elster
(U.S. Patent No. 3,114,033, issued Dec. 10, 1963) and Paton (U.S. Patent
No. 4,999,479, issued Mar. 12, 1991) (Final Office Action (hereinafter
“Final Act.”) 2; see also App. Br. 9).
ANALYSIS
The Examiner rejects claim 1 finding that Elster discloses each and
every limitation of claim 12, except for the limitation requiring that “the
2 The Final Office Action identifies claims 20—22 in a heading on page 2, but
this heading does not include dependent claim 23, which depends from
claim 12. However, the body of the rejection on page 4 of the Final Office
Action does include claim 23, and thus, its omission in the heading appears
to be a typographical error.
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Appeal 2016-005359
Application 14/034,661
metal filament lays on top of the arc enhancing material.” (Final Act. 2). In
particular, the Examiner finds that Elster discloses
an arc enhancing material (first material is included as part of
flux agent 2) disposed in the elongated channel (as shown in
Fig. 1; Col. 4, lines 6—7); and a metal filament disposed in the
elongated channel (flux agent 2 is a mixture of materials which
includes metal; Col. 4, lines 32—36).
(Final Act. 2).
Thus, the Examiner considers flux agent 2 of Elster, and specifically,
the materials therein, as satisfying the limitations “an arc enhancing
material,” and “a metal filament.” As to the limitation requiring the metal
filament laying on top of the arc enhancing material, the Examiner finds that
Paton teaches an electrode wire wherein the metal filament (2)
lays on top of the arc enhancing material (4 which comprises
layers 5 and 6) (Col. 7, lines 36-46; Col. 8, lines 1—7).
(Final Act. 3; see also Ans. 6).
The Appellant disagrees with the Examiner’s fact findings with
respect to Elster and argues, inter alia, that “the flux agent 2 of Elster is not
in the form of a filament, but rather, the flux agent 2 is in powder or paste
form. See Elster at col. 3, lines 73—74. In this regard, ‘filament’ is defined0
as ‘[a] fine or slender thread, wire, or fiber.’” (App. Br. 11, quoting a
dictionary definition of “filament”). The Appellant further argues that the
Examiner’s interpretation of “metal filament” is unreasonably broad, and
that the disclosed powder or paste of Elster is not a filament (Reply Br. 12).
The Examiner responds that
The plain meaning under the broadest reasonable interpretation
of the term “metal filament” (claim 12, line 6) requires a thin
strip, or fine/slender thread, wire or fiber comprising metal.
The elongated structure formed by the agent flux 2 of Elster is
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Appeal 2016-005359
Application 14/034,661
shaped as a filament or thin strip, or fine/slender thread, wire or
fiber (as shown in Fig. 1), and the flux agent 2 is a mixture of
materials comprising metals such as aluminum, iron and ferro-
titanium.
(Ans. 5—6).
We generally agree with the Appellant, and observe that the
Specification discloses that the filament is drawn from a spool in a
continuous fashion (Spec. |31; Fig. 38), this disclosure being consistent with
the dictionary definition of “filament” quoted by the Appellant.
In contrast, Elster discloses that
As a rule, these rods are welded with the cast iron parts in the
presence of a fluxing agent in powder or paste form in the usual
manner. Nevertheless, the fluxing agent may be carried by the
rod itself within a groove or recess therealong, or by providing
the flux agent as a covering for the rod itself.
(Elster, col. 3,1. 73—col. 4,1. 3).
There is no indication in Elster that its flux agent 2 is different from
the “powder or paste form” discussed therein. We disagree with the
Examiner that mere inclusion of such powder or paste within a groove of
Elster makes such “powder or paste” a “filament,” and this finding appears
to be based on an unreasonably broad interpretation of the limitation
“filament.” While Elster further discloses that the fluxing agent may cover
the rod, such configuration is referred to therein as a covering or “a sheath of
flux agent 2” (Elster, col. 4,11. 2—3, 8—9), and hence, also does not satisfy the
“filament” limitation at issue under the broadest reasonable interpretation of
that limitation in view of the Specification. Accordingly, we find that the
Examiner has not sufficiently shown that the flux agent 2 of Elster is a
“filament.”
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Appeal 2016-005359
Application 14/034,661
In addition, the Appellant also disagrees with the Examiner’s fact
findings with respect to Paton and argues, inter alia, that
even if charge 2 [of Paton] is considered to be “a metal
filament,” “that filament would not lie on top of the alleged arc
enhancing material (4) but rather would be surrounded by a
coating of the alleged arc enhancing material (4).”
(App. Br. 13, citing Paton, Fig. 1).
The Appellant analogizes that “to say that region (2) [of Paton] lies
‘on top of regions (5), (6), would be akin to saying that the earth’s core lies
‘on top of’ the earth’s mantle.” (App. Br. 14). We again agree with the
Appellant. The Examiner’s finding as to Paton and the rejection based
thereon appear to be premised on an unreasonably broad interpretation of the
limitation “the metal filament lays on top of the arc enhancing material.”
In view of the above, we reverse the Examiner’s rejection of
independent claim 12. The remaining claims on appeal ultimately depend
from independent claim 12. Thus, Examiner’s rejection of these dependent
claims is reversed as well. The remaining arguments submitted by the
Appellant with respect to claim 12, including whether the flux agent of
Elster is a “metal,” as well arguments directed to dependent claim 23, are
moot.
CONCLUSION
The Examiner’s rejection of claims 12, 14, 16, and 20—23 is
REVERSED.
REVERSED
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