Ex Parte Rajan

Patent Trial and Appeal BoardOct 25, 2012

11063080 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte VAIDYANATH B. RAJAN ____________________ Appeal 2010-009782 Application 11/063,080 Technology Center 3700 ____________________ Before: JOHN C. KERINS, EDWARD A. BROWN, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009782 Application 11/063,080 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-28 and 80-109. We have jurisdiction under 35 U.S.C. § 6(b). We reverse all rejections and enter a new ground of rejection of all claims. THE CLAIMED SUBJECT MATTER The claimed subject matter concerns “electrodes that form weld beads with enhanced slag placement and removal properties.” Specification, p. 1, l. 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A metal electrode to form a weld bead with improved slag forming properties with respect to reduced accumulation of slag in toes of the weld bead comprising a metal rod that includes a slag- modifying additive, said slag modifying agent including metallic indium, indium compound, and mixtures thereof. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Longini Mataré Sverdrup Shibata Kuwayama Weiner Nikodym US 2,836,520 US 2,944,167 US 3,558,360 US 4,161,403 US 4,432,937 US 5,114,876 US 6,608,284 B1 May 27, 1958 Jul. 5, 1960 Jan. 26, 1971 Jul. 17, 1979 Feb. 21, 1984 May 19, 1992 Aug. 19, 2003 Appeal 2010-009782 Application 11/063,080 3 REJECTIONS Appellant seeks our review of the following rejections: Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym and Sverdrup. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym and Kuwayama. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym and Weiner. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym and Longini. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym and Mataré. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym, Sverdrup, and Shibata. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym, Kuwayama, and Shibata. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym, Weiner, and Shibata. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym, Longini, and Shibata. Claims 1-28 and 80-109 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nikodym, Mataré, and Shibata.1 1 Appellant refers to a rejection of claims 80 and 94 under 35 U.S.C. § 132(a) (App. Br. 6), but no such claim rejection is of record. The Examiner’s objection to the specification under 35 U.S.C. § 132(a) (Ans. 3-4) is not an appealable matter because no related claim rejection under 35 U.S.C. 112, first paragraph has been made. See M.P.E.P. § 2163.06(II). Appeal 2010-009782 Application 11/063,080 4 ANALYSIS We observe at the outset that every claim recites that the slag modifying agent includes “metallic indium, indium compound, and mixtures thereof” (emphasis added).2 Use of the conjunction “and” in the listing of materials can be reasonably construed as requiring the slag modifying agent to include all four of these materials (i.e., metallic indium, indium compound, and at least two mixtures thereof) in the slag modifying agent.3 The Examiner’s rejections and Appellants’ arguments, however, appear to interpret the claims as requiring one or more of these materials, which is inconsistent with the recitation of the term “and.” Moreover, the Specification appears not to disclose any single embodiment that simultaneously includes metallic indium, indium compound, and at least two mixtures thereof, and thus does not appear to support such other construction of the claims. Consequently, we cannot arrive at an unambiguous interpretation of the claims consistent with the Specification. As a result, the claims are so indefinite as to require “considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims.” See In re Steele, 305 F.2d 859, 862, (CCPA 1962). We must therefore reverse pro forma all prior-art rejections of the appealed claims without reaching their merits. See id. In view of the lack of clarity in the claims, and pursuant to our authority under 37 C.F.R. § 41.50(b)(2011), we enter a new ground of rejection against claims 1-28 2 We note that “said slag modifying agent” lacks antecedent basis in claims 1 and 94. 3 Claim 1 as originally filed recited “metallic indium, indium compound, or mixtures thereof” and was amended to its present form by Amendment filed May 15, 2008. Claim 94 was newly presented in the same Amendment. Appeal 2010-009782 Application 11/063,080 5 and 80-109 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.”). DECISION For the above reasons, the Examiner’s rejection of claims 1-28 and 80-109 is REVERSED. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1-28 and 80-109 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2010-009782 Application 11/063,080 6 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Klh