Ex Parte Ikeda et al

Patent Trial and Appeal BoardMar 21, 2017

12983486 (P.T.A.B. Mar. 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. 12/983,486 01/03/2011 Tetsunao IKEDA 373940US99 1469 22850 7590 03/23/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER CALVETTI, FREDERICK F ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TETSUNAO IKEDA, HIROSHI SUGAHARA, and HIROHISA WATANABE Appeal 2015-0007581 Application 12/983,4862 Technology Center 3700 Before MICHAEL C. ASTORINO, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—11 and 18. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed Apr. 22, 2014) and Reply Brief (“Reply Br.,” filed Sept. 26, 2014), and the Examiner’s Final Office Action (“Final Act.,” mailed Dec. 19, 2013) and Answer (“Ans.,” mailed July 28, 2014). 2 According to Appellants, the real party in interest is Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, LTD) (Appeal Br. 1). Appeal 2015-000758 Application 12/983,486 Introduction Appellants’ application relates to “a stainless steel flux cored wire with a reduced amount of water-soluble hexavalent chromium contained in fumes generated in welding of stainless steel and other materials.” (Spec. 1, 11. 3-6). Claim 1, reproduced below, is the sole independent claim on appeal, and is representative of the subject matter on appeal: 1. A stainless steel flux cored wire comprising a stainless steel shell and a flux filling the shell, the amount of Si contained in the entire wire being 2.5% by mass or higher in terms of SiCE, and a total amount of at least one compound selected from the group consisting of polytetrafluoroethylene, graphite fluoride and perfluoropolyether contained in the flux being 0.005 to 0.10% by mass of the total mass of the wire in terms of F. (Appeal Br., Claims App.) Rejection on Appeal The Examiner maintains, and Appellants appeal, the following rejections: I. Claims 1—11 and 18 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. II. Claims 1—11 and 18 stand rejected under pre-AlA 35 U.S.C. § 103(a) as being unpatentable over Watanabe 2 Appeal 2015-000758 Application 12/983,486 (EP 1,361,016 Al, pub. Nov. 12, 2003), Takehisa (JP 59085396, pub. May 17, 1984), and Takauchi (EP 1,769,882 Al, pub. Apr. 4, 2007). III. Claims 1—2, 5, and 9-11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Takehisa and Watanabe. IV. Claims 3, 4, 6, 8, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Takehisa, Watanabe, and Baune (US 2005/0189337 Al, pub. Sept. 1, 2005). V. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Takehisa, Watanabe, Baune, and Takauchi. VI. Claims 9—11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Takehisa; Watanabe; JP 2007- 090376 A (pub. Apr. 12, 2007); JP H6-155080 (pub. June 3, 1994); Ogawa (US 5,861,605, iss. Jan. 19, 1999); and O’Donnell (US 5,124,530, iss. June 23, 1992). ANALYSIS Rejection I (Indefiniteness) Claims 1—11 and 18 The Examiner rejects claims 1—11 and 18 under 35 U.S.C. § 112 (pre- AIA), second paragraph, as being indefinite (Final Act. 2). The Examiner reasons: Claim 1 recites “in the flux” but without specifying when that occurs or where-in the core exclusively? Its physical location is not limited. The claims do not exclude other components or 3 Appeal 2015-000758 Application 12/983,486 locations. It is conventional to use lubricant with the shell, and the claims are open ended using the term “comprising” which provides for that. As such broadest reasonable interpretation encompasses measurement during processing of flux when F reactants are so present. The claims do not exclude surface lubricant. (Id.) We disagree with the Examiner, and we determine that the plain claim language would be clear to a person of ordinary skill in the art. See In re Packard, 751 F.3d 1307, 1311—12 (Fed. Cir. 2014). First, we note Appellants’ argument that it is well-known to those skilled in the art that the flux is located in the core of the wire (Appeal Br. 7). Second, the Appellants’ argument coincidences with the language in claim 1, which refers to a “flux cored wire” with a “flux filling the shell.” As such, we determine that it is clear from the claim language itself that the claim requires flux in the core of the wire. The Examiner’s remaining reasons for finding the claim indefinite, including the use of an open transition, i.e., the term “comprising,” and the lack of an upper boundary for Si (see Final Act. 2—3), relate to issues of breadth. However, breadth is not a basis for indefmiteness. See In re Robins, 429 F.2d 452, 458 (CCPA 1970). We, therefore, do not sustain the Examiner’s rejection under § 112, second paragraph, of independent claim 1. For similar reasons, we do not sustain the Examiner’s rejection under § 112, second paragraph, of dependent claims 2—11 and 18. 4 Appeal 2015-000758 Application 12/983,486 Rejection II (Obviousness) Claims 1—11 and 18 We are persuaded by Appellants’ argument that the Examiner has articulated insufficient reasoning for a person of ordinary skill in the art to have modified Watanabe to replace metal fluoride with PTFE3 to arrive at the invention of independent claim 1 (see Appeal Br. 5). Appellants assert that in Takehisa, a lubricant containing graphite, molybdenum disulfide and tetrafluoroethylene is applied to the shell of the wire as a surface lubricant and is not a component of the flux {id. at 4). We agree that Takehisa incorporates tetrafluoroethylene on the surface of the wire (see Takehisa, Abstract). The Examiner relies on Watanabe for a stainless steel wire with a shell and a core (Final Act. 4), relies on Takehisa for the use of PTFE {id.), and relies on Takauchi for other conventional components used with PTFE (Ans. 12). The Examiner reasons that a person of ordinary skill in the art would have modified the wire of Watanabe “to include [the] PTFE of Takehisa as the F component” in order to reduce harmful fumes {see Final Act. 4—5; Ans. 12). The Examiner reasons that the location of the PTFE is optional and does not relate to a change in chemistry {see Ans. 10—13). Above, however, we construe the claims to require PTFE in the flux in the core of the wire. As such, we conclude that Takehisa, which uses tetrafluoroethylene on the surface of the wire, provides insufficient support for the Examiner’s proposal to combine the references in a manner to arrive at the wire of claim 1, which requires PTFE in the core of the wire. Nor 3 PTFE is polytetrafluoroethylene (see Spec. 3). 5 Appeal 2015-000758 Application 12/983,486 does the Examiner provide other evidence or articulated reasoning to remedy the deficiency therein. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 under § 103 over Watanabe, Takauchi, and Takehisa. For similar reasons, we do not sustain the Examiner’s rejection of dependent claims 2—11 and 18 under § 103 over Watanabe, Takauchi, and Takehisa. Rejections III—VI (Obviousness) Claims 1—11 and 18 The remaining rejections suffer from the same deficiency in Takehisa, as set forth above with respect to the rejection of independent claim 1 under § 103 over Watanabe, Takauchi, and Takehisa. The Examiner does not rely on any additional references or reasoning to remedy the argued deficiency in Takehisa. For similar reasons as above, we do not sustain the Examiner’s remaining rejections of claims 1—11 and 18 under § 103 over Takehisa and Watanabe, alone or further in view of one or more of Baune, Takauchi, JP 2007-090376 A, JP H6-155080, Ogawa, and O’Donnell. DECISION The Examiner’s decision to reject claims 1—11 and 18 under § 112, second paragraph, is reversed. The Examiner’s decision to reject claims 1—11 and 18 under § 103 is reversed. REVERSED 6