KABUSHIKI KAISHA KOBE SEIKO SHO (KOBE STEEL, LTD.)

Patent Trials and Appeals Board

Sep 3, 2020

2019005750 (P.T.A.B. Sep. 3, 2020)

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.
14/763,651 07/27/2015 Tsuyoshi MATSUMOTO 456681US99PCT 7559
22850 7590 09/03/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TSUYOSHI MATSUMOTO and KAZUMASA KAITOKU
____________

Appeal 2019-005750
Application 14/763,651
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 8, 9, 11, 16, and 17. We have jurisdiction under 35
U.S.C. § 6(b).2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Kobe Steel, Ltd. as the Applicant and
real party in interest. Appeal Br. 2.
2 This case came before the Board for regularly scheduled telephonic oral
hearing on August 18, 2020.
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THE INVENTION
Appellant’s invention relates to welding. Spec. ¶ 1. Claim 8,
reproduced below with paragraph indentation added, is illustrative of the
subject matter on appeal.
8. A method for producing a material welded structure
comprising an aluminum material or an aluminum alloy
material and a steel material, the method comprising:
applying a flux so that an applied amount of the flux to at
least one of the aluminum material or the aluminum alloy
material and the steel material is 0.5 mg/cm3 to 10 mg/cm3;
forming a joint part with the aluminum material or the
aluminum alloy material and the steel material; and
laser welding the aluminum material or the aluminum alloy
material and the steel material, while feeding a flux cored wire
to the joint part, the flux cored wire comprising a sheath and a
flux, wherein
the sheath comprises an aluminum alloy comprising at
least 1.0% by mass to 3.0% by mass of Si and 0.05% by
mass to 0.25% by mass of Ti with a remainder being
aluminum and inevitable impurities, and
the flux comprises 20% by mass to 60% by mass of
cesium fluoride with the remainder substantially made of
potassium aluminum fluoride-based flux.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Tanaka US 5,906,897 May 25, 1999
Keegan US 2003/0098296 Al May 29, 2003
Katoh US 2009/0017328 Al Jan. 15, 2009
Matsumoto US 2012/0125900 Al May 24, 2012
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The following rejections are before us for review:
1. Claims 8, 11, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Matsumoto, Keegan, and Tanaka.3
2. Claims 9 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Katoh, Keegan, and Tanaka.
OPINION
Unpatentability of Claims 8, 11, and 17
over Matsumoto, Keegan, and Tanaka
Appellant argues claims 8, 11, and 17 as a group. Appeal Br. 8–16.
We select claim 8 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Matsumoto discloses the invention
substantially as claimed except for the specific material composition of the
sheath of the flux core weld wire, for which the Examiner relies on Keegan
and Tanaka. Final Act. 2–3. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to modify Matsumoto’s aluminum alloy sheath with the claimed
aluminum alloy. Id. at 3. According to the Examiner, a person of ordinary
skill in the art would have done this to provide a high quality weld. Id.
Appellant first argues that Keegan deals with welding aluminum, not
welding dissimilar materials such as aluminum and steel and, thus, is not
“germane” to modifying Matsumoto. Appeal Br. 8. Appellant argues that
the Examiner relies on a faulty underlying rationale that all flux
compositions are interchangeable without regard to the substrate being

3 Matsumoto is the United States published patent application that is the U.S.
equivalent to Matsumoto (JP 2011-045926 A1, pub. Mar. 10, 2011).
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welded. Id. at 9. Appellant further argues that Tanaka deals with brazing,
not welding, which constitutes non-analogous art. Id. 12.
In response, the Examiner notes that Appellant’s arguments regarding
Keegan are directed to the composition of the flux material whereas the
Examiner relies on Keegan for the composition of the sheath material.
Ans. 6–7.
In reply, Appellant repeats the argument that Keegan uses a flux
material for welding aluminum-to-aluminum. Reply Br. 2. Appellant also
argues that brazing, as taught by Tanaka, is “very” different from welding.
Id. at 3.
Matsumoto discloses a flux-cored wire for welding different materials
such as welding aluminum to steel. Matsumoto Abstract. Thus, it is known
in the prior art to weld aluminum to steel. Matsumoto also discloses that it
was known in the prior art to weld aluminum to steel using a flux-cored wire
where the composition of the flux material contains cesium fluoride in the
range of 20 – 60 % by mass together with what Matsumoto refers to as
“potassium aluminum fluoride-based compounds.” Id. ¶¶ 33–35.
Matsumoto also shows that it was known, in the prior art, to use a flux-cored
weld wire with a sheath that is comprised of an aluminum alloy that included
a concentration of silicon that falls within the claimed range. Id.4
The issue in the case, therefore, revolves around the constituent
elements of the particular aluminum alloy used in the sheath and the relative
concentrations thereof and, more particularly, whether it would have been

