Ex Parte Pagano et al

Patent Trial and Appeal Board

Oct 26, 2017

13526278 (P.T.A.B. Oct. 26, 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.
13/526,278 06/18/2012 Kevin Pagano 60725/YOD (ITWO:0549) 4019
52145 7590 10/30/2017
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
docket@fyiplaw.com
sinclair@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN PAGANO and KEVIN SUMMERS
Appeal 2016-001475
Application 13/526,278
Technology Center 3700
Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
THOMAS F. SMEGAL, 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—
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter new grounds of rejection.
Appeal 2016-001475
Application 13/526,278
CLAIMED SUBJECT MATTER
The claims are directed to a metal cored welding method and system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A welding method comprising:
establishing an arc between a metal cored welding
electrode and a workpiece, the metal cored welding electrode
comprising a sheath and a core;
feeding the metal cored welding electrode from a welding
torch while cyclically moving the metal cored welding electrode
in a desired pattern by a motion control assembly within the
welding torch to maintain the arc only between the sheath and
the workpiece and while forcing movement of the arc between
the sheath and the workpiece; and
advancing the welding torch or the workpiece to establish
a weld bead.
REJECTIONS1
Claims 1,4, 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ozamoto (JP 09-094658 A, pub. April 8, 1997) and Kim
(US 2008/0245774 Al, pub. October 9, 2008) as evidenced by Barhorst2
(“Metal Cored Electrode Basics”).
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ozamoto, Kim, and Nomura (US 4,441,011, iss. April 3,
1984) or Brown (US 3,818,176, iss. June 18, 1974).
1 The Examiner withdrew a rejection of claims 1—20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2 Steve Barhorst, Metal Cored electrode Basics, The American Welder
(Nov/Dec 2000), http://www.aws.Org/wj/amwelder/l 1-00/barhorst.html
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Application 13/526,278
Claims 5, 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ozamoto, Kim, and Nakano (JP 2000-301332 A, pub.
October 31, 2000).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ozamoto, Kim, and Sugitani (US 5,030,812, iss.July 9,
1991).
Claims 12, 13, 15, 19 and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ozamoto, Kim, and Nomura, as evidenced by
Barhorst.
OPINION
Appellants present the same arguments concerning independent
claims 1 and 12 (App. Br. 8—14; 19-20) and premise arguments concerning
the remaining claims (App. Br. 15—17, 20—21), with the exception of claim 8
(App. Br. 18), only on dependency.
The Examiner rejected claim 1 based on the combination of Ozamoto,
Kim and Barhorst, with Barhorst cited as evidence of the inherent
characteristics of Ozamoto’s cored wire.3 Final Act. 5-6. For claim 12 the
Examiner added Nomura, for which Appellants do not present any additional
arguments. Final Act. 10-14. Appellants make three arguments against the
Examiner’s reliance on the Ozamoto, Kim and Barhorst combination: First,
Appellants contend that the claimed combination yields unexpected results.
App. Br. 9-11. Second, Appellants contend Ozamoto, even in light of
Barhorst, does not disclose “forcing movement of the arc” “maintain[ed]
only between the sheath and the workpiece.” App. Br. 12—13. Third,
3 This is discussed in the anticipation context in MPEP § 2131.01(111).
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Appeal 2016-001475
Application 13/526,278
Appellants contend that due to the different wire diameters, Ozamoto and
Kim teach away from one another. App. Br. 13—14.
Beginning with Appellants’ third argument, teaching away is not a
matter of finding any isolated teachings that differ in the references cited in a
rejection. See App. Br. 13—14; Reply Br. 2—3. Rather, teaching away
requires a disclosure that actually criticizes, discredits, or otherwise
discourages the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Furthermore, the references must be considered in their entirety.
