Ex Parte James et al

Patent Trial and Appeal Board

Nov 27, 2013

11338507 (P.T.A.B. Nov. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHEW J. JAMES and TERESA A. MELFI
____________________

Appeal 2012-000259
Application 11/338,507
Technology Center 3700
____________________

Before: GAY ANN SPAHN, JOHN W. MORRISON, and
NINA L. MEDLOCK, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
21-47. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

CLAIMED INVENTION
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. An electric arc welding wire having a metal core with an
outer surface and an electrically conductive metal layer on said
outer surface of said metal core, said metal core including a
cavity, said cavity filled with flux materials or metal materials,
said electrically conductive metal layer forming the outer
surface of said welding wire, said electrically conductive metal
layer comprising a copper alloy wherein the copper content of
said alloy is up to about 90 weight percent of said alloy, the
effective resistivity of said layer is greater than 2.0 x 10-8 ohm-
meter at 20°C and up to about 4.0 x 10-8 ohm-meter at 20°C.

REFERENCES
Gaylord
Millhoff
Hayashi
Kobayashi
Iguchi
Suzuki
Sakaguchi
US 2,170,019
US 3,438,755
US 3,443,914
US 4,510,374
US 5,744,394
JP 4-41099 A
JP 64-8294 A
Aug. 22, 1939
Apr. 15, 1969
May 13, 1969
Apr. 9, 1985
Apr. 28, 1998
Feb. 12, 1992
Dec. 1, 1989

REJECTIONS
Claims 21-25 and 34-39 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Millhoff, Gaylord, Kobayashi, and Iguchi.
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Claims 26-33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Millhoff, Gaylord, Kobayashi, Iguchi, Sakaguchi, and
Suzuki.
Claims 40-47 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Millhoff, Kobayashi, and Hayashi.

ANALYSIS
Obviousness over Millhoff, Gaylord, Kobayashi, and Iguchi
Independent claim 21 recites a welding rod having an electrically
conductive metal layer on an outer surface of a metal core that is an
“electrically conductive metal layer comprising a copper alloy wherein the
copper content of said alloy is up to about 90 weight percent
of said alloy, the effective resistivity of said layer is greater than 2.0 x 10-8
ohm-meter at 20°C and up to about 4.0 x 10-8 ohm-meter at 20°C.” The
Examiner finds that Millhoff discloses an electric arc welding wire 10
having a metal core 12 and an electrically conductive metal layer 14 or 17
on the outer surface of the welding wire 10. However, the Examiner also
finds that Millhoff “fails to disclose a copper alloy wherein the copper
content of said alloy is up to about 90 weight percent of said alloy,” and also
fails to disclose the claimed effective resistivity. Ans. 5.
The Examiner turns to Gaylord for its disclosure of “a copper alloy
wherein the copper content of said alloy is in the range of 60-98 weight
percent of said alloy.” Id. at 5-6 (citing Gaylord, p. 2, left col., ll. 65-69).
However, we note that it is Gaylord’s core that has the 60-98 weight percent
copper content, not an outer layer. In addition, since the conductivity of
Gaylord’s material is not explicitly disclosed, the Examiner next turns to
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Iguchi’s teaching of a metal interconnection layer made of copper alloy to
satisfy the claim language of “the effective resistivity of the metal layer
being greater than 2.0 x 10-8 ohm-meter and up to about 4.0 x 10-8 ohm-
meter,” because Iguchi “teaches the copper alloy has a specific resistance of
1.7-2.3 x 10-6 ohm-cm or 1.7-2.3 x 10-8 ohm-meter,” which overlaps the
claimed range. Ans. 6 (citing Iguchi, col. 4, ll. 62-63). The Examiner
concludes that:
it would have been prima facie obvious to a person of ordinary
skill in the art to try a known metal of Iguchi et al. to the
present invention endeavor. The result of such a substitution
would have been predictable in that the welding wire would
have provided sufficient conductivity for use in the welding
process.
Ans. 14.
Appellants argue that “[n]othing in the welding art cited nor in Iguchi
demonstrates the predictability of providing a metal layer with an effective
resistivity greater than 2x10-8 ohm-meter at 20°C and up to about 4x10-8
ohm-meter at 20°C in a copper alloy having a copper content of up to about
90 weight percent.” Reply Br. 5.
We are persuaded by Appellants’ arguments because not only does the
prior art including Iguchi fail to demonstrate the predictability of using a
metal layer with an effective resistivity greater than 2x10-8 ohm-meter at
20°C and up to about 4x10-8 ohm-meter at 20°C in a copper alloy having a
copper content of up to about 90 weight percent, the prior art also fails to
disclose an outer metal layer having both the claimed properties of effective
resistivity and weight percent copper content of the copper alloy. We note
that the Examiner’s rejection is not proposing to substitute the material of
Iguchi as the coating of Millhoff. Instead, the Examiner modifies Millhoff’s
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electrically conductive metal layer 14 or 17 to be made of copper alloy by
the teachings of Gaylord’s core material having a copper content of between
60-98 %. We do not agree with the Examiner that one of ordinary skill in
the art would modify Millhoff’s electrically conductive metal outer layer 14
or 17 to be made of copper alloy by the teachings of Gaylord’s core material
being copper alloy. Nor do we agree with the Examiner that one of ordinary
skill in the art would attribute Gaylord’s copper alloy to have the resistivity
of the copper alloy of Iguchi since the copper content of Iguchi’s copper
alloy is not disclosed. To the extent that the Examiner is relying on the
copper alloy of Gaylord, the Examiner has not shown by a preponderance of
the evidence that the copper alloy of Gaylord has the claimed resistivity, and
to the extent that the Examiner is relying on the copper alloy of Iguchi, the
Examiner has not shown by a preponderance of the evidence that the copper
alloy of Iguchi has the claimed weight percent copper content. Accordingly,
we do not sustain the rejection of independent claim 21, and claims 22-25
and 34-39 which depend therefrom, as unpatentable over Millhoff, Gaylord,
Kobayashi, and Iguchi.