4 There is an overlap in inventorship between Matsumoto and the
Application on Appeal. Tsuyoshi Matsumoto is a named co-inventor of the
Matsumoto prior art reference and is also a named co-inventor of the
Application on Appeal.
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obvious to add from 0.05 to 0.25 % titanium to the known aluminum alloy
of Matsumoto, which already contains an amount of silicon that falls within
the claimed range. The relative concentrations, by mass, of the constituent
elements of Matsumoto’s sheath, Keegan’s sheath, Tanaka’s sheath, and the
sheath of claim 8 are summarized in the following table:
Element Claim 8 Matsumoto Keegan Tanaka
Si 1.0 – 3.0 % 0.8 – 1.9 % 0 – 15 % 0.05 – 14 %
Ti .05 – .25 % 0 – 10 % 0.05 – 1.5 %
Mn ≤ 0.1 % 0 – 1.5 %
Mg ≤ 0.1 % 0 – 5.5 %
Fe ≤ 0.1 %
Claims App.; Matsumoto Abstract; Keegan ¶¶ 16–17; Tanaka, col. 10, l. 65,
col. 12, l. 3.
Thus, Keegan discloses an aluminum metal-core weld wire that
features an aluminum alloy sheath with concentrations of silicon and
titanium that fall within the claimed range. Claims App., Keegan ¶¶ 16–17.
Appellant’s argument that Keegan should be understood as restricted to
welding aluminum-to-aluminum appears, in large part, to be predicated on
the unfounded assumption that the rejection uses Keegan’s flux core
composition in addition to Keegan’s alloy sheath. See Appeal Br. 9.
However, Matsumoto already teaches the claimed flux-core composition.
Matsumoto, Abstract. Appellant provides no persuasive technical discussion
regarding a flux-core weld wire that combines: (1) Keegan’s sheath; with
(2) Matsumoto’s flux-core. See generally Appeal Br. In particular,
Appellant fails to address, much less address persuasively, why a person of
ordinary skill in the art would not have had a reasonable expectation of
success in combining the prior art in the manner proposed by the rejection.
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The obviousness inquiry requires a determination whether a skilled
artisan would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and whether the skilled artisan
would have had a reasonable expectation of success in doing so. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed.
Cir. 2012). “The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). In other words, “one must have
a motivation to combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue.” Id. “For obviousness
under § 103, all that is required is a reasonable expectation of success.” In
re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988); see also Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (“the expectation of
success need only be reasonable, not absolute”).
Here, Keegan teaches a sheath that is known to be effective in
welding aluminum-to-aluminum. Matsumoto, in turn, teaches a flux core
composition that may be used to weld aluminum-to-steel. Given that the
number of aluminum alloy compositions disclosed in the art of record is a
finite number of compositions, it is reasonable that a person of ordinary skill
in the art would have been motivated to at least try Keegan’s alloy. Even if
we augment the universe of aluminum alloy compositions by those that
appear in weld-wire industrial catalogs and published commercial standards
such as ASTM, we would still be talking about a finite number of sheath
alloy compositions. This prospect implicates the “obvious to try”
considerations discussed in KSR. See KSR, 550 U.S. at 420 (explaining that
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trying a finite number of identified, predictable solutions might show that
success is likely the product of mere ordinary skill and common sense).
Given that the law merely requires that the expectation of success to be
reasonable, not absolute, Appellant presents neither evidence nor persuasive
technical reasoning as to why a person of ordinary skill in the art would not
have had a reasonable expectation of success that Keegan’s sheath could
have been successfully used with Matsumoto’s flux core in welding
dissimilar materials.
Although the foregoing discussion regarding Keegan arguably
obviates the need for reliance on the Tanaka reference, we will discuss
Tanaka in the interest of being thorough. Appellant argues that Tanaka
teaches a method for joining dissimilar materials by brazing, not welding.
Appeal Br. 12. Appellant argues that brazing is “very” different from
welding. Id. Appellant argues that Tanaka is non-analogous art with respect
to the claimed invention. Id.
In response, the Examiner points out that Tanaka uses an aluminum
