Ex Parte Ihde et al

Patent Trial and Appeal Board

Mar 19, 2018

13356916 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/356,916 01124/2012
149749 7590 03/21/2018
ITW c/o MCANDREWS HELD & MALLOY
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Jeffery Ray Ihde
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.
62300US01 (60845-US) 8662
EXAMINER
BAE, GYOUNGHYUN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERY RAY IHDE and THOMAS DON LAHTI
Appeal2016-003076
Application 13/356,916 1
Technology Center 3700
Before KEN B. BARRETT, LEE L. STEPINA, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Jeffery Ray Ihde and Thomas Don Lahti (Appellants) seek our review
under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1-20.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Illinois Tool Works
Inc. Appeal Br. 2.
Appeal2016-003076
Application 13/356,916
THE CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "welding systems and,
more particularly, to a weld electrical and gas connector with sealed gas
flow." Spec. i-f 1. Claims 1, 9, and 16 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter.
1. A welding cable connector system comprising:
a male connector comprising a first conductive body for
conveying welding power, a first sealed passageway disposed
coaxially of the first conductive body for conveying shielding
gas, and a first Schrader valve configured to stop flow of
shielding gas when the male connector is not engaged; and
a female connector comprising a second conductive body
for conveying welding power, a second sealed passageway
disposed coaxially of the conductive body for conveying
shielding gas, and a second Schrader valve substantially
identical to the first Schrader valve and configured to stop flow
of shielding gas when the female connector is not engaged;
wherein the male and female connectors are mutually
engageable to conduct welding power and shielding gas
therethrough, wherein the male and female connectors
threadingly engage one another, and wherein the first and
second Schrader valves seal the flow of shielding gas when the
connectors are not mutually engaged.
Appeal Br. 17 (Claims App.).
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 2, 4, 6, 7, 9--12, and 16-20 under 35 U.S.C. § 103(a) as
unpatentable over Folkening (US 4,939,339, iss. July 3, 1990) and
O'Hem (US 4,338,793, iss. July 13, 1982).
2. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Folkening,
O'Hem, and IS/ISO 4570:2002-Table 2.
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Application 13/356,916
3. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Folkening,
O'Hem, and Rieppel (US 2,963,570, iss. Dec. 6, 1960).
4. Claims 8, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Folkening, O'Hem, and Nordhaus (US 3,314,088, iss. April
18, 1967).
ANALYSIS
Claim 1
The Examiner found that Folkening discloses, among other things, a
male connector including a first Schrader valve, a female connector
including a second Schrader valve substantially identical to the first
Schrader valve, wherein the Schrader valves seal the flow of shielding gas
when the connectors are not mutually engaged. Final Act. 3--4. The
Examiner found that Folkening does not disclose "male and female
connectors that are threadingly engaged to one another to connect two gas
sealing valves." Id. at 4. The Examiner relied on O'Hem for the threaded
engagement, finding that 0 'Hem discloses male and female connectors that
threadingly engage one another, as well as two duplicate Schrader valves.
Id. at 4--5. The Examiner found that it would have been obvious "to replace
Folkening's fast connecting ball-latch connectors with O'Hem's threaded
connectors as an alternative known arrangement in the art to provide tight
sealing between the joints." Id. at 5. The Examiner also found that
threadingly engaging male and female connectors to connect two valves
"has been known and routinely used in the technical area of fluid
transportation in [the] whole world and is an obviously routine work." Ans.
17. The Examiner found that Folkening, while relying on metal balls as a
quick disconnect mechanism, also discloses threaded connections, and use of
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Application 13/356,916
threaded connections in place of the ball connection would not generate an
unexpected result. Id.
Appellants argue that "Folkening fails to disclose a Schrader valve or
preassembled valve assembly anywhere in its disclosure." Appeal Br. 8.
Appellants also argue that Folkening discloses valves made of different parts
assembled and configured differently from one another. Id. Regarding the
combination of Folkening and O'Hem, Appellants argue that "there is no
objective reason to combine the refrigeration Schrader valve and/or
threading that spaces apart the valves of 0 'Hem with the connectors of
Folkening." Id. at 10. Appellants further contend that if one combined the
references, the result would be spaced apart Schrader valves as in 0 'Hem
oriented perpendicular to one another, which would prevent successful
operation of Folkening's connectors. Id. at 11.
We do not agree that the Examiner erred in its findings that Folkening
and 0 'Hem disclose all of the limitations of claim 1, and that it would have
been obvious to combine the two in the manner proposed by the Examiner.
