Ex Parte Garvey et al

Patent Trial and Appeal Board

Feb 28, 2018

13430403 (P.T.A.B. Feb. 28, 2018)

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.
13/430,403 03/26/2012 Paul William Garvey 60524 (ITWO:0598) 7385
52145 7590 03/02/2018
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
DUNIVER, DIALLO IGWE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
docket@fyiplaw.com
sinclair@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL WILLIAM GARVEY and
CHRIS J. ROEHL
Appeal 2017-003429
Application 13/430,403
Technology Center 3700
Before STEVEN D. A. McCARTHY, MICHAEL L. HOELTER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-15 and 21-26. App. Br. 2. Claims 16-20 have been
withdrawn. See Response to Election/Restriction Requirement dated
January 19, 2015. Appellants sought to cancel claims 6, 8, 13, 14, and 22
(see Amendment After Final dated November 4, 2015, App. Br. 2), but such
amendment was not entered by the Examiner (see Interview Summary and
Appeal 2017-003429
Application 13/430,403
also an Advisory Action, both dated December 2, 2015).1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to welding torches, and
more specifically, to systems that allow for operator adjustment of wire feed
speeds in the torch handle.” Spec. ^ 2. Apparatus claims 1, 11,21, and 23
are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A welding torch comprising:
a torch handle;
a wire drive assembly disposed in the torch handle and
comprising a drive motor and a drive roller that contacts a
welding wire and configured to drive the welding wire from a
wire feeder to a welding operation;
a trigger disposed near a rear end of the handle and
configured to be depressed by an operator for initiating feed of
the welding wire; and
1 In the Advisory Action, the Examiner stated that the proposed amendments
(some cancelling claims) would not be entered. Nevertheless, the Examiner
seems to have considered claims 6, 8, 13, 14, and 22 canceled because the
Examiner indicates that only claims “1-5, 7, 9-12, 15, 21 and 23-26” remain
“rejected.” See Advisory Action. The Appeal Brief indicates that
Appellants relied on the Advisory Action’s indication that the proposed
amendment was not entered, and Appellants consider claims 6, 8, 13, 14,
and 22 to remain pending. App. Br. 2 (“[cjlaims 1-15 and 21-26 are
currently pending”). There is no contrary indication in the Examiner’s
Answer, and the statement of applicable rejections in the Answer includes
claims 6, 8, 13, 14, and 22. Ans. 2 (“[cjlaims 1-15, 21, 22, and 24 are
rejected”). Accordingly, we consider claims 6, 8, 13, 14, and 22 to remain
before us on appeal.
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Application 13/430,403
a wire feed speed adjustment assembly positioned near
the rear end of the handle adjacent to the trigger and on a same
side of the handle as the trigger for allowing operator
adjustment of a feed speed of the welding wire.
REFERENCES RELIED ON BY THE EXAMINER
Kensrue
Christopher
US 2006/0219683 A1
US 2006/0278623 A1
Oct. 5, 2006
Dec. 14, 2006
THE REJECTIONS ON APPEAL2
Claims 1-15, 21, 22, and 24 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kensrue. Final Act. 3.
Claims 23, 25, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kensrue and Christopher. Final Act. 7.3
2 “The rejection under 35 U.S.C. [§] 112(b) of claims 6, 13-14, 23 and 26
has been withdrawn.” Ans. 10. The indefiniteness rejection in the Final
Action addressed claims 6, 13-15, and 23-26. Final Act. 2. The
discrepancy between these claim listings (i.e., claims 15, 24, and 25) is
believed to be a typographical error. This is because these “overlooked”
claims were not themselves identified as containing indefinite claim
language therein and the Examiner does not maintain any indefmiteness
rejection in the Examiner’s Answer. See Final Act. 2-3; Ans. 2.
Accordingly, we proceed with the understanding that the indefmiteness
rejection of claims 6, 13-15, and 23-26 has been withdrawn.
3 We note the Examiner’s inclusion of claim 24 as rejected on this ground,
but the Examiner provides no reason or rationale as to why claim 24 is
obvious over Kensrue and Christopher. Final Act. 7-11. We further note
that claims 25 and 26 each depend from independent claim 23, yet claim 24
does not and instead depends (indirectly) from independent claim 21.
Additionally, the Examiner provided an express reason for the anticipation
(not obviousness) of claim 24. Final Act. 7. Accordingly, we understand
the Examiner’s inclusion of claim 24 under this § 103(a) obviousness
rejection to be in error.