Thus, Appellants’ teaching away argument fails for two reasons: Appellants
have pointed only to differences in choice of wire size without any
explanation or evidence as to why this difference would lead one skilled in
the art to disregard the teachings of Kim concerning the controller that are
relied upon by the Examiner. Second, pointing only to distinctions between
Ozamoto and Kim does not, without more, identify any subject matter within
claim 1 which the references, considered in their entirety, would teach
against. Thus, we do not find any teaching away from the subject matter of
claim 1 in Ozamoto and Kim.
The point of fact that underlies Appellants’ second argument, whether
Ozamoto as evidenced by Barhorst inherently discloses “forcing movement
of the arc” “maintain[ed] only between the sheath and the workpiece,” is
effectively determinative of Appellants’ first argument concerning
unexpected results because if the claimed and prior-art processes are
inherently the same, the results must also be the same and therefore cannot
be regarded as unexpected. See, e.g., Bristol-Myers Squibb Co. v. Ben Venue
Laboratories, Inc. 246 F.3d 1368, 1376-1377 (Fed. Cir. 2001) (Newly
discovered results of known processes directed to the same purpose are not
patentable because such results are inherent.)
4
Appeal 2016-001475
Application 13/526,278
The Examiner reasonably found and reasoned that with the current
focused on the outer sheath, and oscillating wire movement dictating
movement of the arc, just as in Appellants’ invention, the inherent result
would be “forcing movement of the arc” “maintain[ed] only between the
sheath and the workpiece” as required by claims 1 and 12. Final Act. 5—6
(citing Ozamoto p. 2, Barhorst p. 2). This reasonably shifted the burden4 to
Appellants to come forward with evidence or explanation as to why these
particular results recited would not be an inherent characteristic of the prior
art. In re King, 801 F.2d 1324, 1326—28 (Fed. Cir. 1984).5 We acknowledge
Barhorst’s alleged shortcoming in discussing where current is concentrated
without specifically or expressly teaching that this location always coincides
with where the arc is located. However, Appellants have not pointed to any
disclosure in their own Specification or submitted any extrinsic evidence to
apprise us of what particular manipulative steps or structural characteristics
bring about the particular arc location recited in claims 1 and 12. Nor have
Appellants identified any disclosure or provided any evidence to
demonstrate how arc movement is “forced” other than by moving the wire as
is done in Ozamoto.
Having carefully compared Appellants’ disclosure with that of
Ozamoto and Barhorst, we are unable to find, and Appellants do not apprise
us of, any differences in the structures or settings employed that would bring
about differences in the arc locations. As a practical matter, it does not
suffice for Appellants to merely assert, without evidence or explanation, that
4 For a detailed discussion, see MPEP § 2112.
5 The issue was anticipation in King, but “[t]he inherent teaching of a prior
art reference, a question of fact, arises both in the context of anticipation and
obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).
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Appeal 2016-001475
Application 13/526,278
the prior-art does not inherently achieve an arc only between the sheath and
the workpiece (App. Br. 12—13), “challenging the PTO to prove the contrary
by experiment or otherwise. The PTO is not equipped to perform such
tasks.” In re King, 801 F.2d at 1327 (citing, inter alia, In re Brown, 459 F.2d
531, 535 (CCPA 1972)). Thus, on the record before us, Appellants have not
adequately rebutted the Examiner finding of inherency.
Without drawing a distinction between the claimed subject matter and
that of Ozamoto and Barhorst, insofar as the arc characteristics are
concerned, Appellants’ allegation of unexpected results cannot be said to be
based on results that actually differ from those of the prior art, because such
results must also be inherent. Bristol-Myers Squibb, supra. We
acknowledge the allegation of unexpected results in the Specification. App.
Br. 10-11 (citing Spec. para. 26). However, Appellants do not identify any
relationship between any specific claim recitation and any specific result.
Thus Appellants have not shown a nexus between the allegedly unexpected
results and the claimed subject matter (MPEP § 716.02(b)) nor have
Appellants shown how the results are commensurate in scope with the
claimed invention (MPEP § 716.02(d)). Appellants also do not specify what
specific processes form the basis for their comparisons in the Specification
or provide any comparison to a product similar to that employed by
Ozamoto. Thus, Appellants have also failed to provide a comparison against
the closest prior art (MPEP § 716.02(e)).
