Ex Parte Barhorst et al

Patent Trial and Appeal Board

Oct 19, 2017

13418148 (P.T.A.B. Oct. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/418,148 03/12/2012 Steven Barhorst 61333 (ITWO:0605/YOD) 9772
52145 7590 10/23/2017
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
DANG, KET D
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
docket@fyiplaw.com
sinclair@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN BARHORST and MARIO AMATA
Appeal 2016-002954
Application 13/418,148
Technology Center 3700
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
ANTHONY KNIGHT, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, 4—7, and 21—31.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Claims 3 and 8—20 are cancelled. Appeal Br. 18—19 (Claims App.).
Appeal 2016-002954
Application 13/418,148
CLAIMED SUBJECT MATTER
The claims are directed to electrodes for arc welding. Spec. 127
(Abstract). Claim 1, reproduced below with emphases added, is the sole
independent claim.
1. A tubular welding wire, comprising:
a sheath and a core, wherein the core comprises a carbon
source and a potassium source that together comprise less than
10% of the core by weight, and wherein the core of the tubular
welding wire includes a sulfur source comprising manganese
sulfite, molybdenum disulfide, gypsum, calcium sulfate, barium
sulfate, pyrite, or a combination thereof.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Culbertson
Bouvard
Anderson
Gordish
Keegan
Krishna
US 3,175,074
US 3,995,139
US 4,913,927
US 5,233,160
US 2009/0321404 A1
US 2011/0262340 A1
Mar. 23, 1965
Nov. 30, 1976
Apr. 3, 1990
Aug. 3, 1993
Dec. 31,2009
Oct. 27, 2011
REJECTIONS
(I) Claims 1—2, 5—7, and 27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Culbertson and Anderson.
(II) Claims 4 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Culbertson, Anderson, Keegan, and Bouvard.
(III) Claims 21—23 and 28—30 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Culbertson, Anderson, and Gordish.
(IV) Claims 24—26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Culbertson, Anderson, and Krishna.
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Appeal 2016-002954
Application 13/418,148
OPINION
Rejection (I); claims 1, 2, 5—7, and 27
The Examiner finds that Culbertson teaches most of the limitations
recited in claim 1, but does not teach that the core “includes a sulfur source
comprising manganese sulfite, molybdenum disulfide, gypsum, calcium
sulfate, barium sulfate, pyrite, or a combination thereof.” Final Act. 4.
Addressing this deficiency, the Examiner finds that Anderson discloses a
core of a tubular welding wire that includes molybdenum disulfide. Id.
(citing Anderson 9:22—23, claims 3,7, 11, 15, 16, and 20).
Appellants contend that the Examiner erred in finding that the core of
Anderson’s welding wire includes molybdenum disulfide, and, rather,
“Anderson actually teaches a method of lubricating an outer surface of an
aluminum welding wire to improve spooling of the welding wire and to
protect the outer surface of the welding wire from oxidation.” Appeal
Br. 5-6.
In response, the Examiner refers to column 9, lines 18—29 and
column 10, lines 23—25 of Anderson and finds that Anderson is “suggesting
that a molybdenum disulfide and other compounds which can be mixed
within the core of the aluminum welding wire.” Ans. 7—8.
In reply, Appellants discuss the portions of Anderson cited by the
Examiner and reiterate that the Examiner erred in finding that Anderson
teaches including molybdenum disulfide in a core of a tubular welding wire.
Reply Br. 2—3.
Appellants have the better position. Anderson discloses welding wire
with a lubricated surface. See, e.g., Anderson 5:52—56, 7:22—33. None of
the portions of Anderson cited by the Examiner teach the presence of
molybdenum disulfide inside the core of a tubular welding wire, nor do we
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Appeal 2016-002954
Application 13/418,148
find other disclosure in Anderson that does so. See Anderson 9:18—29,
10:23—25. The Examiner’s proposed modification to Culbertson is based on
the unsupported finding that Anderson discloses a “core of the tubular
welding wire [that] includes molybdenum disulfide.” Final Act. 4.
Accordingly, we reverse the Examiner’s rejection of claim 1 and
corresponding dependent claims 2, 5—7, and 27 as unpatentable over
Culbertson and Anderson.
Rejections (II) (IV); claims 4, 21—26, and 28—31
The Examiner’s use of Keegan, Bouvard, Gordish, and Krishna does
not remedy the deficiency in Rejection (I) discussed above. See Final Act.
5—7. Accordingly, we reverse Rejections (II)—(IV) for the same reasons
discussed regarding Rejection (I).
DECISION
The Examiner’s decision to reject claims 1, 2, 4—7, and 21—31 is
reversed.
REVERSED
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