Ex Parte Neff et al

Board of Patent Appeals and Interferences

Jan 29, 2009

11591533 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEREMY B. NEFF and KEVIN A. LYTTLE
____________

Appeal 2009-1003
Application 11/591,533
Technology Center 1700
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Decided: January 29, 2009
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Before TERRY J. OWENS, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 7 and 8, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a shielding gas mixture which, the Appellants
state, is useful for gas metal arc welding (Spec. 1). Claim 1 is illustrative:
1. A shielding gas mixture for use with gas metal arc welding with a
consumable wire electrode of coated steels, said coated steels comprising
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galvanized, galvannealed or aluminized steels, and said shielding gas
mixture consisting essentially of:

(iv) from 6 to 10 volume percent carbon dioxide;

(v) from 6 to 10 volume percent helium; and

(vi) the balance argon;

wherein the consumable wire electrode is a solid wire, a solid wire having
silicon content of from about 0.5 to 1.0 weight percent of the total wire
chemistry, a metal-cored wire or a flux-cored wire.

The Reference
Harvey 5,313,039 May 17, 1994
The Rejections
Claims 1-5, 7, and 8 stand rejected over Harvey under
35 U.S.C. § 102(b) and 35 U.S.C. § 103.
OPINION
We reverse the rejection under 35 U.S.C. § 102(b) and affirm the
rejection under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 102(b)
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).

Issue
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Have the Appellants shown reversible error in the Examiner’s
determination that Harvey discloses, expressly or inherently, a gas mixture
consisting essentially of from 6 to 10 volume percent carbon dioxide, from 6
to 10 volume percent helium, and the balance argon?
Findings of Fact
Harvey discloses a shielding gas comprising approximately 5-
25 volume percent carbon dioxide, approximately 5-15 volume percent
helium, the balance argon, most preferably approximately 14-16 volume
percent carbon dioxide, approximately 9-11 volume percent helium, the
balance argon (col. 3, ll. 27-36). In Harvey’s experiments the composition
contains 15 volume percent carbon dioxide, 10 volume percent helium and
75 volume percent argon (col. 3, ll. 62-64; col. 4, ll. 3-5, 56-57). Harvey
teaches that “[a] 15% helium level which is the upper helium percent level
of the present invention provided more reduction in fume emission but
proved to have reduced ‘welding performance’ as compared to the 10%
helium level” (col. 5, ll. 4-8), and that “the gas mixture of 75% Ar/15%
He/10% CO2 provided acceptable welding characteristics versus 75%
Ar/25% CO2 but was determined to have poorer welding performance
characteristics when compared to the composition of 75% Ar/15% CO2/10%
He” (col. 5, ll. 9-14). Harvey also discloses (col. 1, ll. 49-56):
The “rule of thumb” is that the higher the percentage of inert gas in
mixtures with carbon dioxide, the higher will be the transfer
efficiencies of the deoxidizers contained in the core. The presence of
an inert gas, such as argon, in sufficient quantities in a shielding gas
mixture results in less oxidation than occurs with 100% carbon
dioxide shielding.
Analysis
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The Appellants argue that “Harvey et al. does not disclose ‘a shielding
gas consisting essentially of 6-10% carbon dioxide, 6-10% helium, and
balance argon” (Br. 4; Reply Br. 2).
The Examiner states that “it is the examiner’s position that the
claimed 6-10% ranges of helium and carbon dioxide are not substantially
narrower than 5-15% helium and 5-25% carbon dioxide of Harvey et al.”
(Ans. 4).
For the Appellants’ claimed invention to be anticipated, Harvey must
have lead one of ordinary skill in the art to a composition which falls within
the scope of the claim “without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA
1972). Harvey’s 5-15% helium range and 5-25% carbon dioxide range are
broader than the Appellants’ 6-10% ranges such that picking and choosing a
combination of 6-10% helium and 6-10% carbon dioxide from Harvey’s 5-
15% helium and 5-25% carbon dioxide ranges is required to arrive at the
Appellants’ claimed invention. Hence, the Examiner has not established a
prima facie case of anticipation of the Appellants’ claimed invention by
Harvey.
Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that Harvey discloses, expressly or inherently, a gas mixture
consisting essentially of from 6 to 10 volume percent carbon dioxide, from 6
to 10 volume percent helium, and the balance argon.
Rejection under 35 U.S.C. § 103
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The Appellants argue the claims as a group (Br. 1-6). We therefore
limit our discussion to one claim, i.e., claim 1, which is the sole independent
claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Harvey would have rendered prima facie obvious, to one
of ordinary skill in the art, a gas mixture consisting essentially of from 6 to
10 volume percent carbon dioxide, from 6 to 10 volume percent helium, and
the balance argon?
Analysis
The Appellants argue that “Harvey et al. actually teaches away from
Appellants [sic] claimed invention by teaching the desirability of a carbon
dioxide or helium concentration in the shielding gas lower than about
6 percent or greater than about 10 percent, such a concentration being
outside the scope of Appellants’ claimed shielding gas mixtures” (Br. 5;
Reply Br. 4).
Harvey’s most preferred helium content is approximately 9-11 vol.%
(col. 3, ll. 33-34), the lower end of that range being within the Appellants’ 6-
10 vol.% range and the upper end of that range being very close to the
Appellants’ upper limit of 10 vol.%. Harvey does not state why the most
preferred carbon dioxide content is 14-16 vol.% (col. 3, ll. 33-36), but it
appears to be that Harvey is keeping the argon content at the most common
level of 75 vol.% (col. 1, ll. 57-59) and has obtained the carbon dioxide
content by difference (25 vol.% minus the helium content). Particularly in
view of Harvey’s disclosure that the higher the percentage of inert gas such
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as argon, the higher the transfer efficiencies of the deoxidizers contained in
the core (col. 1, ll. 49-53), one of ordinary skill in the art would have been
led by Harvey, through no more than ordinary creativity, to increase the
argon content above 75 vol.% and to correspondingly decrease the carbon
dioxide content below 14-16 vol.% to obtain that benefit. See KSR Int’l. Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). Hence, Harvey does
not teach away from the claimed invention.
The Appellants argue that “Harvey et al. does not disclose or suggest
coated steel workpieces, i.e., galvanized, galvannealed or aluminized steel
workpieces, as required by [the] Appellants’ claimed invention” (Br. 5;
Reply Br. 4).
That argument is not well taken because the consumable wire
electrode of coated steels recited in the Appellants’ sole independent claim is
not part of the claimed shielding gas mixture but, rather, is merely for use
with that gas mixture.
The Appellants argue (Br. 5; Reply Br. 3):
While Appellants’ claimed shielding gas mixtures may be
within the scope of the broad disclosure of Harvey et al., it is
submitted that extensive experimentation and/or unexpectedly good
luck would be required in order to identify the shielding gas mixtures
claimed by Appellants and that, as unexpectedly found by Appellants,
a carbon dioxide or helium concentration in the shielding gas lower
than about 6 percent or greater than about 10 percent may have a
deleterious effect on the weld quality.

