Ex Parte Stava

Patent Trial and Appeal Board

Jan 9, 2013

11109565 (P.T.A.B. Jan. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ELLIOTT K. STAVA
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Appeal 2010-003294
Application 11/109,565
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant
1
appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, 5, 8-10, 12-16, and 19-26. Claims 3, 6, 7, 11, 17, and 18 are
cancelled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER

The claimed subject matter relates to “short-circuit welding methods
and systems for joining dissimilar metals, such as adjacent pipe sections
made from different types or alloys of steel.” Spec. 5, ll. 15-16. Claims 1,
15, and 16 are the independent claims on appeal. Claim 1 is illustrative of
the claimed subject matter and is reproduced below with emphasis added:
1. A welding method, comprising:
(a) locating edges of first and second workpieces
proximate one another, said first and second workpieces being
of different first and second metals, respectively;
(b) directing a welding electrode toward said workpiece
edges; and
(c) providing current to said electrode to deposit molten
metal from said electrode to said workpieces to join said
workpieces in a sequence of welding cycles, each of said
welding cycles including: an arc condition during which said
electrode is spaced from said workpieces, an arc is formed
between said electrode and said workpieces, and molten metal
is formed on an end of said electrode, a short-circuit condition
during which said molten metal on said end of said electrode
contacts said workpiece and then transfers from said electrode
to said workpiece, and a metal breaking fuse condition during

1
Appellant identifies the real party in interest as Lincoln Global, Inc. App.
Br. 3.
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which said molten metal separates from said end of said
electrode; and
(d) controlling said current supplied to said electrode
according to a detected start of said short-circuit condition and
according to a detected or anticipated start of said metal
breaking fuse condition;
wherein providing current to said electrode comprises
providing a controlled boost pulse to said electrode during said
arc condition to establish an arc length and to form said molten
metal on said end of said electrode, and providing a controlled
background current to said electrode following said boost pulse
to control heating of said arc until a short-circuit condition of a
subsequent welding cycle.

REJECTIONS
Appellant seeks review of the following rejections:
(1) claims 1, 2, 4, 5, 8-10, 12-14, 16, and 19-26 under 35 U.S.C.
§ 103(a) as unpatentable over Stava ‘863 (US 5,961,863, iss. Oct. 5, 1999)
and Bertossa (US 4,575,611, iss. Mar. 11, 1986) (Ans. 3-7); and
(2) claim 15 under 35 U.S.C. § 103(a) as unpatentable over Stava
‘863, Bertossa, and Stava ‘241 (US 6,160,241, iss. Dec. 12, 2000) (Ans. 7-
9).

