Ex Parte Graillat et al

Patent Trial and Appeal Board

Nov 4, 2014

11377947 (P.T.A.B. Nov. 4, 2014)

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.
11/377,947 03/16/2006 Clifford Graillat 085.11504-US(05-686) 5918
52237 7590 11/04/2014
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
MATHEW, HEMANT MATHAI
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
11/04/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CLIFFORD GRAILLAT, STEVEN IVORY, and
MICHAEL MINOR
________________

Appeal 2012-008440
Application 11/377,947
Technology Center 3700
________________

Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

CLIFFORD GRAILLAT, STEVEN IVORY, and MICHAEL MINOR
(Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 4, and 5. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to nickel alloy welding wire.
Claim1 is illustrative of the claims on appeal and is reproduced below:
Appeal 2012-008440
Application 11/377,947

2

1. A nickel alloy wire to be used in effecting repairs to
nickel based superalloy components, said nickel alloy wire
being formed from a material comprising from about 0.475 to
5.25 wt% chromium, from about 5.5 to 5.8 wt% aluminum,
from about 5.6 to 6.2 wt% tungsten, from about 8.0 to 8.3 wt%
tantalum, from about 1.7 to 2.1 wt% molybdenum, from about
9.5 to 10.5 wt% cobalt, from about 2.8 to 3.2 wt% rhenium,
from about 0.07 to 0.30 wt% carbon, from about 0.02 to 0.04
wt% boron, from about 0.08 to 0.12 wt% zirconium, from about
0.08 to 0.12 wt% yttrium, from about 1.0 to 1.5 wt% hafnium,
and balance nickel, said nickel alloy wire having a temper
sufficient to have proper feeding of the nickel alloy wire into
machine welding equipment.

Appeal Br. 11, Appendix A (emphasis added).

REFERENCES RELIED ON BY THE EXAMINER

Biondo US 5,783,318 July 21, 1998
Keener US 6,953,509 B2 Oct. 11, 2005

THE REJECTION ON APPEAL
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Biondo and Keener.
ANALYSIS
(I)
Claim 1 recites a nickel alloy wire formed from a material comprising,
in part “from about 8.0 to 8.3 wt% tantalum.” Claim 1 further recites “said
nickel alloy wire having a temper sufficient to have proper feeding of the
nickel alloy wire into machine welding equipment.”

(II)
The Examiner rejects claim 1 as obvious over Biondo and Keener,
stating, “Biondo discloses a nickel alloy wire or a nickel based repair alloy
Appeal 2012-008440
Application 11/377,947

3

to be used in effecting repairs to nickel based super-alloy components (claim
4), said nickel alloy being formed from a material comprising . . . from about
8.4 to 12.25 wt % tantalum.” Ans. 5. The Examiner acknowledges “Biondo
does not disclose about 8.0 to 8.3wt% tantalum as recited in claim 1.
Biondo also does not disclose the nickel alloy wire having a temper.” Id.
Regarding the percentage of tantalum recited in claim 1, the Examiner
states, “Biondo does disclose 8.4 to 12.25 wt% tantalum may be used in the
alloy in which 8.4 wt% is a close approximation to 8.3 wt% tantalum.” Ans.
6. The Examiner further states, “[i]t has been held that one of ordinary skill
in the art at the time of the invention would have considered the claimed
compositions to have been obvious because close approximation or
overlapping ranges in a composition is considered to establish a prima facie
case of obviousness.” Ans. 5–6 (citations omitted).
Regarding the recited temper of the wire in claim 1, the Examiner
states:
Keener discloses high strength stainless steels and
superalloys which may be nickel based (col. 1 lines 45-59) and
may go through a tempering/aging step (16, 22; Fig[s]. 1 a and
1 b).
Therefore[,] it would have been obvious to one of
ordinary skill in the art at the time the invention was made to
modify the apparatus of Biondo by employing the teachings of
Keener in order to allow for nickel based alloys or superalloys
to be tempered or aged in order to aid in stress equalization.
Id. at 6. Regarding the Examiner’s interpretation of the recited temper in
claim 1, the Examiner explains, “[Appellants have] not claimed any specific
type of tempering, thus the mere teaching of a nickel alloy that has a
tempering step is enough to meet the [Appellants’] claim language.” Id. at
8.
Appeal 2012-008440
Application 11/377,947

