Ex Parte Giese

Patent Trial and Appeal Board

Aug 29, 2016

12269917 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/269,917 11113/2008 William Richard Giese
76275 7590 08/29/2016
Fildes & Outland, P.C.
20916 Mack A venue, Suite 2
Grosse Pointe Woods, MI 48236
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.
09005.003 1246
EXAMINER
MAYE,AYUBA
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
08/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM RICHARD GIESE
Appeal2014-006585
Application 12/269,917 1
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, 4---6, and 8-10. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellant identifies the real party in interest as "Illinois Tool Works,
Inc." (Appeal Br. 3.)
Appeal2014-006585
Application 12/269,917
STATEMENT OF THE CASE
The Appellant's invention relates to "a procedure controlling switch
for a welding gun." (Spec. 1, lines 9-11.)
Illustrative Claim
1. A control assembly for a welding gun including a
handle, gooseneck and contact tip, said welding gun delivering
at least one of electric power, welding wire and inert gas to a
welding site for welding, said assembly comprising:
a switch body disposed along a longitudinal axis of the
handle;
said switch body enclosing a trigger with a positioning
lever pivotally mounted on the handle for movement toward and
away from the handle for gun activation; and
a control switch mounted on said switch body or on said
handle adjacent said switch body and having a slide reciprocably,
linearly movable relative to the body and operative to select a
procedure of the welding gun, the slide being movable between
two positions along an axis radially disposed and generally
transverse to a longitudinal axis of the body such that the control
switch is pushable between said two positions in either direction
along said transverse axis, and operation of the control switch is
transverse to operation of the trigger.
Erickson
Lubieniecki
Paton
References
us 4,270,824
us 5,698, 122
us 5,869,801
Rejection
June 2, 1981
Dec. 16, 1997
Feb.9, 1999
The Examiner rejects claims 1, 2, 4---6, and 8-10 under 35 U.S.C.
§ 103(a) as unpatentable over Erickson, Lubieniecki, and Paton. (Final
Action 2.)
2
Appeal2014-006585
Application 12/269,917
ANALYSIS
Independent claim 1 is directed to a "control assembly" comprising a
"control switch" having a "slide" that is movable relative to a switch body to
"select a procedure of the welding gun." (Appeal Br., Claims App.)
Independent claim 6 is directed to a welding gun comprising a similar
control switch and slide. (Id.) The Examiner finds that Erickson discloses a
welding gun wherein a control switch moves between two positions to
alternatively allow and prevent gun operation by a trigger. (See Final
Action 2-3; see also Erickson, col. 7, lines 5-13, Figs. 1, 9, 11.)
Independent claims 1 and 6 each require the slide to be "pushable
between said two positions in either direction" along an axis that is
"generally transverse" to the longitudinal axis of the switch body or the
longitudinal direction of a wire passageway. (Appeal Br., Claims App.)
The Examiner acknowledges that Erickson's control switch is not pushable
along such a transverse axis. (See Final Action 4.) However, the Examiner
determines that it would have been obvious, in view of Paton, to modify
Erickson's welding gun so that its control switch is pushable in the required
transverse direction. (See id. at 6.) This determination is based upon a
finding that Paton teaches a control switch 32 that is "pushable between said
two positions in either direction along said transverse axis." (Id. at 5.) The
Examiner cites column 8, lines 21-30 and Figure 4 in Paton to support this
finding. (Id.)
We are persuaded by the Appellant's position that the Examiner does
not sufficiently support a finding that the prior art teaches a control switch
wherein a slide is pushable along an axis that is generally traverse to the
longitudinal axis of a switch body and/or generally traverse to the
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Appeal2014-006585
Application 12/269,917
longitudinal direction of a wire passageway. (See Appeal Br. 14.) The cited
paragraph in Paton discusses movement of control switch 32 from the
neutral position into the working position, but does not describe the direction
of this movement relative to a switch body and/or wire passageway. And we
agree with the Appellant that Paton's Figure 4 shows, at best, that control
switch 32 "move[s] parallel to the longitudinal direction of the gun."
(Appeal Br. 14.)
As such, the Examiner does not adequately explain how or why Paton
teaches that a control switch can be pushable along a transverse axis.
Additionally or alternatively, the Examiner does not adequately address
why, if Erickson's control switch was modified to move in a direction taught
by Paton, the modified switch would be pushable in a direction transverse to
a switch body and/or a wire passageway. Furthermore, the Examiner does
not provide specific findings regarding the inferences and creative steps that
a person of ordinary skill in the art would employ when modifying
Erickson's control switch in view of the teachings of the prior art. 2
Thus, we do not sustain the Examiner's rejection of independent
claims 1 and 6 under 35 U.S.C. § 103(a) as unpatentable over Erickson,
Lubieniecki, and Paton.
The Examiner's further findings with respect to the dependent claims
on appeal (see Final Action 2---6) do not compensate for the above-discussed
2 The Examiner "need not seek out precise teachings directed to the specific
subject matter of the challenged claim" as "the inferences and creative steps
that a person of ordinary skill in the art would employ" can be taken into
account. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Here,
however, the Examiner does not provide us with specific findings regarding
such inferences and creative steps.
4
Appeal2014-006585
Application 12/269,917
shortcomings in the rejection of independent claims 1 and 6. Thus, we also
do not sustain the Examiner's rejection of dependent claims 2, 4, 5, and 8-10
under 35 U.S.C. § 103(a) as unpatentable over Erickson, Lubieniecki, and
Paton.
DECISION
We REVERSE the Examiner's rejection of claims 1, 2, 4--6, and 8-10.
REVERSED
5