ANALYSIS
Rejection of claims 1, 2, 4, 5, 8-10, 12-14, and 21-26
under 35 U.S.C. § 103 as unpatentable over Stava ‘863 and Bertossa
Only issues and findings of fact contested by Appellant in the Briefs
will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010) (precedential). Appellant argues claims 1, 2, 4, 5, 8-10, and 12-14 as
a group. App. Br. 11-12. We select independent claim 1 as the
representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 21-26
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depend, either directly or indirectly, from independent claim 1, and
Appellant does not set forth separate arguments for any of claims 21-26
other than those provided for claim 1. See App. Br. 11-14. Accordingly,
claims 2, 4, 5, 8-10, 12-14, and 21-26 stand or fall with claim 1.
The Examiner found that Stava ‘863 discloses all of the limitations of
independent claim 1, except for the “first and second workpieces being of
different first and second metals.” Ans. 3-4; see also Id. at 6. The Examiner
also found that Bertossa “discloses two pipes being joined by different
materials.” Ans. 4 (citing Bertossa, col. 6, ll. 66-68 and col. 7, ll. 1-3).
While Bertossa teaches that the invention may be suitable “where the gap
left by the removal of the original weld is relatively large” (Bertossa, col. 3,
ll. 5-8), Bertossa also teaches that “[t]he invention herein is likewise
applicable where . . . the two pipes being joined each consist of a
substantially different type of material” (Bertossa, col. 6, l. 66 – col. 7, l. 1).
The Examiner then concluded that:
[I]t would have been obvious to one of ordinary skill in the art
at the time [the] invention was made to modify Stava[ ‘863]’s
invention to include one of the pipes to be a different type of
metal, as suggested by Bertossa, for the purpose of providing a
weld replacement method that produces a reliable pipe joint
compatible with pipe materials being welded.
Ans. 4 (citing Bertossa, col. 3, ll. 5-8).
Appellant first contends that “even if one of ordinary skill were
motivated to combine these patents as suggested by the Examiner, one
would not arrive at the present invention.” App. Br. 11. In particular,
Appellant contends that Bertossa teaches that a “bridge ring would be
necessary to join two dissimilar pipes” such that “the resulting combination
would not arrive at the invention as claimed.” Id.
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Such an argument is unpersuasive because it mischaracterizes the
rejection. The Examiner’s rejection is not based on the incorporation of
Bertossa’s bridge ring into the welding method of Stava ‘863. Rather, the
rejection is based on modifying the invention of Stava ‘863 to replace the
“two steel plates, such as two pipe sections” (Stava ‘863, col. 1, ll. 27-28)
with two pipes of substantially different types of material. Ans. 4; see also
Bertossa, col. 6, l. 66 – col. 7, l. 1. Accordingly, the combination, as set
forth by the Examiner, would arrive at the invention as claimed.
Appellant secondly contends that “one of ordinary skill in the art
would not be motivated to make the combination suggested by the
Examiner.” App. Br. 11. In particular, Appellant contends that “Bertossa’s
provision of the bridge ring teaches away from directly welding the pipes
together as in Stava [‘863]” and that “one of ordinary skill reading Stava
[‘863] would be discouraged from joining dissimilar material directly based
on Bertossa’s use of the bridge ring” Id.; see also Reply Br. 11.
However, teaching away requires a prior art reference to criticize,
discredit, or otherwise discourage the claimed solution. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed). Appellant’s argument is unconvincing
because Appellant has not identified any particular disclosure in Bertossa
that criticizes, discredits, or discourages direct joining of work pieces of
dissimilar materials in order to teach away.
Appellant thirdly contends that “Bertossa does not provide any
indication that one would have a reasonable expectation of success indirectly
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[sic] joining two dissimilar work pieces and therefore would provide no
reason for attempting to join work pieces of dissimilar material in the
manner that Stava [‘863] joins work pieces of the same material.” App. Br.
11.
We are not persuaded by Appellant’s contention. Appellant has cited
no authority that the Examiner is required to show that Bertossa provides an
indication of a reasonable expectation of success. Additionally, the
Examiner has articulated an adequate reason with a rational underpinning as
to why the substitution of workpieces of dissimilar material would
reasonably be expected to succeed. We note that absolute predictability that
the substitution will be successful is not required. All that is required is a
reasonable expectation of success. See In re O'Farrell, 853 F.2d 894, 903-
904 (Fed. Cir. 1988). Moreover, Appellant does not provide an adequate
explanation or evidence as to why a person of ordinary skill in the art would
not have a reasonable expectation of success in directly joining two
dissimilar work pieces. The bridge ring of Bertossa is not provided to
address any perceived lack in the capability of arc welding to join dissimilar
materials, but rather is provided to improve welding over a large gap in a
pipe where the inside surface is not accessible after welding. See Bertossa,
col. 2, ll. 38-46; see also Ans. 10. Bertossa does teach that arc welding is
capable of joining dissimilar materials as each layer 30 of a fusible material
“extends throughout the full width of the gap [3] and it coaxially encircles its
underlying surface.” Bertossa, col. 5, ll. 54-56 (emphasis added). “A
sufficient number of . . . layers [30] are deposited to fill gap 3 substantially
to the level of exterior surface 10 of pipe 1.” Bertossa, col. 5, ll. 57-60. As
best illustrated in Figure 3 of Bertossa, layers 30 are disposed between
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adjacent ends of two pipes 1 without any portion of the bridge ring 16
disposed therebetween. Accordingly, one of ordinary skill in the art would
expect layers 30 to be weld compatible with two pipes being joined together
directly, including two pipes consisting of substantially different types of
material. See Bertossa, col. 6, l. 60 – col. 7, l. 3.
Appellant fourthly contends that “one of ordinary skill would be [led]
to believe that an external shielding gas as opposed to a shielded electrode
would be use[d] upon combining Stava [‘863] with Bertossa” and thus, one
would not be led to believe that modification of Stava [‘863] based on the
teachings of Bertossa would be successful. App. Br. 12. However,
Appellant’s contention is not commensurate with the scope of independent
claim 1 which does not require any particular form of shielding. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (Arguments must be commensurate
in scope with the actual claim language).
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of independent claim 1 would have been
obvious from the combination of Stava ‘863 and Bertossa, and we sustain
the rejection of independent claim 1 and its dependent claims 2, 4, 5, 8-10,
12-14, and 21-26 under 35 U.S.C. § 103(a).

