Ex Parte Murakami

Patent Trial and Appeal Board

Feb 28, 2018

12073534 (P.T.A.B. Feb. 28, 2018)

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.
12/073,534 03/06/2008 Kazuhiro Murakami 1451562.155US2 8743
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
CHOU, JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUHIRO MURAKAMI
Appeal 2017-006465
Application 12/073,534
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL,
and PAUL J. KORNICZKY, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3, and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Independent claims 1 and 3 are pending. Claim 1, reproduced below,
illustrates the claimed subject matter with certain key phrases italicized:
1. A resistance welding method of welding two objects
together comprising the steps of:
clamping the two objects between a pair of electrodes;
and
applying a welding current between the pair of the
electrodes on a condition that the two objects are pressed to
bring the two objects toward each other,
heating a contacting surface between the two objects,
Appeal 2017-006465
Application 12/073,534
wherein one of the two objects includes a core member
and a plated layer, which coats the core member and has a
melting point lower than that of a coating layer that is a metal
constituting an outer surface of the core member,
wherein the two objects are clamped between the pair of
the electrodes and the contacting surface is allowed to generate
heat to melt the plated layer, and to weld the coating layer of
said one of the two objects and a base member of another of the
two objects together,
wherein the core member includes a core wire and the
coating layer, which coats the core wire, the core wire having a
round shape in section and being made of a material having a
melting point higher than that of the coating layer and also
being made of a material having mechanical strength higher
than that of the coating layer, and
wherein the coating layer is made of a metal which forms
no intermetallic compound between the metal constituting the
coating layer and the base member when the coating layer and
a surface layer of the base member are melted and mixed to
each other or the coating layer is made by a method in which
the intermetallic compound is not produced when the coating
layer joins the base member.
REJECTIONS
I. Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.1 Final Act. 2.
1 Because claim 4 depends from claim 1, and thus includes the limitations
thereof, we understand that claim 4 is also rejected as failing to comply with
the written description requirement.
2
Appeal 2017-006465
Application 12/073,534
II. Claims 1,3, and 4 stand rejected under 35 U.S.C. § 103(a) as
obvious over Maejima (JP 06114563, published April 26, 1994) and
Tomalin (US 4,988,552, iss. Jan. 29, 1991).2 Final Act. 4.
DISCUSSION
Rejection I
Regarding claim 1, the Examiner finds that “[tjhere is no disclosure
that the coating layer and a surface layer of the base member are melted and
mixed to each other.” Final Act. 2-3. Regarding claim 3, the Examiner
similarly finds that “there is no suggestion or teaching that the core member
and the base member are melted and mixed to each other.” Id. at 3.
Appellant argues that the melting and mixing limitation would be
readily understood by one skilled in the art based on the Specification.
Appeal Br. 9 (citing Spec. 14,11. 19-24). According to Appellant, one
skilled in the art would understand the description of Figure 8 “as teaching a
coating layer in contact with a surface layer of a base member in which the
coating layer and the surface layer are melted and mixed (i.e., ‘made molten’
and ‘welded’).” Id. Appellant, thus, argues that making molten and welding
teach melting and mixing, and more simply that “welding” teaches
“mixing.”
The Examiner responds that, even if welding inherently teaches the
claimed mixing, Appellant’s Specification does not disclose “that the
coating layer 35 and a surface layer 37 of [Appellant’s] base member are
2 Although the statement of the obviousness rejection lists only claims 1 and
3, the rejection of claim 4 is set forth therein. We consider the failure to list
claim 4 in the statement of the rejection to be a typographical error.
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Application 12/073,534
melted and mixed to each other,” because the cited portion of page 14 of the
Specification discloses the plated layer 33 (rather than the coating layer 35)
and the surface layer 37 are welded together/made molten. Ans. 11.
Appellant’s plated layer 33 is separate from its coating layer 35.
