Ex Parte Biskup et al

Patent Trial and Appeal Board

Oct 29, 2018

13808777 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/808,777 01/07/2013 Laurent Biskup
40582 7590 10/31/2018
American Air Liquide, Inc.
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
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.
Serie 8555 3814
EXAMINER
NGUYEN, PHUONG T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
IP-USOffice@airliquide.com
Neva.Dare-c@airliquide.com
J us tin.Murray@airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT BISKUP, GILLES BOUDET,
JEAN-PIERRE PLANCKAERT, and MICHEL SAEZ
Appeal2018-001834
Application 13/808, 777
Technology Center 3700
Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
FREDERICK C. LANEY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
12-20, and 22. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants indicated claim 23 was canceled by amendment. See, e.g., 37
C.F.R. § 41.33(b)(l). Appeal Br. 12 (Claims Appendix). However, it is
noted that no separate claim sheet indicating this amendment in accordance
with 37 C.F.R. § l.75(h) has been entered into the image file wrapper (IFW).
We consider claim 23 cancelled for purposes of this appeal, rendering the
rejections of claim 23 moot.
Appeal2018-001834
Application 13/808, 777
CLAIMED SUBJECT MATTER
The claims are directed to a MIG/MAG, 2 carbon steel welding process
with rotating arc and Ar/He/02 gas mixture. Claim 12, reproduced below, is
the sole independent claim before us:
12. A process for the electric-arc MIG/MAG welding of at
least two carbon steel parts with use of a consumable filler wire,
a rotating arc and gas shielding formed of a ternary gas mixture
consisting of 19.5 to 20.5% of helium, of 2.7 to 3.3% of 02 and
of argon for the remainder (% by volume), wherein the
consumable filler wire is melted by the rotating arc so as to
obtain metal transfer by rotating liquid vein and the at least two
carbon steel parts overlapping or covering one another, the
rotating arc welding taking place at said overlap or covering.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fujimori et al.
("Fujimori")
Galantino et al.
("Galantino ")
us 4,258,242
us 4,749,841
REJECTION
Mar. 24, 1981
June 7, 1988
Claims 12-20 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujimori and Galantino.
OPINION
The Examiner found that Fujimori discloses the basic process claimed
except for the specific shielding gas percentages recited above. Final Act. 5.
2 Metal inert gas/Metal active gas.
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Appeal2018-001834
Application 13/808, 777
Appellants and the Examiner both recognize that Fujimori discloses that in a
"conventional" MIG process the oxygen proportion in a shielding gas is 1-
2%. Both Appellants and the Examiner recognize this is outside the range
recited for oxygen. The Examiner cites Galantino as teaching a shielding
gas having carbon dioxide in a range of 1--4%. Final Act. 5 (Discussing,
without express citation to, Galantino col. 6, 1.66-col. 7, 1.2.). Galantino
goes on to state, "[ o Jptimum results have been obtained with a mixture of
3.1 % carbon dioxide." Id. at col. 7, 11.4--5. The Examiner also points out
that Galantino appears to mention oxygen and carbon dioxide as alternatives
and concludes that it would have been obvious to use oxygen in the recited
proportion for Galantino 's stated purpose of "creating a mildly oxidizing
atmosphere that promotes fusion." Final Act. 5-6 (citing, Galantino col. 1,
11.20-24).
Appellants' discussion on pages 9-11 of the Specification, carries
Appellants' burden of demonstrating why the oxygen proportion in the
shielding gas is critical. App. Br. 5-6; see MPEP § 2144.05. The Examiner
does not refute this criticality. The Examiner bears the ultimate burden of
establishing obviousness in light of the differences between the claimed
subject matter and the prior art. MPEP § 2142.
We discern two shortcomings in the Examiner's obviousness analysis.
The first is that the Examiner does not provide any evidence or technical
reasoning to demonstrate why oxygen, even if disclosed as an alternative to
carbon dioxide, would be used in the same, or a sufficiently similar,
proportion that Galantino uses carbon dioxide so as to yield the claimed
subject matter. The record before us demonstrates that even small changes
in gas proportions can have dramatic effects (see, e.g., Spec. 10 ( discussing a
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Appeal2018-001834
Application 13/808, 777
1.5% change in the oxygen content)) and that these gas proportions are very
tightly controlled. See, e.g., Galantino, col. 7, 11.5-6 ( discussing tolerances
of±0.1%.).
The second shortcoming in the Examiner's rejection relates to the
stated reasoning for modifying the prior-art oxygen content. The prior art
suggests that a skilled artisan might recognize the adjective "small," used by
both Fujimori and Galantino to describe the oxygen proportion in the
shielding gas, as meaning 1 to 2%, as expressly indicated by Fujimori. It is
true that the Examiner's articulated reasoning or motivation as to why a
skilled artisan might modify the prior art to arrive at the claimed subject
matter need not involve the same purpose as that disclosed in Appellants'
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). However, the
Examiner does not provide any evidence or technical reasoning to
demonstrate that a skilled artisan would know that adjusting the oxygen
proportion upwards from what was regarded as conventional would
predictably exhibit the same, or some improved, known beneficial effect of
"creating a mildly oxidizing atmosphere that promotes fusion."
Based on the two gaps in the evidentiary record and the Examiner's
articulated reasoning discussed above, we conclude that the Examiner has
not met the burden of establishing obviousness on the record before us.
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Application 13/808, 777
DECISION
The Examiner's rejection is reversed.
REVERSED
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