Rejection of claim 15 under 35 U.S.C. § 103(a)
as unpatentable over Stava ‘863, Bertossa, and Stava ‘241
Independent claim 15 is directed to a welding system for welding
workpieces of dissimilar first and second metals, and recites an “alloying
material being tailored according to properties of both said first and second
metals.”
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Appellant first sets forth the same contentions as discussed supra
regarding Bertossa teaching away from joining dissimilar materials at their
edges (App. Br. 12) and the combination failing to arrive at the claimed
invention (Reply Br. 12). For similar reasons as those discussed supra in
connection with claim 1, we do not find such contentions persuasive.
Appellant secondly contends that “the bridge ring [of Bertossa]
teaches away from using alloying material tailored according to the
properties of both the first and second metals because the bridge ring
prevents direct joining of the dissimilar materials by a single weld.” App.
Br. 12-13. However, we find this contention to be unconvincing since it
mischaracterizes the rejection. The Examiner is not relying on Bertossa for
disclosure relating to tailoring of the alloying material, but is relying on the
disclosure of Stava ‘863 for this finding. In particular, the Examiner found
that “Stava [‘863] discloses the claimed invention further comprising
tailoring an alloying material.” Ans. 5 (citing Stava ‘863, col. 4, ll. 35-42
and Abstract).
Appellant thirdly contends that “Stava relates to the joining of work
pieces made of the same metal and therefore cannot contemplate tailoring
the alloying material to the properties of the first and second metals.” App.
Br. 13 (citing Stava ‘863, col. 4, ll. 35-42). However, the Examiner found
that Stava ‘863 discloses that “[t]he cored electrode . . . preferably . . .
includes alloying components in the core to form a root bead having a
substantially similar composition as the composition of the two pipe
sections.” Stava ‘863, Abstract (emphasis added). Moreover, “[a] weld
bead having a composition which closely matches the composition of the
pipe sections forms a strong, durable, high quality weld bead.” Stava ‘863,
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col. 4, ll. 39-42 (emphasis added). Appellant provides no persuasive
reasoning or evidence to rebut the Examiner’s finding that Stava ‘863
teaches tailoring of the alloying material with respect to the properties of
two pipe sections.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of independent claim 15 would have been
obvious from the combination of Stava ‘863, Bertossa, and Stava ‘241, and
we sustain the rejection of independent claim 15 under 35 U.S.C. § 103(a).

Rejection of claims 16, 19, and 20
under 35 U.S.C. § 103 as unpatentable over Stava ‘863 and Bertossa
Independent claim 16 is directed to a method of joining ends of two
pipes formed of different first and second metals, and recites “providing a
welding electrode having alloyed material tailored according to properties of
both said first and second metals.” Appellant incorporates the contentions
set forth supra for both claims 1 and 15 against claim 16. App. Br. 13; see
also Reply Br. 12. Appellant does not provide any separate arguments for
claims 19 and 20 which depend from claim 16 and thus, claims 19 and 20
stand or fall with claim 16. For similar reasons to those discussed supra in
connection with claims 1 and 15, we do not find Appellant’s contentions
persuasive. Accordingly, we sustain the rejection of independent claim 16,
and claims 19 and 20 which stand or fall therewith, under 35 U.S.C.
§ 103(a).

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DECISION
The Examiner’s rejection of claims 1, 2, 4, 5, 8-10, 12-16, and 19-26
under 35 U.S.C. § 103(a) is AFFIRMED.
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).

AFFIRMED

ELD