Ex Parte KatiyarDownload PDFPatent Trial and Appeal BoardApr 24, 201311132889 (P.T.A.B. Apr. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RAJEEV KATIYAR ____________________ Appeal 2011-000145 Application 11/132,889 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and NEIL A. SMITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000145 Application 11/132,889 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 34. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a cored welding electrode and methods for manufacturing the same. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of manufacturing cored welding electrode, said method comprising: providing a cored electrode structure with core fill material substantially enclosed within a sheath material; and applying a sodium based feeding lubricant to said cored electrode structure to provide a coated cored electrode, said sodium based feeding lubricant comprising a sodium sulfate, a sodium carbonate, and a sodium nitrite. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Garner Bernard Henricks Savard Dane Blachford Kobayashi Chai Masaie Murata US 2,606,874 US 2,785,285 US 2,957,825 US 2,964,612 US 3,478,552 US 4,404,828 US 4,510,374 US 5,003,155 US 5,550,348 US 6,194,357 Aug. 12, 1952 Mar. 12, 1957 Oct. 25, 1960 Dec. 13, 1960 Nov. 18, 1969 Sep. 20, 1983 Apr. 9, 1985 Mar. 26, 1991 Aug. 27, 1996 Feb. 27, 2001 Gigel US 2006/0160707 A1 Jul. 20, 2006 Appeal 2011-000145 Application 11/132,889 3 REJECTIONS The Examiner has rejected: 1. claims 32-34 under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi, Masaie, Chai, Savard, either Blachford or Dane, and any one of Henricks, Murata, Garner, or Gigel. Ans. 4, 6, 8, 11, 13, 15, 17, 20. 2. claims 1-16, 25, 26 and 31 under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi, Savard, Blachford, and any one of Henricks, Murata, Garner, or Gigel, both with and without Dane. Ans. 22, 24, 26, 27, 29, 32, 34, 36. 3. claims 17-24 and 27-30 under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi, Savard, Blachford, Bernard, and any one of Henricks, Murata, Garner or Gigel, both with and without Dane. Ans. 38, 41, 43, 45, 47, 50, 53, 55. OPINION Findings of Fact We find that the following enumerated facts are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. The Examiner found and Appellant does not dispute that Kobayashi discloses a basic electrode and method of manufacture therefor, as Appeal 2011-000145 Application 11/132,889 4 claimed, but without the specific feeding lubricant recited. Ans. 41; App. Br. 16. 2. While Kobayashi and Masaie apply a lubricant primarily for the purpose of drawing, both demonstrate that it was known in the art that such a lubricant could also be useful for electrode feeding. Kobayashi col. 8, ll. 24-45; Masaie col. 6, ll. 42-45. 3. Masaie additionally suggests the use of a dedicated feeding lubricant. Masaie col. 6, ll. 65-66; Ans. 5. 4. The Examiner cites Chai regarding the recited electrode core makeup and Appellant does not dispute any of the Examiner’s factual and legal conclusions regarding Chai. Ans. 5; App. Br. 17. 5. Savard teaches using sodium carbonate (4.1%) in a rutile flux extruded onto a wire electrode. Ans. 5; Savard col. 8, ll. 25-35. 6. Blachford discloses that sodium nitrite (2%) was a component of a prior art lubricant for general wire drawing which Blachford sought to improve upon. Blachford col. 12, ll. 45-68; Ans. 6. 7. Henricks discloses an example (I) lubricant for general wire drawing wherein sodium sulfite (12%) and Borax are components of drawing lubricants. Henricks col. 3, ll. 63-71; Ans. 6. 8. Henricks discloses an additional example (II) wherein sodium nitrite is used as an accelerant in a lubricating composition containing borax and sodium thiosulfate. Henricks col. 4, ll. 10-20. Henricks further discloses that sodium carbonate may be substituted for borax in any of the disclosed examples. Henricks col. 5, ll. 59-64. 1 The Examiner makes several verbatim repetitions as to the factual and legal conclusions regarding each reference. For the sake of brevity we will cite only to the first such statement. Appeal 2011-000145 Application 11/132,889 5 9. Murata discloses that sodium sulfate (12%) was a known component in an electrode drawing lubricant. Murata col. 9, ll. 23-26; Ans. 8. 10. Garner discloses that sodium sulfate (6%) is added to oil for general cold working applications. Garner col. 5, ll. 15-22, col. 6, l. 4; Ans. 10. 11. Gigel discloses that sodium sulfate is used as a component of a metal machining lubricant. Gigel p. 1, paras. [0002], [0009]. 12. Dane teaches that sodium nitrite serves as a buffer and rust inhibitor in a sodium soap used for drawing wire electrodes. Dane col. 1, ll. 11- 23; col. 2, l. 61 – col. 3, l. 1; Ans. 15. 13. Dane also teaches that the residual drawing lubricant improves electrode feedability and welding. Dane col. 4, ll. 21-29. 