Obviousness over Millhoff, Gaylord, Kobayashi, Iguchi, Sakaguchi, and
Suzuki
Claims 26-33 depend from independent claim 21. App. Br., Clms.
App’x. Appellants argue that “[t]he addition of Sakaguchi and Suzuki do
[sic] not overcome the deficiencies of Millhoff, [Gaylord,] Kobayashi, and
Iguchi noted above with respect to independent claim 21.” App. Br. 11. We
agree. Accordingly, we do not sustain the rejection of claims 26-33 as
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unpatentable over Millhoff, Gaylord, Kobayashi, Iguchi, Sakaguchi, and
Suzuki.
Obviousness over Millhoff, Kobayashi, and Hayashi
Claims 40, 42, 44, and 46
Appellants argue claims 40, 42, 44, and 46 as a group and we select
independent claim 40 as the representative claim. See App. Br. 12-13 and
Reply Br. 6-7; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 42, 44,
and 46 fall with independent claim 40.
Independent claim 40 is directed to an electric arc welding wire
having, inter alia, a metal core, and an electrically conductive metal layer on
an outer surface of the metal core forming the outer surface of the welding
wire, wherein the electrically conductive metal layer having a nominal
thickness of less than 0.5 micron and a copper content of greater than about
99 weight percent copper.
The Examiner finds that Millhoff discloses substantially all of the
recited claim limitations, but fails to disclose, inter alia, the “electrically
conductive metal layer having a nominal thickness of less than 0.5 micron.”
Ans. 9. The Examiner finds that Hayashi teaches an “electrically conductive
metal layer having a nominal thickness of less than 0.5 micron.” Ans. 10
(citing Hayashi, col. 3, ll. 5-10).
Appellants argue that Hayashi is not analogous art. In particular,
Appellants contend that:
[t]he claimed invention and method in Hayashi are from two
completely different fields of endeavor. Moreover, Hayashi
does not deal with the same problem faced by the Applicant[s].
. . . Hayashi does not disclose a better soldering between
metals, but describes a seal between metal and glass . . . . [so
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that] one of ordinary skill would not seek its teachings or be
motivated to make the combination suggested by the Examiner.
App. Br. 13 (citing Hayashi, Abstr.).
The analogous art test requires that a reference is either in the field of
the applicant’s endeavor or is reasonably pertinent to the problem with
which the inventor was concerned in order to rely on that reference as a
basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). A
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor’s endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem. In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). Appellants have failed to cogently explain why Hayashi is either
not in the same field of endeavor as the claimed invention or not reasonably
pertinent to the problem with which the inventor was concerned. This is
because Appellants propose an overly narrow definition of the problem to be
solved as “a welding wire used by arc welders that prevents ‘copper
cracking.’” App. Br. 13. In this case, we note that one problem to be solved
would be using a low resistivity coating material for use in binding metals to
other materials. Appellants offer no evidence or argument why Hayashi’s
solution to the problem of using a low resistivity coating material for use in
binding metals to other materials would not reasonably commend itself to
the inventor of a welding rod. Accordingly, we are not persuaded by
Appellants’ argument that Hayashi is non-analogous art.
With respect to claim 40’s recitation of “said electrically conductive
metal layer having a copper content of greater than about 99 weight percent
copper” (App. Br., Clms. App’x.), the Examiner finds that the word “about”
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is a relative term which is not defined in the specification, and since Millhoff
discloses 98% of copper content as pointed out above, Millhoff meets the
claimed limitation for claim 40. Ans. 16.
Appellants first argue that “the Examiner acknowledged that the
previous arguments with respect to claims 21-47 were fully considered and
