Ex Parte SUZUKI

Patent Trial and Appeal Board

Jun 18, 2018

12905480 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/905,480 10/15/2010 Reiichi SUZUKI
22850 7590 06/20/2018
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.
368436US99 8059
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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 REIICHI SUZUKI
Appeal2016-003148
Application 12/905,480 1,2
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Reiichi Suzuki ("Appellant") seeks review under 35 U.S.C. § 134(a)
of the Examiner's decision, as set forth in the Non-Final Office Action dated
January 23, 2015 ("Non-Final Act."), rejecting claims 1--4, 7, 11, 13, 17, and
19. Claims 5, 6, 8-10, 12, 14--16, and 18 have been cancelled. Appeal Br.
1 Appellant identifies KABUSHIKI KAISHA KOBE SEIKO SHO
(KOBE STEEL, LTD.) as the real party in interest. Appeal Br. 2.
2 Appellant identifies U.S. Patent Application 12/417,849 as a related
application. Appeal Br. 2. The Patent Trial and Appeal Board rendered a
decision on appeal in the related application on June 28, 2016 (in Appeal
No. 2014-000883). We have reviewed that decision and, to the extent
relevant to the issues in the present appeal, have taken that decision into
account in the analysis below.
Appeal2016-003148
Application 12/905,480
2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 4I.50(b ).
BACKGROUND
The disclosed subject matter relates "to hardfacing MIG-arc welding."
Spec. 1. Claim 1, the sole independent claim on appeal, is reproduced
below, with bracketed letters and numbers added to identify each clause:
1. A process for hardfacing MIG-arc welding,
the process comprising:
[a] hardfacing MIG-arc welding with a flux-
cored wire and with a pure argon gas as a shielding
gas, thereby obtaining a weld metal having a
Vickers hardness of 200 or more,
[ b] wherein the welding comprises applying
a pulse waveform as a current waveform,
[ c] wherein the wire comprises a drawn steel
hoop or steel pipe as a sheath and a flux filled in
the sheath,
[ d] wherein the flux consists of, based on a
total mass of the wire:
[ d. l] carbon ( C) in a content of from
0.12 to 5.00 percent by mass;
[d.2] silicon (Si) in a content of from
0.50 to 3.00 percent by mass;
[d.3] manganese (Mn) in a content of
from 0.30 to 20.00 percent by mass;
[ d.4] optionally, phosphorus (P) in a
content of 0.050 percent by mass or less;
[d.5] optionally, sulfur (S) in a
content of 0.050 percent by mass or less;
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Application 12/905,480
Farwer
Kotecki
Inoue
Wakamoto3
Yamada4
[ d. 6] optionally, tungsten (W) in a
content of 3.0 percent by mass or less;
[ d. 7] at least one selected from the
group consisting of Ti02, Zr02, and Ab03
(Ti02+Zr02+Ab03) in a total content of
from 0.10 to 1.20 percent by mass;
[d.8] optionally chromium,
molybdenum, nickel, boron, vanadium,
potassium, calcium, sodium, magnesium,
fluorine, lithium, aluminum, copper, cobalt,
niobium, or any combination thereof; and
[d.9] iron and inevitable impurities,
[ e] wherein the flux has a total content of
silicon and manganese (Si+Mn) of 1.20 percent by
mass or more based on the total mass of the wire,
[/] wherein the wire has a ratio of a total
mass of the flux to a mass of the wire of from 5 to
30 percent by mass, and.
EVIDENCE RELIED ON BY THE EXAMINER
us 5,210,388 May 11, 1993
US 2006/0081579 Al Apr. 20, 2006
US 2006/0243719 Al Nov. 2, 2006
JP 62-161481 July 17, 1987
JP 08-290296 Nov. 5, 1996
3 Wakamoto is a 5-page document that includes an English-language
translation of the abstract of JP 62-161481, as well as the original document
(in Japanese). It was entered into the file history on December 24, 2013.
4 Yamada is a 7-page document that includes an English-language
translation of the abstract of JP 08-290296, as well as the original
publication (in Japanese). It was entered into the file history on December
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Application 12/905,480
Kasuya5
Suzuki '544 6
JP 2006-272405 A
CN 101559544 (A)
REJECTIONS
Oct. 12, 2006
Oct. 21, 2009
1. Claims 1--4, 7, 11, 13, 17, and 19 stand provisionally rejected
under the doctrine of obviousness-type double patenting as unpatentable
over claims 2----7 of U.S. Patent A .. pplication 12/417 ,849 and claims 1----6 of
U.S. Patent Application 13/772,599.7
2. Claims 1--4, 7, 11, 13, 1 7, and 19 stand rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter regarded as the invention.