14. The Examiner cites Bernard regarding aspects of the recited strip. Appellant does not dispute any of the Examiner’s factual and legal conclusions regarding Bernard. App. Br. 22. Analysis Appellant argues that no single reference or combination of references cited by the Examiner renders obvious an electrode, or method of manufacturing an electrode, having a feeding lubricant comprising a sodium sulfate, a sodium carbonate and a sodium nitrite. App. Br. 17, 20, 22. The Examiner makes no distinction, insofar as patentability is concerned, between the claims directed to the electrode and the method of manufacturing it. Cf. e.g., TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003)(“A process yielding a novel and nonobvious product may nonetheless be obvious; conversely, a process yielding a well-known product may yet be nonobvious.”). Rather, in Appeal 2011-000145 Application 11/132,889 6 response, the Examiner repeatedly cites Henricks as containing all three lubricant components. Ans. 58-60. Initially, we note that the Examiner’s response is somewhat perplexing given that Henricks is relied upon by the Examiner only in the alternative, and is not applied in each of the Examiner’s stated rejections. Appellant appears2 to point out (Reply Br. 5) that one skilled in the art would not understand the recited “sodium sulfate” to include the sodium sulfite as disclosed by Henricks and cited by the Examiner. See Fact 7. We agree. In response to Appellant’s arguments (Ans. 58-60) the Examiner seems to deviate from the Examiner’s initial finding that Henricks discloses sodium sulfite (Ans. 6), stating Henricks discloses sodium sulfate, without citation. Henricks does disclose a second example including two of the three recited components of the feeding lubricant: sodium nitrite and sodium carbonate. Fact 8. That composition also includes sodium thiosulfate. Id. However, to the extent it is the Examiner’s position, we have not been apprised of any reason to believe one skilled in the art would understand sodium thiosulfate (Na2S2O3) to be a sodium sulfate (Na2SO4). In any case, if that is the Examiner’s position, Appellant has not been given adequate notice of such. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)(citations omitted)(The Board may only affirm an Examiner’s rejection so long as appellants have had a fair opportunity to respond). Thus, the citation of Henricks does not support the Examiner’s rejections. In each of the aforementioned rejections the only reasoning articulated by the Examiner for combining the lubricant components in the manner recited in the claims is “because it is merely a specific lubricant component.” 2 Based on the stated chemical formula (Na2SO3), Appellant apparently intended to refer to sodium sulfite not sodium sulfate. Appeal 2011-000145 Application 11/132,889 7 Ans. 5. The Examiner does not state any rationale for combining the specific components recited. Savard, as cited by the Examiner in each of the above rejections does not even appear to discuss suitability of the sodium carbonate containing compound as a lubricant. See, e.g., Fact 5. While compositions may have uses beyond their primary purpose, we are not apprised of the reason why the Examiner believes Savard’s flux, a substance generally intended to inhibit oxidation during welding, would have lubricating properties. Thus, the Examiner has failed to demonstrate that the Examiner’s proposed combination is supported by rational underpinnings. “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007). Other than Dane’s guidance regarding the benefits associated with sodium nitrite (Fact 12), no guidance regarding the purposes or benefits of the specific components recited is mentioned by the Examiner or is apparent in the cited references. See Facts 6-11. Neither the Examiner nor the prior art provides any discussion as to the combinability or compatibility of these compounds. We recognize that merely reciting a name for the lubricant, i.e., “feeding” as compared to, for example, “drawing” might not result in a manipulative or structural difference between the claimed method or apparatus, respectively, and the prior art. We also recognize that the claimed invention need not be expressly suggested in any one or all of the references to reach a conclusion of obviousness. Here, however, the cited prior art, taken as whole, presents a vast number of possible chemical compounds that could be constructed from a vast number of constituent components. The Examiner cites no guidance as to why one skilled in the art would select the Appeal 2011-000145 Application 11/132,889 8 three specific components recited, and why one would have a reasonable expectation such combination would be successful. The Examiner appears to have simply selected from a myriad of possible components of various types of lubricants or other compositions in order to reconstruct the claimed subject matter with the benefit of hindsight. We cannot agree that such an approach properly supports the Examiner’s conclusion of obviousness based on the evidence of record. See, e.g., In re Baird, 16 F.3d 380 (Fed. Cir. 1994); Takeda Chem. Indus. v. Alphapharm Pty., 492 F.3d 1350 (Fed. Cir. 2007). DECISION The Examiner’s rejections are reversed. REVERSED mls Copy with citationCopy as parenthetical citation