Ex Parte McLane

Patent Trials and Appeals BoardApr 26, 2013

11224348 - (D) (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN E. McLANE ____________ Appeal 2011-002546 Application 11/224,348 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John E. McLane (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-002546 Application 11/224,348 2 Claimed Subject Matter Claims 1 and 23 are the independent claims on appeal. Claim 1, reproduced below, with emphasis added, is illustrative of the appealed subject matter. 1. A method for analyzing non-metallic inclusions in a weld metal comprising: a) etching said weld bead or weld bead sample; b) applying a first side of an adhering material to at least a portion of said etched weld bead or weld bead sample; c) removing said adhering material from said etched weld bead or weld bead sample, said first side of said adhering material including a plurality of non-metal inclusions that were formerly on said etched weld bead or weld bead sample; and, d) analyzing said non-metal inclusions on said adhering material. Evidence Relied Upon The prior art relied upon by the Examiner in rejecting the claims on appeal is: Mohr US 4,618,405 Oct. 21, 1986 Kelly US 5,061,352 Oct. 29, 1991 Brueckner US 2004/0163669 A1 Aug. 26, 2004 Minoru JP 8-184537 A Jul. 16, 1996 Bourget, Ryan, Surface Finishing From Ra to Rz, Final Manufacturing Assignment, April 2003, accessed at http://xnet.rrc.mb.ca/leonf/reports/ Bourget%20(SurfaceFinish_Report)/SurfaceFinish_Report.doc (Examiner last visited: Apr. 6, 2009). Appeal 2011-002546 Application 11/224,348 3 Rejections The following Examiner’s rejections are before us for review: I. claims 1, 8-10, 13, 14, and 17-22 under 35 U.S.C. § 102(b) as anticipated by Minoru;1 II. claims 2-4, 12, 15, 16, 23, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over Minoru and Kelly;2 III. claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Minoru, Kelly, and Brueckner; IV. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Minoru and Mohr; V. claim 11 under 35 U.S.C. § 103(a) as unpatentable over Minoru and Bourget; VI. claim 24 under 35 U.S.C. § 103(a) as unpatentable over Minoru, Kelly, and Bourget; and VII. claim 25 under 35 U.S.C. § 103(a) as unpatentable over Minoru, Kelly, and Brueckner. 1 Within the body of the rejection, the Examiner alludes to Kelly as evidence demonstrating that electrolysis is embraced by etching since “the process of electrolysis is used to etch a milled (steel sample) surface to reveal the internal quality. Ans. 3-4 (citing Kelly, col. 3, ll. 4-6). 2 We have consolidated the Examiner’s rejections of claims 2-4, 12, 15, and 16 (Ans. 7-9) and claims 23 and 26-28 (Ans. 12-14) since both rejections are based on the combination of Minoru and Kelly. Appeal 2011-002546 Application 11/224,348 4 OPINION Rejection I – Anticipation based on Minoru The Examiner finds that “Minoru teaches a method for analyzing non- metallic inclusions in a weld metal (Pg 3, 0001)” including, inter alia, the step of “applying a first side of an adhering material (Fig 2, Items a & b, Pg 4, 0006, vacuum evaporation film form & conductive tape) to at least a portion of the etched weld bead or weld bead sample (Fig 2, Item a, Pg 4, 0006).” Ans. 4. Appellant argues that “[a]t no point in the process of Minoru is a first side of an adhering material applied to at least a portion of the etched weld bead or weld [bead] sample,” but “[r]ather, a non-metallic inclusion to be analyzed, which may have been coated with carbon, is floated from a steel sample, and subsequently adhered to a conductive tape.” App. Br. 6. We are persuaded by Appellant’s argument. The left-hand side of the detailed view shown in Minoru’s drawing Figure 1(b) depicts a rectangular steel sample having non-metallic inclusions at its surface being electrolyzed by an electrolysis solution which only acts on the steel to “make [the non- metallic inclusions] come floating” as shown on the right-hand side of the detailed view. See Minoru pp. 5-6, para. [0010].3 In other words, the electrolysis solution erodes the steel around the non-metallic inclusions so that the non-metallic inclusions are separated from the steel. Then, in drawing Figure 2(a), a vacuum evaporation film is formed on the surface of the non-metallic inclusions and a portion of the surface of the steel sample. 