DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/03/2025 was filed after the mailing date of the Non-Final Office Action on 07/08/2025. The submission is in compliance with the provisions of 37 CFR 1.97 (fee was paid). Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment and Status of Claims
Applicant's amendment, filed 10/03/2025, has been entered. Claims 1, 2, 5, 6, 11-13, and 16-21 are amended, no claims are cancelled, and no claims are added. Accordingly, claims 1-23 are pending and considered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-9 and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Landis et al. (U.S. 3,691,340) in further view of Schaeffer et al. (U.S. 2009/0314756).
Regarding claim 1, Landis et al. (hereinafter “Landis”) teaches a welding electrode (see claim 6, Figure 1, Col. 7 lines 44-47) comprising:
an electrode core that is a solid steel wire (meeting claimed ‘solid core wire having an iron (Fe)-based base metal composition’; Col. 5 lines 30-31 and Col. 5 line 42),
a first coating formed on the solid core wire including metals such as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6; meeting claimed ‘electrically conductive coating formed on the solid core wire and including one or more electrically conducting elements or compounds in addition to or other than Cu),
and a second and outer coating consisting of a metal selected from a group of metals including antimony, magnesium, zinc, nickel, silver, tin, lead, copper, cadmium, or manganese (claim 6, 12 in Figure 1; meeting claimed ‘additional functional coating formed on the electrically conductive coating, wherein the additional functional coating includes one or more additional elements”).
However, Landis does not teach that the second and outer coating comprises one or more additional materials selected from the group consisting of graphite, a metal sulfide, polytetrafluorethylene, graphene, and graphene oxide.
Schaeffer et al. (hereinafter “Schaeffer”) teaches a welding wire and, at Paragraph 0006, expressly teaches that it is common practice in the industry to coat the welding wire with a solid lubricant such as graphite, molybdenum disulfide, etc. for reducing the coefficient of friction.
In the instant case, it would be prima facie obvious to include a solid lubricant material such as molybdenum disulfide (meeting claimed ‘metal sulfide’) to the second and outer coating of Landis so as to achieve sufficient lubrication for reducing the coefficient of friction because it is a common practice within the industry to use such materials as coatings for welding wires.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” (MPEP 2141.I. and KSR decision).
Regarding claims 2-4, Landis and Schaeffer teach the welding electrode as applied to claim 1 above and Schaeffer expressly teaches that it is common practice within the industry to coat welding wire with a solid lubricant such as molybdenum sulfide (i.e., a metal sulfide). Additionally, molybdenum sulfide necessarily has a layered structure and so the feature of dependent claim 4 is met by the nature of molybdenum sulfide itself.
Regarding claim 5, Landis and Schaeffer teach the electrode as applied to claim 1 above but are silent to the feature requiring “one or more additional elements or compounds are adapted to reduce friction between the welding electrode and a wire liner”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
As Landis and Schaeffer teach an electrode satisfying claims 1 and 7, there is a reasonable basis to conclude that the additional elements would be suitable or capable or adapting to reduce friction between the welding electrode and a wire liner, if subject to such conditions.
Further, it has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), that determination’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Regarding claim 6, Landis and Schaeffer teach the electrode as applied to claim 4 above but are silent to the feature requiring “one or more additional elements or compounds are adapted to reduce friction and are present in an amount and form such that a wire feed force for feeding the welding electrode through a wire liner is lower by 50% or more relative to a wire feed force for feeding a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
As Landis and Schaeffer teach an electrode satisfying claims 1 and 7, there is a reasonable basis to conclude that the additional elements would be suitable or capable or adapting to reduce friction between the welding electrode and a wire liner, if subject to such conditions, and further, achieving the wire feed force lowering of 50% or more when compared to a reference electrode not possessing the additional functional coating.
Further, it has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), that determination’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Notably, this claim does not expressly specify a further structural feature of the electrode but rather an intended use/result of the electrode in unspecified conditions. In other words, this is functional language directed to what the electrode can do. MPEP 2173.05(g) addresses functional limitations.
Regarding claim 7, Landis and Schaeffer teach the electrode as applied to claim 1 above and Landis further teaches that a first coating formed on the solid core wire includes metals such as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6; meeting claimed ‘electrically conductive coating formed on the solid core wire and including one or more electrically conducting elements or compounds in addition to or other than Cu).
Regarding claim 8, Landis and Schaeffer teach the electrode as applied to claim 7 above and Landis further teaches a first coating formed on the solid core wire including metals such as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6). The selection of an element from Landis’ disclosure that is not Cu is prima facie obvious.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Regarding claim 9, Landis and Schaeffer teach the electrode as applied to claim 7 above and Landis further teaches a first coating formed on the solid core wire including metals such as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6; meeting claimed ‘electrically conductive coating formed on the solid core wire and including one or more electrically conducting elements or compounds in addition to or other than Cu).
Landis does not teach the particular percentages of the first coating components such that one or more electrically conducting elements or compounds are present in addition to Cu in an amount exceeding 90 atomic% of a combined sum of the one or more electrically conducting elements or compounds and Cu.