were persuasive.” App. Br. 13. The Examiner responds that “[t]he previous
arguments with respect to claims 21-47 were fully considered and were
persuasive are based on claim 21 with respect to the weight percent of the
copper content. Claim 40 . . . claim[s] a copper content of greater than about
99 weight percent copper.” Ans. 16. Claim 21 recites an outer layer with a
copper percentage up to about 90% as opposed to the metallic layer of claim
40 which recites a copper percentage greater than about 99 %. Accordingly,
we are not persuaded by Appellants’ argument that previous statements
made with respect to the copper content of claim 21 are dispositive as to the
greater copper content of the metallic layer of claim 40.
Addressing the copper content of claim 40, Appellants argue that
“some fractional variation below 99 weight percent would be within the
meaning of about,” and “[g]iven that the range recited within the claim is
narrow, in that it relates only to a percentage greater than 99%, it would not
be expected that the word ‘about’ would include 98 weight percent as
disclosed in Mil[l]hoff.” Reply Br. 6.
Other than the attorney argument presented above, Appellants present
no evidence to support the argument that 98% is not about 99%. Moreover,
in the same Reply Brief, when arguing that 98% is not up to about 90% of
claim 1, Appellants argue that “the word ‘about’ would allow for some
percentage above 90%,” and “ it would not include a nearly 10% increase in
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the copper content over 90%.” Reply Br. 5. As the Specification is silent as
to the meaning of “about 99 percent”, it is reasonable to apply Appellants’
previous definition to claim 40. As the 98% disclosed in Millhoff is only a
single percentage below 99% and not nearly 10%, we find it reasonable that
98% is about 99% using Appellants’ previous definition. Accordingly, we
are not persuaded by Appellants’ argument that the Examiner erred by
finding that the 98% copper percentage disclosed in Millhoff is “about 99%”
as recited in claim 40.
For the above reasons, we sustain the rejection of independent claim
40, and claims 42, 44, and 46 which fall therewith, as unpatentable over
Millhoff, Kobayashi, and Hayashi.
Claims 41, 43, 45, and 47
Appellants argue claims 41, 43, 45, and 47 as a group and we select
independent claim 41 as the representative claim. See App. Br. 12. Claims
43, 45, and 47 fall with claim 41.
Addressing claim 41, Appellant’s argue that
[t]he Examiner had previously made a separate rejection of
claim 41 as obvious over Mil[l]hoff in view of Kobayashi,
Hayashi, and further in view of Suzuki. In making that
rejection, the Examiner acknowledged that the combination of
Millhoff, Kobayashi, and Hayashi did not disclose all of the
features of claim 41 necessitating citation to Suzuki.
App. Br. 12, fn. 1.
However, claim 41 only recites the additional claim limitation
“wherein said welding wire is designed for use in AC MIG welding.” App.
Br., Clms. App’x. This claim limitation is merely a statement of intended
use of the claimed welding rod. It should be noted that statements of
intended use in an apparatus claim fail to distinguish over the prior art
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apparatus. See In re Sinex, 309 F.2d 488, 492 (CCPA 1962). The electric
arc welding wire resulting from the combination of Millhoff, Kobayashi, and
Hayashi is capable of performing the recited intended use of being designed
for use in AC MIG welding. Accordingly, we are not persuaded by
Appellants’ argument that the prior rejection of claim 41 based on Millhoff,
Kobayashi, Hayashi, and Suzuki is an acknowledgment that the combination
of Millhoff, Kobayashi, and Hayashi does not disclose all of the limitations
of claim 41, 43, 45, and 47.
For the above reasons, we sustain the rejection of independent
claim 41, and claims 43, 45, and 47 which fall therewith, as unpatentable
over Millhoff, Kobayashi, and Hayashi.

DECISION
For the above reasons, the Examiner’s decision to reject claims 40-47
is affirmed, and the Examiner’s decision to reject claims 21-39 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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