Ex Parte Bruck

Patent Trial and Appeal Board

Oct 3, 2016

13005656 (P.T.A.B. Oct. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/005,656 01/13/2011
28524 7590 10/05/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Gerald J. Bruck
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.
2010Pl3119US 2993
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/05/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD J. BRUCK
Appeal2014-009697
Application 13/005,656
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerald J. Bruck (Appellant) 1 appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-24. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellant, the real party in interest is Siemens Energy, Inc.
App. Br. 1.
Appeal2014-009697
Application 13/005,656
SUMMARY OF INVENTION
Appellant discloses "a technique for using flux in high energy density
welding that may produce a shielding slag sufficient to shield a weld pool
and a weld bead from atmospheric contaminants." Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of shielding a weld, comprising
melting a first substrate using a high energy density
welding technique selected from a group consisting of plasma
arc welding, laser beam welding, and electron beam welding;
delivering a flux to a point of welding to form a weld
pool comprising the melted first substrate, wherein the flux
produces a slag effective to shield a weld bead from
atmospheric contaminants.
App. Br. 6 (Claims Appendix) (emphasis added). Independent claims 20
and 24 similarly recite delivering flux to a plasma arc welding, laser beam
welding, or electron beam welding process. Id. at 8, 9.
REJECTIONS
Claims 1, 3-7, 9, 10, 12, 13, 15, 17, 20, and 22 are rejected under 35
U.S.C. § 102(b) as being anticipated by Nelson (US 3,519,789, iss. July 7,
1970).
Claims 1, 2, 8, 11, 14, 16, 18-21, 23, and 24 are rejected under 35
U.S.C. § 102(b) as being anticipated by Iio (US 4,145,598, iss. Mar. 20,
1979).
Claims 2, 8, 11, 14, 16, 18, 19, 21, 23, and 24 are rejected under 3 5
U.S.C. § 103(a) as being unpatentable over Nelson and Iio.
Claims 1, 3-7, 9, 10, 12, 13, 15, 17, 20, and 22 rejected under 35
U.S.C. § 103(a) as unpatentable over Nelson.
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Application 13/005,656
ANALYSIS
Anticipation Based on Nelson
The Examiner finds that Nelson discloses all of the steps of
independent claims 1 and 20. Final Act. 2, 3 (citing Nelson 6:63+, 6:69--70,
and 7:55---60; Figs. 7, 8, and 11-15). Appellant traverses the rejection,
arguing that "[n]othing in Nelson teaches or suggests modifying known
plasma, gas or laser welding processes to utilize flux when using them with
the Nelson invention." App. Br. 4.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of Cal., 814 F .2d 628, 631
(Fed. Cir. 1987). "[T]he prior art reference-in order to anticipate under 35
U.S.C. § 102-must not only disclose all elements of the claim within the
four comers of the document, but must also disclose those elements
'arranged as in the claim."' Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1369 (Fed. Cir. 2008). We are persuaded by Appellant's arguments
that the Examiner has failed to satisfy these requirements.
Nelson discloses positioning various wire-feeding rolls to form a
permanent set such that the wire is introduced to the point of welding in a
desired, controlled manner. See, e.g., Nelson 3:47-73. Nelson discloses that
such permanent setting of the wire can be used in conjunction with known
welding techniques, such as submerged melt welding using flux (id. at 6:63-
7:2) or high energy density welding (id. at 7:56-59). The Examiner cites to
Nelson column 7, lines 55---60 as supporting the assertion that Nelson
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Application 13/005,656
discloses the use of flux with high energy density welding. Final Act. 2.
However, no such teaching is seen in this section of Nelson, which states:
Numerous other uses and advantages of this invention
will be apparent. For example, the invention may be used in
connection with other welding processes such as plasma, gas,
or laser and in any variety of weld joints in gap or out of gap.
It will be understood that various changes in the details,
materials, steps, and arrangements of parts, which have been
herein described and illustrated in order to explain the nature of
the invention may be made within the principles and scope of
the invention.
Nelson 7:55---63 (emphasis added). We interpret this disclosure ofNelson to
indicate that a permanently set weld wire can be used with plasma, gas, or
laser welding; we do not interpret "the invention" as including any new use