However, it has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In the instant case, the person of ordinary skill could readily determine the appropriate amounts/proportions of the listed Landis elements for the first coating such that more than 90% of those elements are included in the first coating.
Regarding claims 16 and 17, Landis teaches a welding electrode (see claim 6, Figure 1, Col. 7 lines 44-47) comprising:
an electrode core that is a solid steel wire (meeting claimed ‘solid core wire having an iron (Fe)-based base metal composition’; Col. 5 lines 30-31 and Col. 5 line 42),
a first coating formed on the solid core wire including metals such as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6; meeting claimed ‘electrically conductive coating formed on the solid core wire and including one or more electrically conducting elements or compounds in addition to or other than Cu),
and a second and outer coating consisting of a metal selected from a group of metals including antimony, magnesium, zinc, nickel, silver, tin, lead, copper, cadmium, or manganese (claim 6, 12 in Figure 1; meeting claimed ‘additional functional coating formed on the electrically conductive coating, wherein the additional functional coating includes one or more additional elements”).
However, Landis does not teach that the second and outer coating comprises one or more additional materials selected from the group consisting of titanium, zirconium, boron, molybdenum, and niobium.
Schaeffer et al. (hereinafter “Schaeffer”) teaches a welding wire and, at Paragraph 0006, expressly teaches that it is common practice in the industry to coat the welding wire with a solid lubricant such as graphite, molybdenum disulfide, etc. for reducing the coefficient of friction.
In the instant case, it would be prima facie obvious to include a solid lubricant material such as molybdenum disulfide (meeting claimed ‘metal sulfide’) to the second and outer coating of Landis so as to achieve sufficient lubrication for reducing the coefficient of friction because it is a common practice within the industry to use such materials as coatings for welding wires.
The selection of known solid lubricant molybdenum sulfide would meet the limitation requiring the additional functional coating to include Mo as an additional element from the claimed Markush group (also meeting dependent claim 17).
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” (MPEP 2141.I. and KSR decision).
Regarding claim 18, Landis and Schaeffer teach the electrode as applied to claim 16 above but are silent to the feature requiring “the one or more additional elements or compounds” to be “adapted to modify the microstructure of a weld metal formed from the welding electrode such that the impact toughness of the weld metal is higher than an impact toughness of a weld metal formed from a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Thus, the modified electrode of Landis and Schaeffer meeting the claimed composition would be prima facie expected to be “adapted to modify the microstructure of a weld metal formed from the welding electrode such that the impact toughness of the weld metal is higher than an impact toughness of a weld metal formed from a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, it has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Regarding claim 19, Landis and Schaeffer teach the electrode as applied to claim 18 above but are silent to the feature requiring “the one or more additional elements or compounds” to be “present in an amount and form such that the impact toughness of the weld metal is higher by 50% or more relative to the weld metal formed form the reference welding electrode”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Thus, the modified electrode of Landis and Schaeffer meeting the claimed composition would be prima facie expected to be “present in an amount and form such that the impact toughness of the weld metal is higher by 50% or more relative to the weld metal formed form the reference welding electrode”.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, it has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Regarding claim 20, Landis and Schaeffer teach the electrode as applied to claim 16 above but are silent to the feature requiring “the one or more additional elements or compounds” to be “adapted to modify the microstructure of the weld metal such that a ductile-to-brittle transition temperature of the weld metal is lower than a ductile-to-brittle transition temperature of a weld metal formed from a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Thus, the modified electrode of Landis and Schaeffer meeting the claimed composition would be prima facie expected to be “adapted to modify the microstructure of the weld metal such that a ductile-to-brittle transition temperature of the weld metal is lower than a ductile-to-brittle transition temperature of a weld metal formed from a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, it has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Regarding claim 21, Landis and Schaeffer teach the electrode as applied to claim 20 above but are silent to the feature requiring “the one or more additional elements or compounds” to be “present in an amount and form such that the ductile-to-brittle transition temperature of the weld metal is lower by at least 50C relative to the weld metal formed from the reference welding electrode”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Thus, the modified electrode of Landis and Schaeffer meeting the claimed composition would be prima facie expected to be “present in an amount and form such that the ductile-to-brittle transition temperature of the weld metal is lower by at least 50C relative to the weld metal formed from the reference welding electrode”.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, it has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Regarding claim 22, Landis and Schaeffer teach the electrode as applied to claim 16 above and Landis further teaches that a first coating formed on the solid core wire including metals such as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6; meeting claimed ‘electrically conductive coating formed on the solid core wire and including one or more electrically conducting elements or compounds in addition to or other than Cu).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Landis and Schaeffer as applied to claim 1 above, and further in view of Chen et al. (U.S. 6,787,736).
Regarding claim 10, Landis and Schaeffer teach the electrode as applied to claim 1 above but are silent that the core wire is a stainless steel composition.
Chen et al. (hereinafter “Chen”) teaches a coated weld wire (Abstract). Chen particularly teaches that the stainless steel is suitable for the metal core wire (Col. 8 lines 17-18).
