Ex Parte Hartman et al

Patent Trials and Appeals Board

Jul 11, 2013

11350705 - (D) (P.T.A.B. Jul. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DENNIS K. HARTMAN and
VAIDYANATH B. RAJAN
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Appeal 2011-004004
Application 11/350,705
Technology Center 3700
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Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE and
ANNETTE R. REIMERS, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 1-4, 7, 8, 11-13, 15-22 and 25-37. Claims 5, 2
6, 9, 10, 14, 23 and 24 are cancelled. We have jurisdiction under 35 U.S.C. 3
§ 6(b). 4
We REVERSE. 5

1 The Appellants identify the real party in interest as Lincoln Global,
Inc. of City of Industry, California.
Appeal 2011-004004
Application 11/350,705

2
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2010), we enter NEW 1
GROUNDS OF REJECTION against claims 1-4, 7, 8, 11, 12, 15, 16 and 20-2
22 under § 102(b) as being anticipated by James (US 5,192,851, issued Mar. 3
9, 1993). 4
The claims on appeal relate to a metal core electrode that forms a 5
weld metal on a workpiece having increased yield and tensile strength 6
characteristics. (Spec. 2, ll. 11-13). Claims 1, 15 and 32 are independent. 7
Claim 1 recites: 8
1. A cored metal electrode which forms a weld 9
metal in narrow grooves having improved yield 10
strength and tensile strength comprising of 11
at least about 0.001 weight percent boron, 12
at least about 0.05 weight percent 13
molybdenum, 14
at least about 0.005 weight percent titanium 15
and 16
a majority of iron, 17
a weight percent ration in said weld metal of 18
titanium to boron being at least about 19
2:1, and 20
molybdenum to titanium being at least 21
about 4:1, 22
said weld metal having 23
an average yield strength of at least 24
about 70 ksi and 25
an average tensile strength of at least 26
about 90 ksi. 27
28
Claim 15 recites a method including the step of at least partially 29
melting a consumable electrode with an electric arc depositing molten weld 30
metal on a workpiece. The weight percent ratio in the weld metal of 31
titanium to boron is at least about 2:1. The weight percent ratio in the weld 32
metal of molybdenum to titanium is at least about 4:1. 33
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Claim 32 recites a metal cored electrode that can be used to form a 1
weld bead on a workpiece. The weight percent ratio in the weld bead of 2
titanium to boron is at least about 2:1. The weight percent ratio in the weld 3
bead of molybdenum to titanium is at least about 4:1. 4
5
ANALYSIS 6
The Appellant does not appear to identify any formal definition of the 7
term “weld metal” in the Specification. Nevertheless, the ordinary usage of 8
the term “weld metal” is limited so as to refer only to “metal melted during 9
the making of a weld and retained in the weld.” (Terms & Terminology for 10
Welding Processes and Weld Configurations, 2 ECCC RECOMMENDATIONS, 11
Part IIa at 15 (Issue 2, May 11, 2001), available at http://www.ommi.co.uk 12
/etd/eccc/advancedcreep/V2PIIai2x.pdf (last visited July 2, 2013); see also 13
The Welder’s Corner, http://www.mig-welders-tig-welder.com/welding-14
definitions.htm (last visited July 2, 2013)(“WELD METAL: That portion of 15
a weld that has been melted during welding.”)). This definition is consistent 16
with the use of the term “weld metal” in the Specification. (See, e.g., Spec. 17
2, ll. 11-13). 18
The Examiner rejects claims 1-4, 7, 8, 11-13, 15, 16, 19-22 and 25-36 19
under 35 U.S.C. § 102(b) as being anticipated by Nagarajan (US 5,824,992, 20
issued Oct. 20, 1998). The paragraph at column 5, lines 10-50 of Nagarajan 21
describes an Embodiment 1 of a low alloy metal-core wire. Embodiment 1 22
includes, by overall weight of the wire, 0.0001-0.0200 wt% boron; 0.001-23
0.100 wt% titanium; and 0.01-5.0 wt% molybdenum, along with small 24
amounts of carbon and other alloying metals. The balance of Embodiment 1 25
is iron. 26
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Nagarajan’s Embodiment 1 does not anticipate claim 1, claim 15 or 1
claim 32. Claims 1, 15 and 32 each recite minimum ratios between the 2
weight percentages of titanium to boron, and between the weight 3
percentages of molybdenum to titanium. These ratios are measured in the 4
weld metal or weld bead, that is, in the metal retained in the weld. As the 5
Appellants point out on pages 20-21 of the Appeal Brief, Nagarajan does not 6
describe the content of a weld metal or weld bead formed using Embodiment 7
1 of Nagarajan’s low alloy metal-core wire. Furthermore, as the Appellants 8
point out on pages 21-22 of the Appeal Brief, the Examiner did not articulate 9
in the Answer a sound reason for belief that the content of the weld metal 10
necessarily bears any predictable relationship to the composition of the 11
electrode from which the weld metal is formed. We do not sustain the 12
rejection of claims 1-4, 7, 8, 11-13, 15, 16, 19-22 and 25-37 under § 102(b) 13
as being anticipated by Nagarajan. 14
The Examiner rejects claims 17 and 18 under 35 U.S.C. § 103(a) as 15
being unpatentable over Nagarajan and Chen (US 6,787,736 B1, issued Sep. 16
7, 2004). The Examiner cites Chen as teaching welding at a wire feed rate 17
of less than about 800 inches/min. (~ 20 m/min.) at a deposition rate of less 18
than about 15 lb./hr. (6.8 kg/hr.). The Examiner also cites Chen as teaching 19
the use of a robotic welder. (Ans. 9, citing Chen, col. 1, ll. 10-20; col. 2, ll. 20
40-45 and fig. 2). 21
Embodiment 1 of the low alloy metal-core wire described by 22
