Ex Parte Izutani et al

Patent Trial and Appeal Board

Jul 28, 2017

13070097 (P.T.A.B. Jul. 28, 2017)

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.
13/070,097 03/23/2011 Shun Izutani 377781US99 1358
22850 7590 08/01/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUN IZUTANI, REIICHI SUZUKI,
YUSHI SAWADA, and HIROHISA WATANABE
Appeal 2015-007495
Application 13/070,097
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, 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 1,
4—6 and 8—15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-007495
Application 13/070,097
CLAIMED SUBJECT MATTER
The claims are directed to a flux-cored welding wire and method for
arc overlay welding using the same. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A flux-cored welding wire suitable for gas shielded arc
welding comprising flux filled up in an outer sheath, comprising,
as percentage to the total mass of the flux-cored welding wire:
C: 0.20 mass% or below,
Si: 15.00 mass% or below,
Mn: 20.00 mass% or below,
P: 0.0500 mass% or below,
Ni: 5.00-80.00 mass%,
Ti: 0.10-0.80 mass%,
S: 0.0500 mass% or below,
Cr: 15.0-50.0 mass%, and one or more members selected
from the group consisting of:
Al: 1.000 mass% or below,
Mo: 15.000 mass% or below,
Nb: 5.00 mass% or below,
N: 0.0800 mass% or below,
Cu: 5.00 mass% or below, and
V: 1.000 mass% or below, and
the remainder comprising Fe and inevitable impurities,
wherein the flux-cored wire is in a pure Ar gas welding
atmosphere.
REJECTION
Claims 1, 4—6 and 8—15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inoue et al. (US 2011/0062133 Al, pub. Mar. 17,
2011) (“Inoue”) and further in view of Suzuki et al. (US 2009/0261085 Al,
pub. Oct. 22, 2009) (“Suzuki”).
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Appeal 2015-007495
Application 13/070,097
OPINION
Inoue is cited by the Examiner regarding the basic wire composition
of sole independent claim 1, which is the only claim separately argued.
Final Act. 3; App. Br. 3—5. The Examiner cites Suzuki as illustrating some
of the optional elements (Final Act. 3), but as these elements are recited as
part of a Markush grouping, Suzuki’s teachings in this regard are not
actually required to satisfy the limitations of claim 1. See In re Skoll, 523
F.2d 1392, 1397 (CCPA 1975); MPEP § 2173.05(h). The Examiner also
cites Suzuki regarding a “pure Ar gas welding atmosphere.” Final Act. 4.
However, we note that, according to the preamble, claim 1 is directed to the
wire itself and not a particular use of the wire or the wire’s combination with
any particular environment. Thus, this claim language would appear to be
an intended use limitation and its structural impact has not been expressly
discussed in the record before us.
Turning to Appellants’ arguments, Appellants contend that Suzuki is
critical of large quantities of Ni and Cr. App. Br. 4 (citing Suzuki para. 8);
Reply Br. 3. Suzuki’s criticality is based on cost. Suzuki para. 8 (“also the
composition contains large amounts of elements such as Ni and Cr, so that
the wire is expensive”). Cost may be a design tradeoff but it does not tend to
demonstrate nonobviousness to a skilled artisan. See, e.g., In re Farrenkopf
713 F.2d 714, 718 (Fed. Cir. 1983)(“That a given combination would not be
made by businessmen for economic reasons does not mean that persons
skilled in the art would not make the combination because of some
technological incompatibility. Only the latter fact would be relevant.”)
Appellants next discuss Suzuki’s use of graphite as a carbon source
(App. Br. 4; Reply Br. 3) but do not apprise us as to the relevance of this to
the § 103(a) inquiry. Merely pointing out Suzuki lacks something for which
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Appeal 2015-007495
Application 13/070,097
Inoue was cited does not, without more, apprise us of error in the
Examiner’s rejection. “Non-obviousness cannot be shown by attacking
references individually when the rejection is predicated upon the teachings
of a combination of references.” See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986)(citation omitted).
Appellants point out that Inoue fails to disclose pure Ar gas welding.
App. Br. 5; Reply Br. 3^4. However, Suzuki was relied on for this aspect of
the claim, which, as discussed above, has questionable structural impact on
the claimed subject matter. To the extent it is the Appellants’ position such
a difference defeats the motivation to combine the cited art (App. Br. 5),
Appellants have not supplied any evidence or explanation as to why the
teachings regarding a welding wire designed for an Ar + 2% O2 environment
would not at least be considered relevant to teachings related to using pure
Ar. “The arguments shall explain why the examiner erred as to each ground
of rejection contested by appellant.” 37 C.F.R. § 41.37(c)(l)(iv).
For the foregoing reasons we are not apprised of error in the
Examiner’s rejection.
DECISION
The Examiner’s rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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