3 All references to Minoru, are to the English translation from Exhibit B of the Evidence Appendix of the Appeal Brief, which Appellant indicates was “first entered into the record by the Examiner in the Office Action [mailed] April 17, 2009.” App. Br. 14. Appeal 2011-002546 Application 11/224,348 5 Minoru p. 6, para. [0011]. In drawing Figure 2(b) and 2(c), a conductive tape is attached to the vacuum evaporation film on the surface of the non- metallic inclusions and the inclusions are transferred to the surface of the conductive tape so that the inclusions can be analyzed by a scanning electrode microscope (SEM). Id. Thus, although the adhesive side or first surface of the conductive tape is applied to the non-metallic inclusions, the adhesive side or first surface of the conductive tape never contacts a portion of the etched weld bead, weld bead sample, or steel sample of Minoru. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 8-10, 13, 14, and 17-22 dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Minoru. Rejections II-V – Obviousness based on Minoru/Kelly, Minoru/Kelly/Brueckner, Minoru/Mohr, Minoru/Bourget, respectively Dependent Claims 2-7, 11, 12, 15, and 16 The Examiner does not find that any of Kelly, Brueckner, Mohr, and Bourget cure the deficiency of Minoru by teaching applying a first side of an adhering material to at least a portion of said etched weld bead or weld bead sample. Accordingly, we also do not sustain the rejections, under 35 U.S.C. § 103(a), of: claims 2-4, 12, 15, and 16 as unpatentable over Minoru and Kelly; claims 5 and 6 as unpatentable over Minoru, Kelly, and Brueckner; claim 7 as unpatentable over Minoru and Mohr; and claim 11 as unpatentable over Minoru and Bourget. Independent claim 23 and dependent claims 26-28 Appellant persuasively argues that the Examiner’s finding that Minoru teaches the step of “applying a first side of a conductive tape to at least a portion of the conductive material coated on the etched weld bead or weld Appeal 2011-002546 Application 11/224,348 6 bead sample” (Ans. 13, citing (fig. 2, item “a”, para. 0006, conductive tape)), as required by claim 23, is incorrect. The Examiner finds that Minoru substantially teaches independent claim 23’s method for analyzing non-metallic inclusions in a weld metal including, inter alia, the step of “applying a first side of a conductive tape (Fig 2, Item a, Pg 4, 0006, conductive tape) to at least a portion of the conductive material coated on the etched weld bead or weld bead sample (Fig 2, Item a, Pg 4, 0006).” Ans. 12-13. Appellant argues that “Minoru does not teach ‘applying a first side of a conductive tape to at least a portion of said conductive material coated on said etched weld bead or weld bead sample’” as required by Claim 23.” App. Br. 7. We are persuaded by Appellant’s argument because as discussed supra with respect to independent claim 1, although the adhesive side or first surface of the conductive tape is applied to the non-metallic inclusions, the adhesive side or first surface of the conductive tape never contacts at least a portion of the conductive material (i.e., vacuum evaporation film) coated on the etched weld bead or weld bead sample (i.e., steel sample) of Minoru. Rather, as shown in drawing Figure 2(b) of Minoru, the adhesive side or first surface of the conductive tape only contacts the conductive material (i.e., vacuum evaporation film) coated on the non-metallic inclusions. Accordingly, we do not sustain the Examiner’s rejection of independent claim 23, and claims 26-28 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Minoru and Kelly. Appeal 2011-002546 Application 11/224,348 7 Rejections VI-VII – Obviousness based on Minoru/Kelly/Bourget, and Minoru/Kelly/Brueckner, respectively The Examiner has not found that either of Bourget and Brueckner cure the deficiency of the combination of Minoru and Kelly by teaching applying a first side of a conductive tape to at least a portion of said conductive material coated on said etched weld bead or weld bead sample. Accordingly, we also do not sustain the rejections, under 35 U.S.C. § 103(a), of: claim 24 as unpatentable over Minoru, Kelly, and Bourget; and claim 25 as unpatentable over Minoru, Kelly, and Brueckner. DECISION We reverse the Examiner’s decision to reject claims 1-28. REVERSED Klh