Nagarajan includes, by overall weight of the wire, 0.0001-0.0200 wt% 23
boron; 0.001-0.100 wt% titanium; and 0.01-5.0 wt% molybdenum. Cored 24
metal electrodes recited only as having overlapping ranges of these 25
constituents might have been prima facie obvious in view of Embodiment 1. 26
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In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). Here, 1
however, Nagarajan fails to disclose minimum ratios between the weight 2
percentages of titanium to boron, and between the weight percentages of 3
molybdenum to titanium, in the weld metal or weld bead. Neither does the 4
Examiner articulate any reason why one of ordinary skill in the art might 5
have had reason to select a composition having minimum weight percentage 6
ratios in the recited ranges. The teachings for which the Examiner cites 7
Chen fail to remedy these deficiencies. We do not sustain the rejection of 8
claims 17 and 18 under § 103(a) as being unpatentable over Nagarajan and 9
Chen. 10
The Examiner rejects claim 37 under § 103(a) as being unpatentable 11
over Nagarajan and James. The Examiner cites James as teaching cored 12
metal electrode including 0.01 wt% aluminum. (Ans. 10). The teachings for 13
which the Examiner cites James fail to remedy the deficiencies in the 14
teachings of Nagarajan as applied to parent claim 32. We do not sustain the 15
rejection of claim 37 under § 103(a) as being unpatentable over Nagarajan 16
and James. 17
18
NEW GROUNDS OF REJECTION 19
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2010), we enter 20
new grounds of rejection against claims 1-4, 7, 8, 11, 12, 15, 16 and 20-22 21
under § 102(b) as being anticipated by Example 8, described by James at 22
column 12, line 65 through column 13, line 40. James describes performing 23
pulse electric arc welding using a cored metal electrode in combination with 24
Argon-18% carbon dioxide shielding gas. The cored metal electrode had a 25
core composition as follows: 26
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Iron powder 65.5 wt % 1
Manganese powder 9.6 wt % 2
Ferrosilicon 3.8 wt % 3
Ferrotitanium 0.8 wt % 4
Silicon powder 1.1 wt % 5
Fused metal oxide 0.4 wt % 6
Iron/Ferroboron agglomerate 2.6 wt %. 7
Nickel powder 12.7 wt % 8
Ferromolybdenum 3.5 wt %. 9
(James, col. 12, l. 67- col. 13, l. 15). The pulse electric arc welding was 10
performed at a minimum programmed wire speed of 2.39 m/min. 11
(approximately 94 in/min.) and a maximum programmed wire speed of 7.56 12
m/min. (approximately 298 in/min.) (James, col. 13, approximately ll. 23-13
24). 14
James reports that the welding operation produced a weld metal 15
having a composition as follows: 16
B (boron) 0.005 wt % 17
C (carbon) 0.05 wt % 18
Mo (molybdenum) 0.56 wt % 19
Mn (manganese) 1.49 wt % 20
Ni (nickel) 2.6 wt % 21
Si (silicon) 0.40 wt % 22
Ti (titanium) 0.04 wt % 23
Cr (chromium) 0.12 wt %. 24
(James, col. 13, approximately ll. 34-35). The ratio of titanium to boron in 25
the weld metal is 8:1. The ratio of molybdenum to titanium in the weld 26
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metal is 14:1. The resulting weld metal had a yield strength of 686 MPa 1
(approximately 99.5 ksi) and an ultimate tensile strength of 797 MPa (116 2
ksi). (James, col. 13, approximately ll. 36-37). 3
James describes a cored metal electrode which satisfied the weld 4
metal composition, weight percent ratio, yield strength and tensile strength 5
limitations of claims 1-4, 7, 8, 11 and 12. 6
James also describes forming a weld bead on a workpiece by an 7
electric arc welding process using the consumable electrode of Example 8. 8
The electric arc welding process necessarily included the conventional steps 9
of selecting a workpiece; at least partially melting the consumable electrode 10
with an electric arc and depositing molten weld metal on the workpiece; and 11
allowing the molten weld metal to cool and solidify to form the weld bead 12
on the workpiece. The consumable electrode of Example 8 satisfied the 13
weld metal composition, weight percent ratio, yield strength and tensile 14
strength limitations of claims 15 and 20-22. With respect to claim 16, James 15
describes at least partially shielding the molten weld metal from the 16
atmosphere during the welding process by use of an argon-18% carbon 17
dioxide shielding gas. 18
19
DECISION 20
We REVERSE the Examiner’s final decision rejecting claims 1-4, 7, 21
8, 11-13, 15-22 and 25-37. 22
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2010), we enter 23
NEW GROUNDS OF REJECTION against claims 1-4, 7, 8, 11, 12, 15, 16 24
and 20-22 under § 102(b) as being anticipated by James. Section 41.50(b) 25
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provides “[a] new ground of rejection pursuant to this paragraph shall not be 1
considered final for judicial review.” 2
Section 41.50(b) also provides that Appellant, WITHIN TWO 3
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 4
the following two options with respect to the new grounds of rejection to 5
avoid termination of the appeal as to the rejected claims: 6
(1) Reopen prosecution. Submit an 7
appropriate amendment of the claims so rejected or 8
new evidence relating to the claims so rejected, or 9
both, and have the matter reconsidered by the 10
examiner, in which event the proceeding will be 11
remanded to the examiner . . . 12
(2) Request rehearing. Request that the 13
proceeding be reheard under § 41.52 by the Board 14
upon the same record . . . 15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). 17
18
REVERSED; 37 C.F.R. § 41.50(b) 19
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