The Examiner is correct that, even if welding inherently teaches the
claimed mixing, the Appellant’s Specification discloses the plated layer 33
and the base member surface layer 37 are welded together, rather than the
coating layer 35 and the surface layer 37 being welded together as claimed.
This reasoning also applies to the claim recitation of the coating layer 35
mixing with the base member surface layer 37 “without producing an
intermetallic compound” — the Specification only discloses such mixing
without intermetallic compound formation with respect to the plated layer 33
and the base member surface layer 37, while the claim refers to such
limitations regarding the coating layer 35 and the surface layer 37. For these
reasons, we sustain Rejection I.
Rejection II
Claim 1 recites a coating layer over a core being (1) made of a metal
which forms no intermetallic compound with the base member when the
coating layer and a surface layer of the base member are melted and mixed
to each other or (2) the coating layer being made by a method in which the
intermetallic compound is not produced when the coating layer joins the
base member.
The Examiner finds that Maejima discloses the elements of claims 1,
3, and 4, including a metal coating layer forming “no intermetallic
compound” between the metal of the coating layer and the base member
when the coating layer and a surface layer of the base member are melted
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Application 12/073,534
and mixed to each other. Final Act. 5 (Maejima’s “coating layer of wires 1
and 2 are made of aluminum.”). The Examiner finds that Maejima fails to
teach a plated layer coating the core member and having a melting point
lower than that of a metal coating layer, but finds this “plated layer” in
Tomalin. The Examiner concludes that it would have been obvious to
substitute Tomalin’s wire for Maejima’s to “weld different type[s] of
workpieces based on desired welding requirement (see MPEP 2143, item
F),” and to select a different type of structure, such as three layers in the
welding wire and the kind material comprising the coating layer “according
to desired welding requirement (see MPEP 2143, item F).” Final Act. 5-6
Appellant argues that neither Maejima nor Tomalin disclose a metal
coating layer forming “no intermetallic compound between the metal
constituting the coating layer and the base member” during welding. Appeal
Br. 10. Appellant sets forth various facts regarding how intermetallic
compounds are formed, why one skilled in the art would expect Maejima’s
aluminum coating layer and steel base to form and intermetallic compound,
and why one skilled in the art would expect Tomalin’s copper coating layer
and steel base member to form an intermetallic compound. Appeal Br.
11-12.
Maejima discloses only welding a wire having a steel core and
aluminum coating. While Appellant’s Specification recognizes the use of an
aluminum (Al) coating, it does not recognize use of aluminum with steel (or
the constituent elements thereof) to achieve “no intermetallic compound” as
claimed. Spec. p. 17,11. 12-24. Maejima similarly does not disclose
welding aluminum with another metal that will not form an intermetallic
compound therewith. Tomalin discloses a copper clad 14 steel core 10
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Appeal 2017-006465
Application 12/073,534
having an outer layer of brass (disclosed to include 60% Cu and 35% Zi).
See Tomalin 2:59-3:22. While Appellant’s Specification recognizes the use
of a copper (Cu) coating, it does not recognize use of copper with steel or
brass (or the constituent elements thereof) to achieve “no intermetallic
compound” as claimed Spec. p. 17,1. 12-24. Tomalin similarly does not
disclose welding copper with another metal that will not form an
intermetallic compound therewith. Indeed, neither Maejima nor Tomalin
disclose or suggest selection of a metal coating layer forming no
intermetallic compound with a material of the base member during welding.
The Examiner’s finding that the references teach “no intermetallic
compound” between the metal constituting the coating layer and the base
member is at best speculative. Prima facie obviousness has, therefore, not
been established, and we do not sustain Rejection II.
CONCLUSION
We AFFIRM the rejection of claims 1, 3, and 4 as failing to comply
with the written description requirement.
We REVERSE the rejection of claims 1, 3, and 4 under 35 U.S.C.
§ 103(a) as obvious over Maejima and Tomalin.
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).
AFFIRMED
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