3. Claims 1--4, 7, 11, 13, 1 7, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Suzuki '544, Inoue, and Saito.
4. Claims 1--4, 7, 11, 13, 1 7, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kotecki, Farwer, and Inoue.
24, 2013.
5 Kasuya is a 22-page document that includes an English-language
translation of the abstract of JP 2006-272405 A, as well as the original
publication (in Japanese). It was entered into the file history on December
24, 2013.
6 Suzuki '544 is a 31-page document that includes machine
translations of various sections of CN 101559544(A). It was entered into the
file history on November 30, 2015. When referencing specific pages of
Suzuki '544, we will assume that the pages were numbered 1 to 31. The
Examiner also appears to rely on portions of US 2009/0261085 (published
Oct. 22, 2009). See, e.g., Non-Final Act. 5. We will refer to the US
publication as "Suzuki '085."
7 The Examiner has withdrawn the aspects of the double patenting
rejection based on U.S. Patent Application 13/085,966. See Ans. 3.
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5. Claims 1--4, 7, 11, 13, 1 7, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kasuya, Wakamoto, and Yamada.
DISCUSSION
Rejection I -Double Patenting
The Examiner provisionally rejected claims 1--4, 7, 11, 13, 17, and 19
under the doctrine of obviousness-type double patenting over claims 2-7 of
then-pending U.S. Patent Application 12/417,849 (the "'849 application")
and claims 1---6 of then-pending U.S. Patent Application 13/772,599 (the
"'599 application"). See Non-Final Act. 4; Ans. 2. The Examiner stated,
"[ a ]lthough the claims at issue are not identical, they are not patentably
distinct from each other because the claims of the present application are
encompassed and obvious over the claims of the copending applications
including claim 3 of ... the copending applications." Non-Final Act. 4;
Ans. 2.
We first address the provisional rejection based on the '849
application. Appellant argues that because the Examiner's statement above
is the only discussion for this Rejection, "the Examiner has not addressed
[the] differences between the claims in the '849 application and the claims in
the present application on appeal, nor has the Examiner noted any
motivation or reasonable expectation of success in bridging these
differences." Appeal Br. 12-13.
We agree with Appellant that the Examiner has not adequately
explained the basis for the provisional rejection based on the '849
application. The Examiner does not adequately explain how the then-
pending claims of the '849 application render obvious claims 1--4, 7, 11, 13,
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17, and 19 now on appeal. See Non-Final Act. 4; Ans. 2-3. Any reliance by
the Examiner on the written description-rather than the claims----of the
'849 application is improper for a provisional double-patenting rejection.
See Ans. 19 ( citing "Suzuki translation page 6 for example" to respond to
arguments regarding this Rejection); see also Reply Br. 5---6 (arguing that "a
double patenting rejection must be based on the claims of the other patent or
application" (citing In re Bartfeld, 925 F.2d 1450, 1453 (Fed. Cir. 1991)).
Thus, we do not sustain the provisional rejection of claim 1, or the
rejection of claims 2--4, 7, 11, 13, 17, and 19 (which depend from claim 1)
based on the '849 application.
We tum now to the provisional rejection based on the '599
application. Subsequent to the issuance of the Non-Final Office Action now
on appeal, the claims of the '599 application were amended and have issued
as US 9,533,368 B2. See Amendment 2--4 (filed March 2, 2016);
Amendment 2--4 (filed August 26, 2016). We do not reach the provisional
rejection based on the '599 application because we have no analysis from
the Examiner as to whether the amended claims raise an obviousness-type
double patenting issue.
Rejection 2-Indefiniteness
A. Independent Claim 1
The Examiner rejected claim 1 as indefinite based on various claim
language. We address each issue in tum below.
First, the Examiner stated that ( 1) "the transition[ al] phrase 'consists
of [ at the beginning of clause d, as identified above] is an open ended [ sic -
closed] recitation" and (2) "[t]he term 'optionally' [in clauses d.4, d.5, d.6,
and d.8] and the phrases 'or any combination thereof [in clause d.8] and
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'inevitable impurities' [in clause d.9] leave the transitional term open rather
than closed." Non-Final Act. 5.