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1 and 12 and those claims dependent thereon and not separately
argued.
6
Appeal 2016-001475
Application 13/526,278
Appellants’ argument concerning claim 8 amounts to pointing out that
no single reference discloses the combination of the recited speed with a
cored wire.6 App. Br. 17—18.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims. . . . [I]n such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Certainly, increasing
the workpiece speed will increase production efficiency as the Examiner
finds. Final Act. 10; Ans. 8. To the extent Appellants argue one would not
expect a sufficient quality of weld with a cored wire at that speed (App. Br.
18; Reply Br. 4), again, Appellants are in the best position to enter evidence
of this assertion and all that is proffered is unsupported attorney argument.
The arguments of counsel cannot take the place of evidence in the record. In
re Schulze, 346 F.2d 600, 602 (CCPA 1965). Furthermore, absolute
predictability that a modification will be successful is not required, all that is
required is a reasonable expectation of success. See In re O ’Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988). Here the Examiner reasonably found
there was a reasonable expectation of success in increasing the workpiece
speed of Ozamoto and Appellants have not entered any evidence to
demonstrate otherwise. Accordingly, we also sustain the Examiner’s
rejection of claim 8.
6 Claim 8 depends from claim 1 and recites “wherein the welding torch or
the workpiece is advanced at a rate of at least 59 inches per minute.”
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Appeal 2016-001475
Application 13/526,278
Pursuant to 37 C.F.R. § 41.50(b) we enter new grounds of rejection against
claims 1 and 127 as failing to comply with the written description and
enablement requirements of 35 U.S.C. § 112, first paragraph.
As discussed above, Appellants have not directed our attention to any
particular structures, manipulative steps, or combinations thereof in the
Specification that will necessarily “maintain the arc only between the sheath
and the workpiece.” After careful review, we are also unable to identify any
such disclosure. In fact, Appellants’ Specification expresses a lack of
certainty that this can even be assured: “It is believed that the arc established
between the metal cored welding wire and the workpieces and/or the
progressing weld puddle exists only between the sheath 48 and these
elements.” Spec. p. 8, para. 25 (emphasis added). Yet Appellants
nevertheless seek to preempt others from practicing a method wherein the
arc is maintained only between the sheath and the workpieces, without
themselves providing a specific concrete example, or technical explanation,
of how this is actually achieved. “[A] patent is not a hunting license. It is not
a reward for the search, but compensation for its successful conclusion.”
Brenner v. Manson, 383 U.S. 519, 536 (1966) (quoted in AriadPharm., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc)). Claims
1 and 12 are inconsistent with the quid pro quo of the patent grant. Seeking
a generic claim without disclosing one example assuredly falling within it
runs afoul of the written description requirement of 35 U.S.C. § 112, first
paragraph. Ariad, 598 F.3d at 1349-55. That is, Appellants have not
7 We leave the dependent claims for the Examiner’s consideration. Although
the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no
inference should be drawn when the Board elects not to do so. See MPEP
1213.02.
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Appeal 2016-001475
Application 13/526,278
demonstrated possession of any, much less “sufficient” species to support
these generic claims, and, as such, are attempting to overreach their
contribution to the field. See id. Additionally, the breadth of the claims,
unpredictability of arc travel, lack of direction provided by Appellants, and
the absence of working examples, lead us to also conclude that undue
experimentation would be necessary to practice the claimed invention. See
MPEP § 2164.01(a) (listing the factors discussed in In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988)). Thus, Appellants’ disclosure also lacks sufficient
information regarding the subject matter of claims 1 and 12 to comply with
the enablement requirement of35U.S.C. § 112, first paragraph.
DECISION
The Examiner’s rejections are affirmed.
We enter a new ground of rejection of claims 1 and 12 under 35
U.S.C. § 112, first paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
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Application 13/526,278
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $ 41.50(b)
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