alloy sheath comprising 1-3 % silicon and 0.5-0.25 % titanium by mass.
Ans. 7. The Examiner further points out that Tanaka is used with flux
material. Id. The Examiner further points out that Tanaka teaches the
joining of dissimilar materials. Id.
In reply, Appellant repeats the argument that Tanaka is focused on
brazing which allegedly is “very” different from welding. Reply Br. 3.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate
tests define the scope of analogous art: (1) whether the art is from the same
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field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The “field of endeavor” test asks if the structure and function of the prior art
is such that it would be considered by a person of ordinary skill in the art
because of similarity to the structure and function of the claimed invention
as disclosed in the application.” Id. at 1325–26.
Appellant argues, in essence, that “welding” and “brazing” are two
separate fields of endeavor. Appellant’s briefing on this issue is cursory,
abbreviated and conclusory. See e.g., Appeal Br. 12–13. Appellant argues
that “diffusion joining methods do not use flux,” but stops short of actually
characterizing diffusion joining and brazing as identical. Id. at 12. Thus,
Appellant’s “diffusion joining” argument is tangential, at best, to the case
before us. The Examiner’s finding that Tanaka teaches brazing using flux is
supported by the record before us.
We are not persuaded that Tanaka constitutes non-analogous art to
Appellant’s invention. It is well-known that welding and brazing are both
techniques to join pieces of metal together using heat. Both techniques can
use a filler material and such filler material can take the form of a flux core
wire. In particular, Tanaka explicitly discloses using flux in a brazing
process. Tanaka col. 10, ll. 10–18. Welding takes place at a temperature
that melts the base material causing fusion. Brazing takes place at a
temperature that is sufficiently hot to melt the filler material so that it flows
into the joint, but does not melt the base material. Thus, welding and
brazing are both properly considered to be in the same field of endeavor,
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namely, metal working and, more particularly metal joining using heat.
Bigio, 381 F.3d at 1325–26. We expect that an artisan skilled in metal
working would be familiar with the metal joining techniques of both welding
and brazing. We also expect that the skilled artisan would be familiar with
both similarities and differences between the two techniques and would be
similarly familiar with what types of filler materials are used and whether
use of such materials carry over from one technique to another. We discern
no error in the Examiner’s reliance on Tanaka as analogous art.
The sum and substance of Appellant’s argument is that welding and
brazing are “very” different. Appeal Br. 12, Reply Br. 3. The obviousness
analysis contemplates that there will be differences between the prior art and
the claimed invention. See 35 U.S.C. § 103. Appellant provides no
evidence that the group of filler materials used in brazing is mutually
exclusive to the group of filler materials used in welding. Appellant
provides no evidence, persuasive technical reasoning, or other context by
which we can meaningfully distinguish between the prior art being different
and being “very” different. In the absence of evidentiary substantiation for
this position, we view Appellant’s use of the word “very” as meaningless
hyperbole that is entitled to no weight. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value).
Appellant next raises an argument based on recitation of specific
examples of the invention in Appellant’s Specification. Appeal Br. 13–16.
As we understand the argument, Appellant is asserting that the elements
recited in the claim, when combined, result in an overall improvement in
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welding technology. Id. at 16. Appellant argues that “unexpected
properties” can make an initially obvious composition unobvious. Id.
Appellant finishes off the argument by asserting that — “the evidence in the
specification should be considered an unexpected result rebutting the alleged
prima facie rejections.” Id.
In response, the Examiner explains, in essence, that Appellant’s
results are expected when viewed through the lens of the prior art. Ans. 7–8.
In reply, Appellant embellishes its earlier argument concerning unexpected
results.
The Examiner continues to misapprehend the evidentiary effect
