11475750 (P.T.A.B. Jul. 13, 2016)

Ex Parte Chen et al

Patent Trial and Appeal BoardJul 13, 2016

11475750 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111475,750 91734 7590 Charles E Leahy 151 E Summit St FILING DATE 0612712006 07115/2016 Harbor Springs, MI 49740 FIRST NAMED INVENTOR Yen-Lung Chen 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. GP-307906-RD-KAM 1045 EXAMINER JENNISON, BRIAN W ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 07/15/2016 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): charles.leahy@sbcglobal.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YEN-LUNG CHEN, XIAOHONG Q. GAYDEN, STEVEN J. WESOLOSKI, and MATTHEW D. SCRASE Appeal2014-005461 Application 11/475,750 Technology Center 3700 Before LINDA E. HORNER, LYNNE H. BROWNE, and GORDON D. KINDER, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Yen-Lung Chen et al. (Appellants) appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1-6, 8-12, and 16-20. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 The Final Action incorporates the rejections set forth in the Non-Final Action mailed February 4, 2009. See Final Act. 3--4. The Final Action makes no mention of the Claim Objections and Claims Analysis set forth in the Non-Final Act. Non-Final Act. 2-3. Claims 7 and 13-15 are objected to in the Non-Final Act. Id. at 2. Claims 7 and 13-15 are not subject to any ground of rejection. See, generally, Final Act. Accordingly, the inclusion of these claims in item 6 on the cover sheets for the Non-Final and Final Appeal2014-005461 Application 11/475,750 We REVERSE. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for welding together a steel tubular cage and an aluminum frame, comprising: welding together end-to-end a hollow steel tube and a steel rodÂ· ' friction welding together end-to-end the steel rod and an aluminum rod; welding the aluminum rod to the aluminum frame; and welding an end of the steel tubular cage to the hollow steel tube. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ni Benoit Butler US 5,720,092 Feb. 24, 1998 US 6,452, 139 B 1 Sept. 17, 2002 US 2004/0074884 Al Apr. 22, 2004 REJECTIONS I. Claims 1, 8, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ni and Benoit. Actions (Form PTOL-326) is in error. We further note, that to the extent that claims 7 and 13-15 remain subject to a claim objection, this is a petitionable, not appealable matter. See MPEP Â§Â§ 1002 and 1201. 2 Appeal2014-005461 Application 11/475,750 II. Claims 2-6, 9-12, and 16-192 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ni, Benoit, and Butler. 3 DISCUSSION Rejection I Claims 1 and 8: The Examiner finds that Ni and Benoit disclose or suggest all of the limitations of independent claim 1. In particular, the Examiner finds that in Ni Fig 1 shows welding tube 14 to joint 18 [which is welding] a tube to a rod. Joint 18 is welded to tube 16 which is welding a rod to a rod. Tube 16 is welded to second joint 18 which is welding a rod to a frame and second joint 18 to tube 12 which is welding a tube to a cage. Ans. 4 (emphasis omitted). Thus, we understand the Examiner to have equated the second joint 18 to both a rod and a tube. Appellants argue that "the Final Rejection [continues] to disregard the recitations of the claims pertaining to the difference between a tube and a rod." Appeal Br. 11. In other words, Appellants argue that second joint 18 cannot fairly read on both a tube and a rod. Appellants are correct. As used in the Specification and shown in the Figures, tubes and rods are different structures. See, e.g., Spec i-fi-f 11, 13; Figs. 2-3. Furthermore, "[i]n the absence of any evidence to the contrary, we must presume that the use of 2 The statement of this second ground of rejection includes claim 20; however, the detailed explanation of the rejection does not include any analysis of claim 20. We understand the inclusion of claim 20 in the statement of this second ground of rejection to be a typographical error. 3 The Examiner indicates that the inclusion of Nakagawa (US 2005/0062307 Al, pub. Mar. 24, 2005) in the statement of this rejection is a typographical error. See Ans. 15. 3 Appeal2014-005461 Application 11/475,750 these different terms in the claims connotes different meanings." See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000). Accordingly, the Examiner's finding that second joint 18 is both a rod and a tube is in error. For this reason, we do not sustain the Examiner's decision rejecting claim 1, and claim 8, which depends therefrom. Claim 20 Independent claim 20 calls for rods of first and second metals adapted for arc welding to tubular members of first and second metals. In rejecting claim 20, the Examiner fails to identify what structures in Ni correspond to the claimed tubular members and rods, or to explain adequately the proposed modification of Ni with the teachings of Benoit. Thus, the Examiner fails to set forth a prima facie case of obviousness. For this reason, we do not sustain the Examiner's decision rejecting claim 20. Rejection II The Examiner's second ground of rejection based on the combined teachings of Ni, Benoit, and Butler, relies upon the same erroneous findings as the Examiner's rejection of claim 1. See Ans. 7-13. For this reason, we do not sustain the Examiner's decision rejecting claims 2-6 and 9-19. DECISION The Examiner's rejections of claims 1---6, 8-12, and 16-20 are REVERSED. 4 Appeal2014-005461 Application 11/475,750 REVERSED 5