Ex Parte SUGAHARA et al

Patent Trials and Appeals BoardMar 15, 2019

13342461 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/342,461 01/03/2012 Hiroshi SUGAHARA 22850 7590 03/19/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 392217US99 8332 EXAMINER STAPLETON, ERIC S ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/19/2019 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 iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI SUGAHARA, TETSUNAO IKEDA, and HIROHISA WATANABE Appeal2017-005741 Application 13/342,461 Technology Center 3700 Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and SEAN P. O'HANLON, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-005741 Application 13/342,461 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-9. An oral hearing in accordance with 37 C.F.R. Â§ 41.47 was held on March 7, 2019. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. THE INVENTION The claims are directed to a stainless steel flux-core wire. Claims 1 and 2 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flux-cored wire for arc welding filled up with flux in an outer sheath made of stainless steel containing, as percentage to the total mass of the wire: Cr: 11-30 mass%; metal Si, Si oxide and Si compound: 1.1- 4.0 mass% in total in terms of Si [Si]; fluorine compound: 0.01-1.0 mass% in terms of F [F]; Ti02: 1.5 mass% or above; Zr02+Ah03: 3.2. mass% or below; Na compound, K compound and Li compound: 0.50 mass% or below in total of each of an amount in terms of Na [Na], an amount in terms of K [K] and an amount in terms of Li [Li]; wherein, when [Cr] represents Cr content (mass%), { ([Na]+[K]+[Li])x [Cr ]2}/([Si]+4.7x[F])< 10 is satisfied. 1 The real party in interest is Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel LTD). App. Br. 1. 2 Appeal2017-005741 Application 13/342,461 Jang REFERENCE US 2008/0093352 Al REJECTION Apr. 24, 2008 Claims 1-9 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Jang. ANALYSIS Independent Claim 1 Claim 1 recites a flux-cored wire comprising an outer stainless-steel sheath having, inter alia, 11-30 mass% chromium (Cr) and 1.1--4.0 mass% Silicon (Si). In determining that Jang teaches the Cr and Si limitations of claim 1, the Examiner first relies on the preferred ranges for those elements described in paragraphs 35, 36, 43, and 44 of Jang. Final Act. 3. Although Jang's preferred range for Si is 0.4--1 weight %,2 which is outside of claim 1 's range for Si, the Examiner asserts that the claimed Si range "would have been obvious over about 0.40-1.00 Wt% as disclosed in Jang." Ans. 6. The Examiner also points to comparative example 17, which contains Cr and Si in amounts that fall within the Cr and Si ranges of claim 1. Id. at 7-8. Appellants disagree, arguing that Jang teaches away from claim 1 's Si range. Appellants point to the wire of comparative example 23, which has a Si value of 1.01 %, and which, according to Appellants, has "degraded or poor properties and characteristics which Jang finds unacceptable for arc welding." App. Br. 9 (citing Jang, Table 7). Appellants also assert that Jang criticizes the wire of comparative example 21 as being unsuitable for arc 2 There is no dispute that Jang' s weight % is the same as the claimed mass%. 3 Appeal2017-005741 Application 13/342,461 welding. Id. The Examiner counters that "Table 7 of Jang shows that examples 17 and 21 each have at least one favorable characteristic of mechanical performance as well as varying results for welding performance such that Jang does not teach away from the claimed ranges." Ans. 7-8. We agree with Appellants that Jang teaches away from the range of Si recited in claim 1. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference ... would be led in a direction divergent from the path that was taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tee Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). As noted above, Jang's preferred range for Si is 0.4--1.0 weight%. The wire of comparative example 23 has only slightly more than the upper limit-1.01 weight o/o- and yet Jang indicates that the amount of Si in this wire is too high. That is, Jang states that "when welding performance [of the wire of comparative example 23] is evaluated, the detachability of slag is poor," and "the bead appearance and the cracking resistance are degraded." Jang ,r 101. As for the welding wire of comparative example 21, which contains Si that falls within claim 1 's range, Jang states that "the amount of Si is so large that cracking resistance is degraded." Id. ,r 99. As the Examiner notes (see Final