Appellants contend that Folkening does not disclose the claimed Schrader
valves by suggesting that such valves must be "preassembled." See Appeal
Br. 8 ("Unlike a preassembled valve assembly, such as a Schrader
valve .... "). Claim 1 does not require a "preassembled" valve, and
Appellants do not point to any definition or express construction of the
claimed "Schrader valve," much less a definition or construction that
requires us to construe "Schrader valve" as a preassembled valve. Further,
Appellants do not construe "preassembled" in a manner that would indicate
which parts of the valve must be preassembled in order to fall within the
scope of the claim. We construe "Schrader valve," consistent with the
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Application 13/356,916
specification, as a valve having a plunger biased by a spring into a closed
position to prevent the flow of fluids, with axial pressure to the end of the
plunger resulting in removal of the valve from the closed position to an open
position allowing the flow of fluid. See Spec. i-f 28, Fig. 4. In that sense, the
claimed Schrader valve is similar to, if not the same as, a typical tire valve.
See Spec. i-fi-128 (listing types of preassembled valve assembly 134 as
"Schrader valve, a tire valve .... "), 30.
Appellants do not apprise us of error in the Examiner's finding that
Folkening's valves fall within the scope of "Schrader valve" and are
"substantially identical" to one another as required by claim 1. The
Examiner found that Folkening's valves include conical shaped valves 68,
68a, coil springs 71, 71a, openings 67, 80, the internal space in the housings
containing the valves and springs. Ans. 14. In that sense, the valve
assemblies operate as Schrader valves and are substantially identical.
Appellants rely on other alleged structural differences such as sleeve 86 with
balls 93 that couple the female connector to Folkening's male connector, but
that structure connects and plays a part in actuating the valves, and is not
part of the valves. See Folkening, 3:13-37, Fig. 2. Similarly, the exterior
shapes of sleeve 77 and body portion 61 do not affect the function of the
valve and do not support a finding that the overall valve structures are not
substantially identical to one another. See id. at 2: 63-3: 12; Fig. 2. 2
2 Even if the claimed Schrader valves must be "preassembled," as
Appellants contend, Appellants have not explained adequately why
Folkening's valves are not assembled prior to other parts in Folkening's
structure, and then connected to those structures via threads. See Folkening
Figs. 2, 3; Appeal Br. 8-9.
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Application 13/356,916
Regarding the combination of Folkening with O'Hem, Appellants
improperly focus on details of O'Hem's disclosure, including the separation
of the Schrader valves and their inability to act in the manner recited in the
claim. See Appeal Br. 10-11; Reply Br. 4. "[O]ne cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references." In re Keller, 642 F.2d 413, 426
(CCPA 1981). The Examiner did not find that O'Hem's Schrader valves
operate to open and close the valves in the manner claimed; the Examiner
already found that Folkening's valves operate in that manner, and Appellants
do not dispute those findings. See Final Act. 3--4; Appeal Br. 9--11. The
Examiner relied on 0 'Hem for a basic teaching-that those skilled in the art
would recognize the ability to connect the male and female ends of a gas
sealing valve using a threaded connection. Final Act. 4. The refrigeration
art of O'Hem and problem confronted---connections in gas conduits-are
directly relevant to fluid connections in a welding context and are both part
of the technical discipline of "fluid transportation" as the Examiner found.
Ans. 17. Appellants have also failed to apprise us of error in the Examiner's
finding (1) that threadingly engaging male and female connectors to connect
two valves "has been known and routinely used in the technical area of fluid
transportation in [the] whole world and is an obviously routine work" and;
(2) that Folkening's own disclosure of threaded connections suggests no
unexpected results if applied to Folkening's male/female connectors. Ans.
17.
Based on the foregoing, we sustain the rejection of claim 1. For
claims 2-8 that depend from claim 1, Appellants either do not argue the
dependent claims, or rely on the same arguments with respect to claim 1.
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Appeal Br. 13-15. Accordingly, we sustain the rejection of claims 2-8 for
the same reasons discussed above.
Claim 9
Claim 9 requires "a connector ... a mating connector, a sealed
passageway [of the connector] ... comprising a first thread, and a
preassembled valve assembly comprising a second thread, wherein the first
and second thread are configured to threadingly engage one another to
couple the sealed passageway to the preassembled valve assembly." Appeal
Br. 18 (Claims App.). In short, claim 9 requires the preassembled valve
assembly to engage the "connector" via threads. Id.