4

(III)
Appellants argue that the Examiner erred in finding that the mere
teaching of a nickel alloy that is tempered is sufficient to satisfy the temper
recited in claim 1. Appellants assert that claim 1 instead recites a specific
temper, that is, “a temper sufficient to have proper feeding of the nickel
alloy into machine welding equipment.” Reply Br. 3-4. We find
Appellants’ argument to be persuasive.
The temper recited in claim 1 defines something more than “the mere
teaching of a nickel alloy that has a tempering step” as stated by the
Examiner. Ans. 8. “All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious — the claim becomes indefinite.” In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970). See also In re Steele, 305 F.2d 859, 862
(CCPA 1962) (“Our analysis of the claims indicates that considerable
speculation as to meaning of the terms employed and assumptions as to the
scope of such claims were made by the examiner and the board. We do not
think a rejection under 35 U.S.C. § 103 should be based on such
speculations and assumptions.”)
In the present case, claim 1 requires the nickel wire to have “a temper
sufficient to have proper feeding of the nickel alloy wire into machine
welding equipment.” We cannot agree with the Examiner’s statement that
“[Appellants have] not claimed any specific type of tempering, thus the mere
teaching of a nickel alloy that has a tempering step is enough to meet the
[Appellants’] claim language” (Ans. 8). Further, the Examiner does not
point to any portion of the prior art that discloses a temper corresponding to
Appeal 2012-008440
Application 11/377,947

5

the temper recited in claim 1, taking all the words in claim 1 into
consideration. Accordingly, we do not sustain the rejection of claim 1, or
claim 2 depending therefrom as obvious over Biondo and Keener. As
independent claim 4 also recites a nickel alloy wire having a temper
sufficient to enable proper feeding of the nickel alloy wire into machine
welding equipment, we also reverse the rejection of claim 4 and claim 5
depending therefrom.
Appellants traverse the Examiner’s obviousness rejection by focusing
on two features, (i) the recited temper of the wire and (ii) the recited
percentage of tantalum. Appeal Br. 5. Inasmuch as we do not sustain the
Examiner’s rejection of claims 1, 2, 4, and 5, based on Appellants’
arguments with respect to the recited temper, we do not reach Appellants’
arguments with regarding the recited percentage of tantalum.

New Ground of Rejection
A claim is indefinite if “read in light of the patent’s specification and
prosecution history, [it] fail[s] to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2123 (2014). The test for definiteness
under 35 U.S.C. § 112, ¶ 2, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
The Application does not provide a reasonable basis for determining
what temper would be sufficient for the use recited in claim 1. The matter is
confused by the use of the word “proper” before feeding inasmuch as how to
Appeal 2012-008440
Application 11/377,947

6

determine whether feeding is “proper” has not been defined. It may be that
feeding with malfunctions occurring 5% of the time qualifies as proper.
Perhaps occurrences 25% or even 50% of the time is proper. The
Application does not provide an answer. In the absence of a workable
objective standard, what is “proper” is unreasonably dependent on an
observer’s subjective opinion.
Moreover, the use in “machine welding equipment” is itself
ambiguous. It may be that the particular tempering applied to wire to allow
the wire to be fed into the machine (especially “properly” into the machine)
is affected by what type of feeding is performed. For example, the velocity
of the wire may have an effect on what tempering is required. Indeed, it
may be that the cross-sectional shape and size of the wire also have an effect
on the required tempering.
In contrast to the circumstances in Orthokinetics, 806 F.2d at 1568
where the Federal Circuit held that the wheelchair defined to have a front leg
portion that was “so dimensioned as to be insertable through the space
between the doorframe of an automobile and one of the seats thereof” was
not indefinite (a front leg is insertable in the space or it is not), there is no
objective way to determine with reasonable certainty whether a potentially
infringing wire has “a temper sufficient to have proper feeding . . . wire into
machine welding equipment.” Accordingly, we enter a new ground of
rejection of independent claims 1 and 4 and claims 2 and 5 depending
therefrom, respectively, as indefinite under 35 U.S.C. § 112, second
paragraph.

DECISION
Appeal 2012-008440
Application 11/377,947

7

The Examiner’s rejection of claims 1, 2, 4, and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Biondo and Keener is reversed.
Pursuant to 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF
REJECTION against claims 1, 2, 4, and 5.
Regarding the new ground of rejection, Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION,
must exercise one of the following options with respect to the
new ground of rejection, in order to avoid termination of the
appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . .; or
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).

REVERSED
37 C.F.R. § 41.50(b)

llw