Act. 6-7; Ans. 7-8), Jang's Table 7, which displays the "Welding Performance Results" for comparative examples 16-30, identifies some performance characteristics for examples 21 and 23 as "favorable" or "normal" ( and in one instance for example 21, as "excellent"). Id. ,r,r 90, 92. Other characteristics, as Appellants note, are described as "poor" or "defective." Id. We do not view Table 7 as merely identifying advantages and disadvantages of these examples. First, Jang 4 Appeal2017-005741 Application 13/342,461 does not describe any advantage in using the wires of examples 21 and 23 over any of the examples of the invention. Second, Jang Table 6 describes all of the welding performance results for the inventive examples as "excellent," "favorable," or "normal." Id. ,r,r 90-91. No poor or defective performance characteristics are noted for the inventive examples. This indicates that acceptable wires would not have any "poor" or "defective" characteristics, and the poor or defective characteristics of examples 21 and 23 render the welding wire of these examples unacceptable to one of ordinary skill in the art, despite the fact that not all of the wire's characteristics are poor or defective. Even if one of ordinary skill in the art would have considered the wires of comparative examples 21 and 23 as usable despite having some poor or defective performance characteristics, one of ordinary skill in the art would still have been led away from the claimed Si range. Jang specifically blames the poor cracking resistance and bead appearance on the Si content exceeding the prescribed range of 0.4--1.0 weight%. Id. ,r,r 99, 101. Jang thus would have led one of ordinary skill in the art away from exceeding this range. Therefore, we are not persuaded that the claimed Si range would have been obvious over Jang's prescribed Si range, and we do not sustain the Examiner's rejection of claim 1, and its dependent claims 3, 5, 7, and 9, as obvious over Jang. Independent Claim 2 Claim 2 recites a flux-cored wire comprising an outer stainless-steel sheath having, inter alia, 11-22 mass% Cr and 0.5--4.0 mass% Si. The Examiner again refers to Jang's disclosure of preferred ranges for Cr and Si, Final Act. 4, even though Jang's preferred Cr range is outside of claim 2 's 5 Appeal2017-005741 Application 13/342,461 Cr range. 3 Nonetheless, the Examiner asserts that the claimed range of 11- 22% "would have been obvious over ... 24.0-30.0 Wt%." Ans. 6. Appellants disagree, arguing that Jang teaches away from claim 2's Cr range. Appellants refer to the wire of comparative example 17, which contains 23 .9 weight % Cr. According to Appellants, the wire of example 17 has "poor pitting corrosion resistance, poor strength performance, and poor productivity." App. Br. 10. The Examiner responds that the wire of example 17 has "at least one favorable characteristic of mechanical performance as well as varying results for welding performance such that Jang does not teach away" from the claimed Cr range. Ans. 7-8. We agree with Appellants that Jang teaches away from claim 2's Cr range. As Appellants note, Jang criticizes the wire of comparative example 17, which has only slightly less Cr that Jang's preferred range (and more than the claimed range): In Comparative example 17, the amounts of Cr and Mn are extremely small, and the filling rate is extremely low. The particle-size distribution of the flux deviates from the prescribed range of embodiments of the present invention such that the pitting corrosion resistance and the productivity are degraded. An amount of the other oxides filled in the wire is so large that the covering property and the bead appearance are poor. Jang ,r 95. Further, for the reasons discussed above with respect to claim 1, we do not find persuasive the argument that not all of the performance characteristics of example 1 7 are described as poor or defective. Therefore, 3 The Examiner also refers to the Cr value (22.5%) disclosed in Table 1 of Jang. Final Act. 5; Ans. 6. Table 1 does not describe arc welding wire, but rather the weld base metal ( the metal being welded) used in evaluating various inventive and comparative example wires. Jang ,r,r 75, 78. Therefore, this value is not relevant to the claims at issue. 6 Appeal2017-005741 Application 13/342,461 Jang would have led one of ordinary skill in the art away from the Cr range of claim 2, and we do not sustain the Examiner's rejection of claim 2, and its dependent claims 4, 6, and 8, as obvious over Jang. DECISION For the above reasons, the Examiner's rejection of claims 1-9 is reversed. REVERSED 7