of unexpected results. In his understanding, if he believes that
he has made a prima facie case, no results provided by the
invention could possibly be unexpected because they “would
have predictably yielded the high joint strength or quality” . . .
In essence, the Examiner fails to understand the role of rebuttal
evidence.
Reply Br. 4.
The record before us does not support Appellant’s “unexpected
results” arguments. Appellant’s examples merely show that the invention
works. At best, they may even show improvement over the prior art.
However, that is not evidence that the results are “unexpected” or that the
alleged improvement is patentable.
[E]ven though applicant’s modification results in great
improvement and utility over the prior art, it may still not be
patentable if the modification was within the capabilities of one
skilled in the art, unless the claimed ranges “produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art.”
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
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Here, there is no evidence that Appellant’s reported results are
different in kind and not merely in degree from the results of the prior art.
Id. The prior art shows that aluminum alloy sheaths can be used in welding
dissimilar materials and that the claimed sheath composition is known to be
effective in welding aluminum and in brazing dissimilar materials. The
Examiner finds that using the claimed sheath composition of Keegan and
Tanaka would “predictably” yield a high quality weld joint. Final Act. 3.
Appellant’s only rejoinder to the Examiner’s position is attorney argument.
Appellant presents neither evidence nor persuasive technical reasoning that
arranging the elements in the manner claimed requires more than ordinary
skill or produces unexpected results. “It is well settled that unexpected
results must be established by factual evidence. Mere argument or
conclusory statements in the specification does not suffice.” In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Wood, 582 F.2d
638, 642 (CCPA 1978) (explaining that lawyer’s arguments and conclusory
statements in the specification, unsupported by objective evidence, are
insufficient to establish unexpected results).
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded. We
sustain the Examiner’s unpatentability rejection of claims 8, 11, and 17.
Unpatentability of Claims 9 and 16
over Katoh, Keegan, and Tanaka
Claims 9 and 16 are independent claims. Claims App. Appellant
argues claims 9 and 16 under the same heading and subheadings used in
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arguing against the ground of rejection over Matsumoto above. See
generally Appeal Br.
The Examiner finds that Katoh discloses the invention substantially as
claimed except for the specific material composition of the sheath of the
weld wire, for which the Examiner, once again, relies on Keegan and
Tanaka. Final Act. 2–3.
Appellant first argues that Katoh, instead of supporting the
Examiner’s position, actually illustrates that the technology of welding
dissimilar materials is quite challenging. Appeal Br. 10–11 (citing Katoh
¶ 41). “Katoh teaches that to bond dissimilar materials, for instance steel
and aluminum, there are considerable difficulties and challenges despite a
considerable amount of effort and disclosure.” Reply Br. 2. This argument
is not persuasive because the passage of Katoh relied on by Appellant relates
to the composition of the flux, not the shield, of the weld wire. As
previously discussed in the Matsumoto ground of rejection, the claimed flux
material for welding dissimilar materials is known in the prior art. Katoh
merely provides a teaching redundant to what is already acknowledged by
Matsumoto.
Apart from the foregoing, Appellant relies on the same arguments
regarding combining Katoh with Keegan and Tanaka that we previously
considered and found unpersuasive in connection with the Matsumoto
ground of rejection and find equally unpersuasive here. The findings and
conclusions concerning composition of the weld wire shield that are set forth
above under the Matsumoto ground of rejection apply with equal force to the
instant ground of rejection under Katoh.
We sustain the rejection of claims 9 and 16.
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CONCLUSION
In summary:
Claims
Rejected
§ References Affirmed Reversed
8, 11, 17 103 Matsumoto, Keegan, Tanaka 8, 11, 17
9, 16 103 Katoh, Keegan, Tanaka 9, 16
Overall
Outcome
8, 9, 11,
16, 17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED