Ex Parte StavaDownload PDFPatent Trial and Appeal BoardJan 9, 201311109565 (P.T.A.B. Jan. 9, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ELLIOTT K. STAVA ____________________ Appeal 2010-003294 Application 11/109,565 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003294 Application 11/109,565 2 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. Appeal 2010-003294 Application 11/109,565 3 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 Appeal 2010-003294 Application 11/109,565 4 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. Appeal 2010-003294 Application 11/109,565 5 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 Appeal 2010-003294 Application 11/109,565 6 [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 Appeal 2010-003294 Application 11/109,565 7 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.” Appeal 2010-003294 Application 11/109,565 8 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, Appeal 2010-003294 Application 11/109,565 9 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). Appeal 2010-003294 Application 11/109,565 10 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 Copy with citationCopy as parenthetical citation