Appellant argues that the term "optionally" in the clauses at issue
"indicat[ es] that these components, as recited, each independently are
permitted but not required to be present within the closed composition of the
flux." Appeal Br. 15. According to Appellant, "[t]he person of ordinary
skill in the art would have no difficulty understanding the meaning of this."
Id. We agree with Appellant that the claim language identified by the
Examiner does not "contain[] words or phrases whose meaning is unclear."
In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard fromMPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
The phrase "consists of' at the beginning of clause d acts as a closed
transitional phrase with respect to clauses d. l through d.9, limiting the
material in the flux to those recited as well as any impurities ordinarily
associated with those materials. See Conoco, Inc. v. Energy & Envtl. Int 'l,
L.C., 460 F.3d 1349, 1360 (Fed. Cir. 2006) ("The Patent Board of Appeals
has interpreted 'consisting of' to 'close[] the claim to the inclusion of
materials other than those recited except for impurities ordinarily associated
therewith."' ( citing Ex parte Davis, 80 USPQ 448, 450 (Pat. Off. Bd. App.
1948)); Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793
F.2d 1279, 1282 (Fed. Cir. 1986) (construing the term "consisting of' in a
particular claim clause, rather than the preamble, as closing only that clause
rather than the entire claim).
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Application 12/905,480
We agree with Appellant's understanding of the meaning of the term
"optionally" in clauses d.4, d.5, d.6, d.8, and d.9: the flux may include the
materials in those clauses-in that the materials are listed under the closed
"consists of' phrasing-but the flux need not include those materials (i.e.,
each material in those clauses is optional). The phrase "or any combination
thereof' in clause d. 8 does not disturb this understanding or render the claim
unclear.
We tum now to the Examiner's statement that "[t]he number of
combinations and component concentrations are so large that the recited
closed flux components make the recitation open rather than closed and
indefinite." Non-Final Act. 5; see also Ans. 18 ("The claims are indefinite
and broad. There are a huge number of combinations of formulae."). As
noted by Appellant, "breadth is not to be equated with indefiniteness." In re
Miller, 441 F.2d 689,693 (CCPA 1971), quoted at Appeal Br. 16.
Second, the Examiner stated that "[t]he phrase 'inevitable impurities'
[in clause d.9] is unclear about the identity of the impurities." Non-Final
Act. 5. We disagree that the phrase "inevitable impurities" renders claim 1
unclear. Instead, we view that phrase as merely stating expressly an aspect
of the normal understanding of the phrase "consists of," as discussed above.
See Conoco, 460 F.3d at 1360.
Third, in the Answer, the Examiner states: "Claim 1 recites [']or
less['] [in clauses d.4, d.5, and d.6] which is zero. Appellant is arguing their
limited results for an alleged relationship." Ans. 21. To the extent this issue
is timely raised and part of the Rejection, we do not view "or less" as
rendering claim 1 unclear. All three clauses that recite "or less" begin with
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Application 12/905,480
"optionally." The range for these three materials spans from 0% by mass to
the value recited in each respective clause.
B. Dependent Claims 2 and 3
The Examiner rejected claims 2 and 3 as indefinite for various
reasons. We address each issue in tum below.
First, the Examiner stated that "claims 2 and 3 expand the
concentrations within the group under closed transitional phrase 'consisting
of' which makes the groups thereunder open." Non-Final Act. 5; see also
Ans. 18 (stating that "claims 2 and 3 broaden the independent recitations").
We agree with Appellant that claims 2 and 3 are not properly rejected
as indefinite on the basis stated by the Examiner in the Office Action. See
Appeal Br. 16. As to the identities of the materials recited, each of those
materials is recited in clause d: with the "carbon" of claims 2 and 3 in clause
d. l and "Ti 02, Zr02, and AbO/' of claim 3 in clause d. 7. Because those
materials are listed under the "consists of' phrasing in the beginning of
clause d, for the same reasons discussed in the context of the first argument
regarding claim 1 (see supra Rejection 2 § A), the "consists of' language
does not render claim 1 indefinite.
We tum now to the numerical ranges recited, and we first address
claim 3. We do not agree with the Examiner that "[ c ]laim 3 recites [a]
concentration broader than claim 1 from which it depends." Ans. 21. As an
initial matter, we note that the breadth of a dependent claim with respect to
its parent claim does not necessarily implicate 35 U.S.C. § 112, second
paragraph, but may implicate 35 U.S.C. § 112,fourth paragraph. Moreover,
even assuming the issue raised by the Examiner could demonstrate
indefiniteness, the range for the "ratio of a total mass of Ti 0 2, Zr02, and
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Ab03 to a mass of carbon" recited in clause 3----0.020-5.0--falls within the
range implicit by the endpoints recited in clauses d. l and d. 7. 8
As to claim 2, we agree with the Examiner that claim 2 broadens the
numerical range ( specifically the low end) recited in clause d. l, but we do
not agree that this renders claim 2 indefinite. We address this issue in the
new ground of rejection provided below.