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The Appellants apparently rely, in support of that argument, upon
their Figures 2 and 3 which disclose that a gas mixture containing 8% CO2
and 8% He provides improved porosity (but worse spatter for galvannealed
steel) compared to a gas mixture containing 8% CO2 and 5% He, and
provides improved porosity, spatter, and quality of bead appearance
compared to a gas mixture containing 8% CO2 and 15% He (Br. 5-6; Reply
Br. 4).
The Appellants’ argument is not persuasive for the following reasons.
First, the Appellants’ showing of unexpected results does not provide
a comparison of the claimed invention with the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). The closest prior art is Harvey’s
exemplified gas mixture having a helium content of 10 vol.% (col. 3, ll. 62-
64; col. 4, ll. 3-5, 56-57), which is within the range recited in the Appellants’
sole independent claim.
Second, it is not enough for the Appellants to show that the results for
the Appellants’ invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). Harvey’s disclosure that a helium content of 10 vol.%
provides better welding performance than a helium content of 15 vol.%
(col. 5, ll. 4-8) indicates that the improvement shown by the Appellants of an
8% helium content compared to a 15% helium content would have been
expected by one of ordinary skill in the art. Also, the Appellants have not
provided evidence that their showing that a helium content of 8% provides
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better porosity than a helium content of 5%, which is outside Harvey’s most
preferred range (col. 3, ll. 33-36), would have been unexpected by one of
ordinary skill in the art.
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants’ claims encompass carbon
dioxide and helium ranges of 6 to 10 vol.%, yet the Appellants’ evidence
includes only 8% carbon dioxide and helium contents. We find in the
evidence of record no reasonable basis for concluding that the materials
within the ranges encompassed by the Appellants’ claims would behave as a
class in the same manner as the particular materials tested. See In re
Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46
(CCPA 1971).
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that Harvey would have rendered prima facie obvious, to one
of ordinary skill in the art, a gas mixture consisting essentially of from 6 to
10 volume percent carbon dioxide, from 6 to 10 volume percent helium, and
the balance argon.
DECISION/ORDER
The rejection of claims 1-5, 7, and 8 under 35 U.S.C. § 102(b) over
Harvey is reversed. The rejection of claims 1-5, 7, and 8 under
35 U.S.C. § 103 over Harvey is affirmed.
It is ordered that the Examiner’s decision is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

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