SANDVIK INTELLECTUAL PROPERTY AB

Patent Trials and Appeals Board

Apr 3, 2020

14647812 - (D) (P.T.A.B. Apr. 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.
14/647,812 05/27/2015 Anders WALLERO 1485.0640C 8582
13866 7590 04/03/2020
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Boulevard
Suite 750
Gaithersburg, MD 20878
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
04/03/2020 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDERS WALLERO, LARS ORRBERG, JOHAN LOTHMAN,
MIKAEL JOHANSSON, and SVEN-AKE FAGER
____________

Appeal 2019-004064
Application 14/647,812
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1 and 3–5.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies ESAB Sweden AB as the real party in
interest. Appeal Brief filed February 6, 2019 (“Appeal Br.”) at 3.
2 Final Office Action entered September 6, 2018 (“Final Act.”).
Appeal 2019-004064
Application 14/647,812

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CLAIMED SUBJECT MATTER
Appellant claims an austenitic-ferritic stainless steel welding material
for producing a weld metal. Appeal Br. 5. Claim 1 illustrates the subject
matter on appeal, and is reproduced below with contested subject matter
italicized:
1. An austenitic-ferritic stainless steel welding material for
producing a weld metal, containing in weight%:
C: no greater than 0.02
Si: no greater than 0.45
Mn: 1.60–1.90
P: no greater than 0.03
S: no greater than 0.03
Cr: 18.5–21.5
Ni: 8.5–10.5
Mo: no greater than 0.75
Co: no greater than 0.2
Cu: no greater than 0.75
N: 0.12–0.3
the balance being Fe and incidental impurities,
wherein Mo is present in the austenitic-ferritic
stainless steel welding material, and
the austenitic-ferritic stainless steel welding material
has a structure of 5–15 vol% ferrite and remainder austenite.

Appeal Br. 12 (Claims Appendix) (emphasis and spacing added).
REJECTION
The Examiner maintains the rejection of claims 1 and 3–5 under
35 U.S.C. § 103(a) as unpatentable over Kimura et al. (JP 59159295 A,
published September 8, 1984)3 in view of Hirasawa et al. (US 2003/0188813
Al, published October 9, 2003) in the Examiner’s Answer entered March 1,

3 In this decision, we refer to the copy of Kimura entered into the record by
the Examiner with a Form PTO 892 on May 19, 2017.
Appeal 2019-004064
Application 14/647,812

3
2019 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1 and 3–5 under 35 U.S.C. § 103(a), for reasons set forth in the
Appeal Brief and below.
Claim 1 requires the recited austenitic-ferritic stainless steel welding
material to have a structure with 5 to 15 volume percent ferrite, with the
remainder austenite.
The Examiner finds that example B of Kimura discloses austenitic
stainless steel having a ferrite volume percent of 6.54. Final Act. 2.
Appellant argues that contrary to the Examiner’s finding, although Kimura
does disclose austenitic stainless steel, Kimura does not disclose austenitic
stainless steel having a ferrite content in the range of 5 to 15 volume percent
as required by claim 1. Appeal Br. 7–8. The Examiner responds to
Appellant’s argument in the Answer by again referring to example B of
Kimura, and asserting that example B discloses 6.84 volume percent ferrite.
Ans. 5.
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that Kimura discloses stainless steel
having a structure with 5 to 15 volume percent ferrite, as required by
claim 1.
We note initially that Appellant submitted a copy of Kimura with an
Information Disclosure Statement filed March 27, 2015, which includes an
English abstract, and the remainder of the reference is in Japanese. The
Examiner also entered a copy of Kimura into the record with a Form PTO
Appeal 2019-004064
Application 14/647,812

4
892 on May 19, 2017, which also includes an English abstract. The English
abstract in the copy of Kimura entered by the Examiner, however, differs
from the English abstract in the copy of Kimura filed by Appellant, although
the remainder of the reference entered by the Examiner is in Japanese and
appears to be identical to the Japanese portion of the copy of Kimura
Appellant filed. A full English translation of Kimura, therefore, does not
appear to have been entered into the record, and the only portion of the
reference on record that is in English is the abstract. As indicated above, in
this decision we refer to the copy of Kimura entered by the Examiner.
The Abstract of Kimura discloses an austenitic stainless steel having a
composition comprising “C up to 0.06%, Si up to 1.0%, Mn up to 2.0%,
16.0–25.0% Cr, 6.0–20.0% Ni, 0.08–0.15% N and balance Fe and inevitable
impurities.” Example B of Kimura is included in the Japanese portion of the
reference, and is set forth in a table along with numerous other examples (A
and C–T), which appear to describe the compositions of particular austenitic
stainless steel materials. Kimura p. 501. The header for the last column of
the table is in Japanese, and the entry in the last column for example B is
“6.84.” Id. Because the Examiner asserts in the Answer that example B of
Kimura discloses 6.84 volume percent ferrite, the Examiner appears to be
referring to the entry in the last column of the table. Ans. 5. The Examiner,
however, does not point to any disclosure in Kimura, or provide any other
evidence, indicating that the last entry in the table refers to the volume
percentage of ferrite in austenitic stainless steel composition B.
Although the Abstract of Kimura discloses that “[t]he vol. ratio of
delta-ferrite measured by a ferrite scope of AWS A 4.2–74A6.3 is above
4.0,” the Examiner does not cite to this teaching in Kimura, and, therefore,
Appeal 2019-004064
Application 14/647,812

5
does not establish that this constitutes disclosure of a volume percentage
ferrite as recited in claim 1. In addition, we note that, as discussed above,
the English Abstract of the copy of Kimura filed by Appellant differs from
the English Abstract of the copy of Kimura entered by the Examiner. The
Abstract of the copy of Kimura filed by Appellant states that “the void
percentage of delta ferrite measured with a ferrite scope is made >=4%
according to the yield of the build-up deposited metal determined by
welding conditions in the stage of submerged arc welding or electroslag
welding using a belt-like electrode.” Again, however, the Examiner does
not cite this disclosure.
Thus, on the record before us, the Examiner does not provide a
sufficient factual basis to establish that Kimura discloses or would have
suggested an austenitic-ferritic stainless steel having a structure with 5 to 15
volume percent ferrite and the remainder austenite, as required by claim 1.
Because the Examiner does not rely on Hirasawa for any disclosure
that cures this deficiency in the Examiner’s reliance on Kimura, we do not
sustain the Examiner’s rejection of claim 1, and claims 3–5, which each
depend from claim 1, under 35 U.S.C. § 103(a) as unpatentable over Kimura
and Hirasawa.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5 103(a)  Kimura,
Hirasawa
1, 3–5

REVERSED