Second, in the Answer, the Examiner states that "[c]laim 2 recites 'or
more' or an indefinite amount for graphite." Ans. 21.
To the extent this issue is timely raised and part of the Rejection, we
do not view "or more" as rendering claim 2 unclear. The high end of the
range recited in claim 2 is implicitly limited by the high end of the range
recited in clause d. l of claim 1.
C. Dependent Claim 4
In the Answer, the Examiner states "[c]laim 4 recites 'or less' or zero
for components and any combination thereof." Ans. 21-22.
To the extent this issue is timely raised and part of the Rejection, we
do not view "or less" as rendering claim 4 unclear. We understand the
implicit low end of the ranges for the mass percentages of these materials-
all listed as "optional[]" in clause d. 8-as zero. Moreover, for the same
reasons discussed above in the context of claim 1, the phrase "or any
combination thereof' does not render claim 4 unclear.
8 Implicit in claim 1 is a range on the ratio of total mass of Ti 02, Zr02,
and Ab03 to mass of carbon of0.02-10. The low end of0.02 is the
minimum mass percentage value recited in clause d. 7 (0.10) divided by the
maximum mass percentage value in clause d.l (5.00); the high end of 10 is
the maximum mass percentage value recited in clause d. 7 (1.20) divided by
the minimum mass percentage value in clause d. l ( 0 .12).
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D. Dependent Claim 19
In the Answer, the Examiner states "[c]laim 19['s] recitations of
properties add to th[ e] confusion. Just what combination of these affects
claim 19['s] recitations?" Ans. 22.
To the extent this issue is timely raised and part of the Rejection, we
do not view this issue as rendering claim 19 unclear.
New Ground of Re} ection
We enter a new ground of rejection: Dependent claim 2 is rejected
under 35 U.S.C. § 112, fourth paragraph, for failure to specify a further
limitation of the subject matter claimed. See Pfizer, Inc. v. Ranbaxy Labs.
Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006). Independent claim 1 recites,
in clause d. l, that "the flux consists of, based on total mass of the wire"
"carbon (C) in a content of from 0.12 to 5.00 percent by mass." Appeal Br. i
(Claims App.) ( emphasis added). Dependent claim 2, in tum, recites "[t]he
process according to Claim 1, wherein the carbon comprises graphite in a
content of 0.10 percent by mass or more based on the total mass of the
wire." Id. at ii (emphasis added).
We find that the language of claim 2 does not further limit the scope
of claim 1 because these claims-based on the language shown in emphasis
above-recite non-overlapping subject matter. See Pfizer, 457 F.3d at 1291
("In other words, claim 6 does not narrow the scope of claim 2; instead, the
two claims deal with non-overlapping subject matter.").
Appellant argues that "[t]he skilled artisan would understand that
graphite is a form of carbon and that these limitations are within the scope of
claim 1, not expanding from it." Appeal Br. 8. Regardless of whether
"graphite" is necessarily narrower than the "carbon" recited in claim 1, the
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lower portion of the mass percentage range recited in claim 2-"0.10
percent" up to O .12 percent-falls below the low end of the mass percentage
range recited in claim 1-"0.12 to 5.00 percent." Appeal Br. i-ii (Claims
App.). Because claim 2 recites certain subject matter that does not overlap
with the subject matter of its parent claim 1, claim 2 fails to satisfy
35 U.S.C. § 112, fourth paragraph. See Pfizer, 457 F.3d at 1291. Thus, we
reject claim 2 under 35 U.S.C. § 112, fourth paragraph.
Rejection 3 - Obviousness based
on Suzuki '544, Inoue, and Saito
Clause d. 7 in claim 1 requires that "the flux consists of, based on total
mass of the wire" "at least one selected from the group consisting of Ti 0 2,
Zr02, and Ab03 (Ti02+Zr02+Ab03) in a total content of from 0.10 to 1.20
percent by mass." Appeal Br. i-ii (Claims App.). For this Rejection, as to
clause d. 7, the Examiner stated: "Suzuki page 9 Al 1 % or less; Suzuki
teaches Al, Zr and Ti use apparently in the recited amounts in the tables;
Inoue teaches Al, Ti use in the recited amounts)." Non-Final Act. 6-7. In
the Answer, the Examiner revises the findings for this limitation, stating:
Suzuki page 1 of claims Al 1 % or less and page 1 claims 2,3,
total mass ... 0.03-5.00 mass%, of Ti and Zr; see page 6
translation lower portion for teaching of relationshipTi02 &
Zr02 and C concentration to prevent slag; Suzuki teaches Al,
Zr and Ti used in the recited amounts in the tables as well as in
page 1 of the claims in the translation; see also the PG Pub ;
Inoue teaches Al, Ti use in the recited amounts[.]
Ans. 5.
Appellant argues that although
Suzuki mentions the presence of aluminum or of some oxides,
among other compounds, at e.g. [0068] and [0078], Suzuki does
not specify the combined Ti02+Zr02+Ab03 content of from
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0.10 to 1.20 percent by mass, nor does it provide any teaching
on which the Examiner could rely to assert such content to be
inherent. Inoue and Saito fail in any way to cure this deficiency.
Appeal Br. 1 7.
The Examiner responds that "[t]he effect of C is taught in Suzuki on
pages 6, 10 relative to Ti02 and Zr02 that can form slag and C can prevent
this. The components are interrelated." Ans. 22. The Examiner also states
that "[t]he range of concentrations for components track those taught in the
reference. C is 0.16-2% and Ti, Zr can be 0.03-5.00%." Id.
We agree with Appellant that the record here does not support the
finding that the relied-upon prior art satisfies clause d. 7. As an initial
matter, it is unclear whether the Examiner's references to certain pages of
"Suzuki" refer to Suzuki '544 or Suzuki '085. Regardless, even assuming as
correct the various findings regarding aluminum, zirconium, and titanium,
the Examiner has not adequately explained the relevance of those alleged
teachings to the recited mass percentage of aluminum oxide, zirconium
oxide, and/ or titanium oxide in clause d. 7. See Reply Br. 10 ( arguing that
the Examiner failed to "examin[ e] the requirement for a combined content of
titanium, zirconium, and aluminum oxides").
We tum now to the Examiner's discussions of titanium oxide and
zirconium oxide. See Ans. 5 (stating that "page 6 translation lower portion
for teaching of relationship[]Ti02 & Zr02 and C concentration to prevent
slag"), 22 ( stating that "[ t ]he effect of C is taught in Suzuki on pages 6, 10
relative to Ti02 and Zr02 that can form slag and C can prevent this"). We
note that a page of Suzuki '544, which states "Page 6 of 14" at the top,
appears to disclose the presence of "Titanium oxide" and "zirconium oxide."
Suzuki '544 at 7; see also supra n.6 (discussing page numbering for Suzuki
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'544). The Examiner has not adequately explained, however, how the
identified discussion expressly or inherently discloses the specific mass
percentage recited in clause d. 7.
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 2--4, 7, 11, 13, 17, and 19, which depend from claim 1, as
unpatentable over Suzuki '544, Inoue, and Saito.
Rejection 4 - Obviousness based on
Kotecki, F arwer, and Inoue
Clause a in claim 1 recites: "hardfacing MIG-arc welding with a flux-
cored wire and with a pure argon gas as a shielding gas, thereby obtaining a
weld metal having a Vickers hardness of 200 or more." Appeal Br. i
(Claims App.) ( emphasis added). For this Rejection, as to the limitation
shown with emphasis ( which we will refer to as the "hardness limitation"),
the Examiner appears to rely on paragraphs 2, 6, 12, and 13 of Kotecki. See
Non-Final Act. 10 (reciting clause a in paragraph 38 and citing Kotecki in
paragraph 43).
Appellant argues that Kotecki does not disclose the hardness
limitation and "fails to ever mention Vickers hardness." Appeal Br. 26. The
Examiner does not address this argument in the Answer. See Ans. 26-27
(addressing pages 26-35 of the Appeal Brief); see also Reply Br. 14 (stating
that "the Examiner has merely provided a general statement bridging pages
26-27 of the Examiner's Answer, which fails to so much as mention
Kotecki, Farwer, or Inoue").