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Application 13/430,403
ANALYSIS
The rejection of claims 1—15, 21, 22, and 24
as anticipated by Kensrue
Of claims 1-15, 21, 22, and 24, only claims 1,11, and 21 are
independent. Claims 1,11, and 21 each include the limitation of the wire
feed speed adjustment assembly being positioned adjacent to and “on a same
side of the handle as the trigger.” Claims 1 and 21 include the further
limitation of the wire feed speed adjustment assembly being “positioned
near the end of the handle.”
Appellants dispute that these limitations are disclosed by Kensrue.
App. Br. 7-11; Reply Br. 2—4. Figure 2 from Appellants’ Specification is
replicated below.
The above depicts Appellants’ handle 70 of welding torch 16. Illustrated
therein are front and rear ends 72, 74; top and bottom sides 76, 78; trigger
82; and, adjustment wheel 84.
For comparison, Figure 2 of Kensrue is replicated below.
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The above depicts Kensrue’s handle 12 of welding gun 10. Illustrated
therein is the Examiner’s corresponding trigger 50 and feed control
mechanism (above the trigger but not numbered).
The Examiner states that Kensrue’s corresponding components are
“on the same side (i.e. rear end) of the handle.” Final Act. 4. The Examiner
also states that Kensrue’s speed control mechanism 34 “is located on the
same side of the handle 12 adjacent to the trigger 50” and further that “[t]he
prior art clearly show[s] a[] similar configuration.” Ans. 10. Appellants
point out that Paragraph 26 of Appellants’ Specification distinguishes
between front and rear “ends” (72, 74) and top and bottom “sides” (76, 78).
App. Br. 8. Appellants thereafter contend, “Kensrue fails to disclose a wire
feed speed adjustment assembly positioned on the same side of the handle as
the trigger.” App. Br. 9; see also Reply Br. 2-3.
Regarding Appellants’ device, it is undisputed that Appellants’
“trigger 82 and the adjustment wheel 84 are disposed on the same side (e.g.,
the bottom side 78) of the torch handle 70.” Spec. ^ 31. However, the
Examiner does not elaborate as to how Kensrue’s corresponding components
can be said to be “on the same side (i.e., rear end)” as stated (Final Act. 4) in
view of Appellants’ usage of the terms “side” and “end.” See supra. Nor
does the Examiner explain how the two above figures show the same
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configuration (see Ans. 10) when one of Kensrue’s corresponding
components is illustrated on a bottom side and the other on a surface
orthogonal to this bottom side. In other words, although Kensrue illustrates
the trigger component 50 on a bottom of the handle (see above), Kensrue’s
corresponding feed control mechanism 34 is positioned on Kensrue’s handle
12 along a mid-region between Kensrue’s corresponding top and bottom
sides. See also App. Br. 9; Reply Br. 3.
The Examiner expresses a “capable of’ rationale in support of the
rejection of claims 1,11, and 21. Final Act. 3, 4; Ans. 11. However, to be
clear, the rejection before us is one of anticipation, not obviousness. We are
instructed that “[i]t is not sufficient to constitute an anticipation that the
device relied upon might, by modification, be made to accomplish the
function performed by the patent in question, if it were not designed by its
maker, nor adapted, nor actually used, for the performance of such
functions.” Topliffv. Topliff, 145 U.S. 156, 161 (1892). In other words, a
prior art reference anticipates a claim only if it discloses all the elements “in
the same form and order as in the claim.” Abbott Labs. v. Sandoz, Inc., 544
F.3d 1341, 1345 (Fed. Cir. 2008). Hence, we are instructed that “[a] claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987).
The Examiner does not presently identify where Kensrue, either
expressly or inherently, discloses a trigger and a feed speed mechanism “on
the same side” as recited and as these terms are understood. Thus, the
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Examiner has not established by a preponderance of the evidence that
Kensrue anticipates the claimed apparatus.4
We further note that the Examiner, in both the Advisory Action and
the Interview Summary record, “indicated that claims 1,11, and 21 can be
rejected by the prior art of record under 35 USC [§] 103(a).” Although such
a rejection might have been rendered by the Examiner, no rejection of claims
1,11, and 21 as being obvious over Kensrue (either alone or in combination)
has been expressed. Thus, such a rejection is not before us for review.
Accordingly, and based on the record presented, we do not sustain the
Examiner’s anticipation rejection of claims 1-15, 21, 22, and 24.