It would be obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to substitute a stainless steel wire, as taught by Chen, for the low alloy steel of Landis and Schaeffer because stainless steel is a well-known material used in welding and the combination of these known elements together would yield predictable results.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” (MPEP 2141.I. and KSR decision).
Claims 11, 12, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Landis et al. (U.S. 3,691,340).
Regarding claims 11 and 12, Landis teaches a welding electrode (see claim 6, Figure 1, Col. 7 lines 44-47) comprising:
an electrode core that is a solid steel wire (meeting claimed ‘solid core wire having an iron (Fe)-based base metal composition’; Col. 5 lines 30-31 and Col. 5 line 42),
a first coating formed on the solid core wire including metals such as Mg, Li, Sr, Na, K, Ca, and Bi as well as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6; meeting claimed ‘electrically conductive coating formed on the solid core wire and including one or more electrically conducting elements or compounds in addition to or other than Cu),
and a second and outer coating consisting of a metal selected from a group of metals including antimony, magnesium, zinc, nickel, silver, tin, lead, copper, cadmium, or manganese (claim 6, 12 in Figure 1; meeting claimed ‘additional functional coating formed on the electrically conductive coating, wherein the additional functional coating includes one or more additional elements”).
Landis, while teaching the inclusion of Na and/or K, does not teach that Na and/or K is in the additional functional coating.
However, it would be obvious to try to include the Na and/or K into the additional, second and outer layer/coating taught by Landis in view that Landis is always employed as a shielding metal (Col. 2 lines 41-42) and that additional elements can be included as a “means for modifying the boiling action of the shielding metal so that it commences to boil at a point on the electrode slightly spaced from the arcing tip and continues to boil down to the arcing tip of the electrode” (Col. 4 lines 2-6; additionally meeting dependent claim 12). As Landis is concerned with control of the interface of boiling, a POSITA would readily appreciate the opportunity to select a different suitable element and modify metals in the outer coating rather than the first, inner coating.
Furthermore, the rearrangement of the Na and/or K from the inner coating to the outer coating would constitute a ‘rearrangement of parts’ such that there is a reasonable prima facie case of obviousness absent evidence or persuasive reasoning to the contrary.
Regarding claim 13, Landis teaches the electrode as applied to claim 12 above but is silent to the feature requiring “the one or more additional elements or compounds” to be “present in an amount and form such that one or both of an oxygen content and a nitrogen content of a weld metal formed from the welding electrode are lower by 50% or more relative to one or both of an oxygen content and a nitrogen content of a reference weld metal formed from a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
However, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Thus, Landis’ electrode meeting the claimed composition would be prima facie expected to be “present in an amount form such that one or both of an oxygen content and a nitrogen content of a weld metal formed from the welding electrode are lower by 50% or more relative to one or both of an oxygen content and a nitrogen content of a reference weld metal formed from a reference welding electrode that is the same as the welding electrode except for the presence of the additional functional coating”.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, it has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Regarding claim 15, Landis teaches the electrode as applied to claim 11 above and further teaches a first coating formed on the solid core wire including metals such as Mg, Li, Sr, Na, K, Ca, and Bi as well as Al, Si, Mn, Ni, Co, Pb, Ag, and Cu (11 in Figure 1, Col. 7 lines 44-47; Claim 6).
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Landis as applied to claim 11 above, and further in view of Chen et al. (U.S. 6,787,736).
Regarding claim 14, Landis teaches the electrode as applied to claim 11 above but is silent that the core wire is a stainless steel composition.
Chen teaches a coated weld wire (Abstract). Chen particularly teaches that the stainless steel is suitable for the metal core wire (Col. 8 lines 17-18).
It would be obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to substitute a stainless steel wire, as taught by Chen, for the low alloy steel of Landis because stainless steel is a well-known material used in welding and the combination of these known elements together would yield predictable results.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” (MPEP 2141.I. and KSR decision).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Landis and Schaeffer as applied to claim 16 above, and further in view of Chen et al. (U.S. 6,787,736).
Regarding claim 10, Landis and Schaeffer teach the electrode as applied to claim 1 above but are silent that the core wire is a stainless steel composition.
Chen teaches a coated weld wire (Abstract). Chen particularly teaches that the stainless steel is suitable for the metal core wire (Col. 8 lines 17-18).
It would be obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to substitute a stainless steel wire, as taught by Chen, for the low alloy steel of Landis and Schaeffer because stainless steel is a well-known material used in welding and the combination of these known elements together would yield predictable results.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” (MPEP 2141.I. and KSR decision).
Response to Arguments
Applicant's arguments filed 10/03/2025 have been fully considered but they are not persuasive.
The perceived deficiencies of the prior art reference to Landis in meeting the limitations of amended claim 1 are believed to be overcome by Schaeffer et al. as further relied upon.
The perceived deficiencies of the prior art reference to Landis and/or Chen in meeting the limitations of amended claims 11 and/or 16 are believed to be overcome by the newly cited portions of those references as applied above.
In response to Applicant’s note regarding co-pending Application 17/930,993, Examiner is aware of the co-pending application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738