The Examiner has not adequately explained ( and it is unclear from our
review) how the relied-upon paragraphs from Kotecki satisfy the hardness
limitation. Moreover, the Examiner's statement that "[ t ]he [ claimed]
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hardness ... [is] conventional in the art, not critical or producing any new or
unexpected results and optimization" (Non-Final Act. 11) does not
adequately explain the basis relied on regarding the hardness limitation.
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 2--4, 7, 11, 13, 17, and 19, which depend from claim 1, as
unpatentable over Kotecki, Farwer, and Inoue.
Rejection 5 - Obviousness based on
Kasuya, Wakamoto, and Yamada
For this Rejection, as to the hardness limitation, the Examiner stated:
(1) that "Kasuya does not appear to teach a hardness value" (Non-Final Act.
15) and (2) that "[t]he hardness ... [is] not critical[, does not] produce any
new or unexpected results and [is] optimization" (id. at 16).
Appellant argues that, for this Rejection, the Examiner has "ignored
the hardness limitation" and that "[ t ]he Examiner cannot properly disregard
th[ at] limitation in determining patentability over the references, nor can the
Examiner base the rejection on a merely conclusory statement with regard to
th[at] limitation." Appeal Br. 32.
The Examiner does not address this argument in the Answer. See
Ans. 26-27 (addressing pages 26-35 of the Appeal Brief); see also Reply
Br. 17 (stating that "the Examiner has merely provided a general statement
bridging pages 26-27 of the Examiner's Answer, which fails to so much as
mention Wakamoto and only briefly notes nonsubstantive issues regarding
translations for Kasuya and Yamada.").
The Examiner's second statement as identified above does not
adequately explain the basis relied on regarding the hardness limitation.
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As an additional, independent basis for reversal as to this Rejection,
we tum now to the reasoning statements provided. In this Rejection, the
Examiner determined that:
[i]t would have been obvious at the time of the invention
to one [ ofJ ordinary skill in the art to modify Kasuya with MIG
arc welding with pure Ar as taught by W akamoto in order to
perform the pulse MIG welding that the welding bead having a
narrow bead width and deep penetration is obtainable.
Non-Final Act. 15 (citing Wakamoto, abstract). This reasoning statement is
the same one provided in a rejection in the related application identified by
Appellant (see supra n.2), which relied on the same three references:
Kasuya, Wakamoto, and Yamada. Compare Non-Final Act. 15 (i-f 72), with
Final Office Act. 5 (dated Oct. 12, 2012) in Application 12/417,849.
In the related case, appellants argued that certain teachings in Kasuya
demonstrated that the reasoning statement discussed above lacked rational
underpinnings. See Ex parte Suzuki, Appeal No. 2014-000883, slip op. at 4
(PTAB June 28, 2016). We agreed and reversed. See id. at 4--5. For the
same reasons discussed in the decision in the related case, we determine that
the Examiner has not provided sufficient reasoning with rational
underpinning to support the conclusion of obviousness of claim 1.
For the reasons provided above, we do not sustain the rejection of
claim 1, or the rejection of claims 2--4, 7, 11, 13, 17, and 19, which depend
from claim 1, as unpatentable over Kasuya, Wakamoto, and Yamada.
DECISION
We reverse the decision to provisionally reject claims 1--4, 7, 11, 13,
17, and 19 under the doctrine of obviousness-type double patenting based on
the '849 application; we do not reach the decision to provisionally reject
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Appeal2016-003148
Application 12/905,480
claims 1--4, 7, 11, 13, 17, and 19 under the doctrine of obviousness-type
double patenting based on the '599 application; we reverse the decision to
reject claims 1--4, 7, 11, 13, 17, and 19 under 35 U.S.C. § 112, second
paragraph; we reverse the decision to reject claims 1--4, 7, 11, 13, 17, and 19
under 35 U.S.C. § 103(a) as unpatentable over Suzuki '544, Inoue, and
Saito; we reverse the decision to reject claims 1--4, 7, 11, 13, 17, and 19
under 35 U.S.C. § 103(a) as unpatentable over Kotecki, Farwer, and Inoue;
and we reverse the decision to reject claims 1--4, 7, 11, 13, 17, and 19 under
35 U.S.C. § 103(a) as unpatentable over Kasuya, Wakamoto, and Yamada.
We enter a new ground of rejection for claim 2 under 35 U.S.C. § 112,
fourth paragraph, for failure to specify a further limitation of the subject
matter claimed.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.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
Evidence not previously of Record is made which, in the
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Application 12/905,480
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).
REVERSED; 37 C.F.R. § 4I.50(b)
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