13079307 (P.T.A.B. Jun. 25, 2018)

Ex Parte Kamijo et al

Patent Trial and Appeal BoardJun 25, 2018

13079307 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/079,307 04/04/2011 Yasuhito KAMIJO 22850 7590 06/27/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 378734US2X 9490 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 06/27/2018 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 Y ASUHITO KAMIJO, SATORU ASAI, KATSUNORI WADA, and MAKOTO TAKAHASHI Appeal2016-005573 Application 13/079,307 1 Technology Center 3700 Before STEFAN STAICOVICI, JAMES P. CALVE, and ANTHONY KNIGHT, Administrative Patent Judges. KNIGHT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a Final Office action dated February 2, 2015 ("Final Act."), rejecting claims 2-8 and 11. An oral hearing in accordance with 37 C.F.R. Â§ 41.47 was held on June 19, 2018. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to Appellants, the real parties in interest are Kabushiki Kaisha Toshiba and Taiyo Nippon Sanso Corp. Appeal Br. 1. Appeal2016-005573 Application 13/079,307 CLAIMED SUBJECT MATTER The claims are directed to a MAG welding method for high chromium (Cr) steel using a shielding gas. Spec. i-f 2. Claim 2, the sole independent claim, reproduced below, is illustrative of the claimed subject matter: Claim 2. A MAG welding method, comprising: preparing a pair of base materials which are made of a high Cr steel containing 8 wt% to 13 wt% of Cr and arranged to have a narrow gap between them; and performing arc welding of the pair of base materials by using a shielding gas being a ternary mixed gas consisting essentially of 15% by volume to 1 7% by volume of a carbon dioxide gas, 30% by volume to 50% by volume of a helium gas and a balance of an argon gas, and a solid wire containing 8 wt% to 13 wt% of Cr. REJECTIONS The Examiner made the following rejections: I. Claims 2--4, 6-8, and 11 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larson et al. (US 4,857,692, issued Aug. 15, 1989) (hereinafter "Larson"), Kim et al. (US 2002/0148533 Al, published Oct. 17, 2002) (hereinafter "Kim"), and Lesnewich et al. (US 3,496,323, issued Feb. 17, 1970) (hereinafter "Lesnewich"). II. Claims 3 and 6-8 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larson, Kim, Lesnewich, and Church (US 4,572,942, issued Feb. 25, 1986). 2 Appeal2016-005573 Application 13/079,307 III. Claim 5 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Larson, Kim, Lesnewich, and Suzuki (US 2011/0114606 Al, published May 19, 2011). 2 OPINION Rejection I Claim 2 The Examiner finds that Larson discloses, inter alia, an arc welding apparatus that uses a shielding gas mixture. Final Act. 2. Further, the Examiner finds that Larson does not disclose preparing a pair of base metals made of a high chromium (Cr) steel containing 8-13 wt% of Cr or a solid wire comprising 8-13 wt% of Cr. Id. According to the Examiner, Kim "teaches a flux cored wire for dual phase stainless steel having a wire containing 15 to 35 % Cr ... [and] base metals ... made of stainless steel containing 20 to 25 wt%." Id. at 2; Ans. 3. The Examiner contends that "Kim teaches using ... [Cr] in at least 15%," and, thus, "where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only ordinary skill in the art." Ans. 7 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellants argue that Kim teaches using a wire that contains 15% to 35% Cr but does not teach a wire comprising 8-13 wt% of Cr as required by the claims. Appeal Br. 6. Appellants further argue that "[n]either Larson nor Lesnewich welds high Cr steel." Reply Br. 3. Appellants admit that 2 As claims 3 and 5-8 depend from independent claim 2, rejected over the combination of Larson, Kim, and Lesnewich, we view the Examiner's omission of Lesnewich from Rejections II and III as an inadvertent typographical error. 3 Appeal2016-005573 Application 13/079,307 "Kim welds high Cr steel" (id.), but Appellants do not state the chromium percentage of Kim's steel. Reviewing Kim, we note that Kim teaches using a flux cored wire of "an austenitic or austenitic-ferritic stainless steel" including "15 to 3 5 wt% Cr." Kim i-fi-f 17, 19. Kim describes the welding wire as suitable for welding "the dual phase structure stainless steel instead of the single phase steel so that remarkable effects can be expected in welding of the sea water resistant austenitic-ferritic stainless steel, which are used for various equipments for the chemical industry." Id. i1 48. With respect to the base materials being welded, Kim discloses "austenitic-ferrite based dual [phase] stainless steels contain[ing] 20 to 25 wt% Cr." Id. i18. Thus, Kim does not disclose a base material comprising 8-13 wt% of Cr or a wire comprising 8-13 wt% of Cr. Furthermore, although we appreciate the Examiner's position that it is not inventive to discover the optimum or workable ranges by routine experimentation (Aller, 220 F.2d at 456), nonetheless, this rule is limited to cases in which the optimized variable is a "result-effective variable." See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Here, the Examiner's analysis does not adequately establish that the claimed Cr content is a result-effective variable. See Ans. 7. Neither Larson nor Lesnewich are relied upon to teach the use of a base material or wire comprising 8-13 wt% of Cr. Accordingly, the combined teachings of Larson, Kim, and Lesnewich do not meet all of the limitations of the claim and hence, the rejection of claim 2 is not sustained. 4 Appeal2016-005573 Application 13/079,307 Claims 3, 4, 6-8, and 11 Claims 3, 4, 6-8, and 11 depend from claim 2. Appeal Br. 10-11 (Claims App'x.). The Examiner relies on the same deficient findings and reasoning based on Larson, Kim, and Lesnewich discussed above, regarding claim 2 (see supra the rejection of claim 2). Thus, for the same reasons discussed above, we do not sustain the rejection of claims 3, 4, 6-8, and 11. Re} ection II Claims 3 and 6-8 depend from claim 2. Appeal Br. 10-11 (Claims App 'x. ). The Examiner relies on the same deficient findings and reasoning based on Larson, Kim, and Lesnewich discussed above, regarding claim 2 (see supra the rejection of claim 2). Church is not relied upon by the Examiner to cure the deficiencies noted in Rejection I. Thus, for the same reasons discussed above, we do not sustain the rejection of claims 3 and 6-8. Rejection III Claim 5 depends from claim 2. Appeal Br. 10 (Claims App'x.). The Examiner relies on the same deficient findings and reasoning based on Larson, Kim, and Lesnewich discussed above, regarding claim 2 (see supra the rejection of claim 2). Suzuki is not relied upon by the Examiner to cure the deficiencies noted in Rejection I. Thus, for the same reasons discussed above, we do not sustain the rejection of claim 5. 5 Appeal2016-005573 Application 13/079,307 DECISION For the above reasons, the Examiner's rejection of claims 2-8 and 11 is reversed. REVERSED 6