of flux or this disclosure as suggesting the use of flux with plasma, gas, or
laser welding. Nor do we find support for the Examiner's assertion at any
other location of Nelson. Thus, Nelson does not disclose using flux in
conjunction with a high energy density welding technique.
Accordingly, we reverse the Examiner's rejection of claims 1 and 20,
as well as of claims 3-7, 9, 10, 12, 13, 15, 17, and 22, which depend either
directly or indirectly from claim 1 or claim 20, as being anticipated by
Nelson.
Anticipation Based on Iio
The Examiner finds that Iio discloses all of the elements of
independent claim 1, 20, and 24. Final Act. 3, 4 (citing Iio, Abstract; 4:5-
60; Fig. 1 ). Appellant traverses the rejection, arguing that Iio does not
disclose high energy density welding. App. Br. 4--5.
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Application 13/005,656
We are persuaded by Appellant's arguments. Iio discloses an
automatic arc welding process in which the nozzle is shaped to substantially
fill the gap between the materials to be welded, which prevents unmelted
portions of the consumable nozzle being introduced into the weld and
provides other benefits. Iio 7:13-24 and 9:7-10:9. However, the Examiner
does not direct us to, nor does our review reveal, any disclosure of high
energy density welding. The Examiner's broad assertion that "[a]rc welding
includes plasma arc" welding (Ans. 8) is also unavailing because, as noted
by Appellant, "some arc welding, such as [shielded metal arc welding], is
not plasma arc welding" (Reply Br. 2). Moreover, Iio specifically discloses
that its welding arcs are generated from the consumable nozzle and/or the
wire (rather than through the use of a plasma gas). See, e.g., Iio 3:7-14,
5:43--45, 6: 1-3, and 6:31-33. Thus, Iio discloses shielded metal arc
welding, but does not disclose plasma arc welding.
Accordingly, we reverse the Examiner's rejection of claims 1, 20, and
24, as well as of claims 2, 8, 11, 14, 16, 18, 19, 21, and 23, which depend
either directly or indirectly from claim 1, claim 20, or claim 24, as being
anticipated by Iio.
Obviousness Based on Nelson and Iio
The Examiner finds that Nelson discloses the invention substantially
as claimed, except for the flux developing a shielding gas. Final Act. 4. The
Examiner then relies on Nelson to teach the use of a flux to develop a
shielding gas, concluding that "[i]t would have been obvious at the time of
the invention to modify Nelson with a flux that develops a shield gas as
Nelson teaches use of a shield gas." Id. at 4--5. Although the Examiner
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incorporates a prior description of Iio, it is not clear how the Examiner relies
on the Iio disclosure. Appellant relies on the arguments presented regarding
the anticipation rejections-namely, "neither of [the] two cited references
teaches or suggests the use of flux with any of the three specifically claimed
high energy density welding techniques (plasma arc, laser beam and electron
beam)." App. Br. 5.
A proper obviousness analysis requires "a searching comparison of
the claimed invention-including all its limitations-with the teaching of the
prior art." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). We are
persuaded by Appellant's arguments that the Examiner has failed to satisfy
these requirements. As discussed above, neither Nelson nor Iio discloses the
use of flux with high energy density welding. The Examiner's application of
these references in the obviousness rejection does not remedy this
deficiency. Accordingly, we reverse the Examiner's rejection of claims 2, 8,
11, 14, 16, 18, 19, 21, 23, and 24 as being unpatentable over Nelson and Iio.
Obviousness Based on Nelson
The Examiner finds that Nelson discloses the invention substantially
as claimed, except "the substrates are not expressly delineated with
discussion about weld processing." Final Act. 5. The Examiner reasons that
"[i]t would have been obvious at the time of the invention to weld first and
second substrates with flux forming a slag as a weld shield." Id. Although
Appellant does not specifically address the obviousness rejection based on
Nelson alone, we find Appellant's comments regarding the anticipation
rejection based on Nelson and the obviousness rejection based on Nelson
and Iio equally applicable here. For the same reasons as discussed above,
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Application 13/005,656
wereversetheExaminer'srejectionofclaims 1, 3-7, 9, 10, 12, 13, 15, 17,
20, and 22 as being unpatentable over Nelson.
DECISION
The Examiner's decision to reject claims 1-24 is reversed.
REVERSED
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