The rejection of claims 23, 25, and 26
as unpatentable over Kensrue and Christopher
Appellants argue claims 23, 25, and 26 together. App. Br. 12-15. We
select independent claim 23 for review, with claims 25 and 26 standing or
falling therewith. See 37 C.F.R. 41.37(c)(l)(iv). Claim 23 recites that both
the trigger and the wire feed speed adjustment assembly are both disposed
4 Appellants further argue that due to Kensrue’s arrangement, Kensrue does
not allow for “operator adjustment of a feed speed of the welding wire” as
recited. See App. Br. 10; Reply Br. 3—4. Such argument is not persuasive
because Kensrue teaches that operator input mechanism 92 “is accessible
through two recesses 110” that are “opposed approximately 180° from each
other” on the handle. Kensrue]} 51. Kensrue also explains that these two
opposite recesses 110 “provide access to the user input mechanism 92
equally to a right-handed or left-handed user” (i.e., via a single hand).
Kensrue ]} 51. Hence, even if one recess 110 might be covered by a user’s
palm (to protect against “unintentional” adjustment as stated therein), the
opposite recess 110 allows for operator access to speed control mechanism
92, such as by the user’s thumb or fingers being wrapped around Kensrue’s
handle to the opposite surface thereof where the matching recess 110 is
located. See Kensrue ]} 51, Figs. 2 and 11.
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on a “bottom side of the torch handle.” The Examiner acknowledges that
Kensrue fails to disclose “a wire feed speed adjustment assembly disposed
on the bottom side of the torch handle.” Final Act. 8. The Examiner relies
on Christopher for disclosing such a location for these components. Ans. 11
Figure 2 of Christopher is replicated below.
The above depicts Christopher’s handle 18 of welding gun 22. Illustrated
therein is the Examiner’s corresponding trigger 26 and feed control 46.
The Examiner further states that it would have been obvious to
“modify the location of the wire feed speed adjustment assembly of Kensrue
in view of the location of the wire feed speed adjustment assembly of
Christopher.” Final Act. 9. Appellants contend, “Kensrue fails to disclose a
wire feed speed adjustment disposed on the bottom side of the torch handle.”
App. Br. 12; see also Reply Br. 5. However, as indicated above, the
Examiner relies on Christopher for such “bottom” teachings, not Kensrue.
Appellants’ attack of the references individually, rather than addressing the
Examiner’s proposed combination, is not persuasive of Examiner error.
Claim 23 also recites “one-handed initiation of welding wire feed”
and also adjustments to its speed. Appellants contend that Kensrue fails to
disclose this limitation, as does Christopher. App. Br. 13-15; Reply Br. 5-6.
As indicated above, Kensrue teaches both right and left-handed operation.
Kensrue ^ 51; see also Final Act. 8 (referencing Kensrue 38, 39).
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Christopher more explicitly teaches “[tjrigger 26 and a dial 56 of feed
control 46 extend through housing 54 and are positioned to allow
convenient, single handed, operator manipulation thereof, respectively.”
Christopher 40; see also Ans. 11-12. Accordingly, in view of these
teachings, Appellants are not persuasive of Examiner error.
Appellants also separately address Christopher contending, in part,
that Christopher fails to disclose the wire feed speed adjustment being
“adjacent to, and forward of the trigger.” App. Br. 13. Appellants contend
that Christopher’s feed control 46 is “behind the trigger 26.” App. Br. 13.
The Examiner relies on Kensrue for this teaching, not Christopher. See
Final Act. 8.
Appellants further contend that Kensrue “teaches away” from wire
feed adjustments during operation because Kensrue teaches locating one
recess 110 “under the middle portion of the palm” of the user. App. Br. 14;
Reply Br. 6; Kensrue ^ 51. Appellants contend that this location was
selected “to prevent adjustment of the wire feed speed.” App. Br. 14; Reply
Br. 6. However, a closer reading of Kensrue discloses that this palm
location for the one recess 110 is to prevent the speed control from being
“unintentionally adjusted during operation.” Kensrue ^ 51. Appellants do
not explain how preventing “unintentional” adjustment equates to preventing
intentional adjustment during operation. Appellants also fail to address the
opposite recess 110 which remains exposed on Kensrue’s handle and is not
covered by the user’s palm. Kensrue ^ 51.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 23, 25, and 26 as being obvious over Kensrue
and Christopher.
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Application 13/430,403
DECISION
The Examiner’s anticipation rejection of claims 1-15, 21, 22, and 24
is reversed.
The Examiner’s obviousness rejection of claims 23, 25, and 26 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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