Appeal No. 2001-0278
Application 09/069,002
specification); In re Prater, 415 F.2d 1393, 1404 05, 162 USPQ 541, 550-51 (CCPA
1969).
Steps (d) and (e) of the instant claim reads as follows:
(d) nondestructively evaluating the weld quality by analyzing acoustic signals
generated by electromagnetic pulses absorbed in the susceptor; and
(e) rewelding in at least those regions of the weld found to have inadequate
strength.
The Appellants assert that the “Examiner cannot read step (e) out of the claim
with the assertion that some welds might be of adequate strength everywhere when
inspected. Claim 10 calls for rewelding in areas of inadequate strength” (Appeal Brief,
page 7, lines 5 – 7). We agree.
Step (e) requires rewelding in “at least those regions found to have inadequate
strength” (emphasis added). As noted by the Examiner, this begs the question, “what if
no regions of inadequate strength are found?” Or, put another way, if a bond is
acceptable the first time, would a nondestructive evaluation of the weld to determine this
acceptability fall within the scope of claim 10? The Examiner states that it would. The
Appellants state that it would not.
The Examiner’s reasoning is that if no regions require rewelding, then no
rewelding is performed, and the literal language of limitation (e) is met. The Examiner’s
position that at least occasionally a weld, when formed and analyzed, meets strength
criterion and accordingly step (e) is not always required is quite reasonable.
However, the use of the words at least causes step (e) to require “at least” some
rewelding. Accordingly, if no rewelding is performed, then the limitations of step (e)
cannot be met. In other words, if step (d) analysis reveals no inadequate strength, no
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