Ex Parte Wang

Patent Trial and Appeal Board

Nov 9, 2018

13792462 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/792,462 03/11/2013
13866 7590 11/14/2018
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Boulevard
Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Wesley W. Wang
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.
1485.0141C 2992
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WESLEY W. WANG
Appeal2018-003557
Application 13/792,462 1
Technology Center 3700
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1, 2, 4, 11, 13, and 20 under (pre-AIA)
35 U.S.C. § 103(a) as unpatentable over Sakai et al. (US 4,571,480, issued
Feb. 18, 1986) ("Sakai") in view of Henderson et al. (US 3,134,924, issued
May 26, 1964) ("Henderson"). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, "[t]he real party in interest in the present
appeal is The ESAB Group, Inc." Appeal Br. 3.
Appeal2018-003557
Application 13/792,462
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 11, and 20 are the independent claims on appeal. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
11. A flux composition for a cored welding electrode, the flux
composition comprising, in weight percent based on the total
weight of the flux cored welding electrode:
2.0 - 3.0 aluminum;
1.0-2. 0 manganese; and
0.001 - 0 .11 rare earth metal, wherein the rare earth metal
comprises a rare earth metal oxide, and wherein the rare earth
metal oxide comprises Cerium (Ce), Lanthanum (La),
Neodymium (Nd) and Praseodymium (Pr).
ANALYSIS
The Examiner finds Sakai teaches the flux composition of
independent claim 11, except for "a combination of using a rare earth metal
oxide comprising Cerium, Lanthanum, Neodymium and Praseodymium."
Final Act. 3. The Examiner relies on Henderson to remedy the deficiency of
Sakai with regard to the subject matter of claim 11. Id. The Examiner finds
that "Henderson ... teaches emissive materials of a metal matrix having an
electrode with an oxide mixture comprising Cerium oxide, Lanthanum
oxide, Neodymium oxide and Praseodymium oxide (col 3, lines 38-40)." Id.
In combining the teachings of Sakai's flux cored wire electrodes for
self-shielded arc welding and Henderson's emissive materials of metal
matrix with molecularly dispersed additives, the Examiner concludes:
It would have been obvious to modify the fluxed core wire of
Sakai ... with the oxide mixture of Henderson ... to provide
Cerium oxide, Lanthanum oxide, Neodymium oxide and
Praseodymium oxide in combination in an electrode to provide a
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Appeal2018-003557
Application 13/792,462
high electron emitting capacity with a low evaporation rate thus
providing for high electrical efficiency and long life in a severe
type of service.
Final Act. 3--4. The motivating benefit expressed by the Examiner is taken
from Henderson's teachings. See, e.g., Henderson, col. 9, 11. 30-34 ("An
advantage of the present electrodes for thermionic generation is the high
electron emitting capacity concomitant with a low evaporation rate, thus
providing for high electrical efficiency and long life in this severe type of
service.").
The Appellant argues "that it would not have been obvious to modify
the fluxed core wire of Sakai with the oxide mixture of Henderson to
provide Cerium oxide, Lanthanum oxide, Neodymium oxide and
Praseodymium oxide in combination in an electrode as alleged in the [F]inal
Office Action." Appeal Br. 11. The Appellant points out that Henderson
teaches using rare earth oxides as refractory materials to create thermionic
electrodes with superior refractory properties (i.e., thermal stability, creep
strength and resistance to corrosion) and emissivities, whereas Sakai uses
rare earth oxides for improving arc stability during the welding process. 2
See id. at 10 (citing Henderson, col. 3, 11. 21-28, col. 7, 11. 28-33, col. 10,
11. 6-9; Sakai, col. 5, 11. 43--45). The Appellant contends that the motivating
2 "Thermionic emission, as set forth in a standard dictionary (see, e.g.,
Collins English Dictionary Complete & Unabridged 10th Edition,
http://dictionary.reference.com/browse/thermionic emission), refers to the
emission of electrons from very hot solids or liquids ( e.g., used for
producing electrons in valves, electron microscopes, X-ray tubes, etc.)."
Appeal Br. 10. For example, Henderson's Figures 11 and 12 "show a
specific embodiment of the invention as an electron tube or gas discharge
device." Henderson, col. 10, 11. 20-22; see Appeal Br. 8.
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Appeal2018-003557
Application 13/792,462
benefit expressed in the Examiner's rejection is directed to highly stable
electrodes for use in thermionic devices and does not apply to Sakai's
consumable electrodes for use in welding. See id.
The Examiner responds to the Appellant's argument by explaining,
"Applicant argued against the use of Henderson [because Henderson] does
not teach a consumable electrode, however the claims are not directed to a
specifically consumable electrode, therefore does not need to be part of the
rejection." Ans. 7. However, this response fails to appreciate the substance
of the Appellant's argument. See Reply Br. 3.
The Appellant's argument contests the merits of the Examiner's
rejection by questioning the reason why one of ordinary skill in the art
would have viewed the benefits of highly stable electrodes for use in
thermionic devices, as taught by Henderson, as benefits for Sakai's
consumable electrodes for use in welding. Id. In this case, we determine
that the reasoning provided by the Examiner lacks rational underpinning.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds ... [require] some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.")
(cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007)).
Based on the foregoing, we do not sustain the Examiner's rejection of
independent claim 11 and dependent claim 13. Further, we do not sustain
the Examiner's rejection of independent claims 1 and 20, which include
similar subject matter as claim 11, and dependent claims 2 and 4 because the
rejection of these claims is based on the same reasoning as discussed above.
See Final Act. 4--5.
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Appeal2018-003557
Application 13/792,462
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 2, 4, 11,
13, and 20.
REVERSED
5