In the Final Office Action, the Examiner found that Folkening
discloses a connector (Folkening's connector 30), a mating connector
(Folkening's male body portion 77), and a sealed passageway (Folkening's
axial bore 37a, 37b, 37c). Final Act. 7. The Examiner also relied on O'Hern
for a thread (O'Hern's external threads 20), preassembled valve assembly
(O'Hern's Schrader valve 22), and a second thread (O'Hern's internally
threaded belled end 60). Id. at 7-8. In the Examiner's Answer, on the other
hand, the Examiner found that Folkening discloses the "preassembled"
valve, including structures spanning from numeral 37C to 80 in Figures 2
and 3, and relies on a threaded connection with "terminal 32" shown in
Figure 3. Ans. 19. The Examiner also found that, similar to the "left
member" just described, the structures between reference numbers 93 and
37b in Figure 2 disclose the "right member." Id.
Appellants argue that the Examiner changed positions in the Answer,
leading to problems when looking at the findings as a whole in relation to
claim 9. Reply Br. 4---6. For example, Appellants argue that the Examiner
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Application 13/356,916
now relies on the connection between element 32 and 37c as the claimed
threaded connection between the connector and preassembled valve
assembly, and if so, the Examiner cannot support the original finding
regarding a mating connector. Id. at 5---6. In other words, if terminal 32 is
the "connector," the elements 93 to 37b on the right hand side of Figures 2
and 3 do not mate with terminal 32, and therefore fail to fall within the scope
of the claimed "mating connector." Id. at 6.
We agree with Appellants. Several findings in the Office Action
conflict with the revised findings in the Examiner's Answer, and we
therefore review the more recent findings in the Answer as the basis for the
rejection. See Ans. 19. The findings in the Answer lack adequate
explanation and support. If we accept the Examiner's definition of the valve
assembly in the context of claim 9, the findings fail to identify the claimed
"mating connector," and to the extent they do so, they point to structures that
fail to mate with terminal 32 (corresponding to the claimed "connector" in
light of the Examiner's findings). See Reply Br. 5---6. In that case, based on
the Examiner's analysis of claim 9 in the Answer, an element is missing
from the claimed combination, and we do not sustain the rejection of claim 9
for that reason. For the same reasons, we do not sustain the rejection of
claims 10-15 that depend from claim 9.
Claim 16
Claim 16 requires, among other things, "a male connector comprising
... a first sealed passageway ... and a first preassembled valve assembly
coupled to threads within the first sealed passageway" and "a female
connector comprising" a threaded connection between its "second sealed
passageway" and a "second preassembled valve assembly." Appeal Br. 19
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(Claims App.). The Examiner found that Folkening discloses the first sealed
passageway (Folkening's axial bore 37b with "female screw [thread]
between the numerals 37b and 31; Fig. 3"), and a first preassembled valve
assembly coupled to threads (Folkening's "female screw [thread] between
the numerals 37b and 31; Fig. 3, and female thread on a terminal 32; Fig. 3
and column 2, line 31 "). Final Act. 9--10. Appellants generally make the
same arguments with respect to claim 16 as they do with respect to claim 1,
but note that claim 16 requires "identical" preassembled valve assemblies
rather than "substantially identical" as in claim 1, and the Examiner did not
provide a reason to combine Folkening and O'Hem with respect to claim 16.
See Appeal Br. 9--11.
We agree with Appellants that the rejection of claim 16 lacks
adequate support, but for reasons related to the threaded connection between
the valve assemblies and connectors, rather than the arguments made with
respect to claim 1. In the context of claims 1 and 16, the Examiner provided
a description of the parts that comprise the preassembled valve assemblies.
See Ans. 14. None of those parts includes threads that connect the
assemblies to the connectors. See id. Instead, it appears that the
components the Examiner identifies as valves are built into the ends of the
connectors rather than attached via threads. See Folkening, Fig. 2. The
Examiner found that Folkening's Figure 3 discloses the claimed threaded
engagement well to the right and left of the valve assemblies the Examiner
identifies. See Final Act. 9--10. Those threads, however, connect terminal
32 and lead 31 to "outer portion[s]" 36b and 36c of connector 30 and lead
31. See Folkening, 2:33-37, Fig. 3. The Examiner did not find that outer
portions 36b or 36c form part of the preassembled valve assemblies, see
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Ans. 14, and there does not appear to be any support in the record for doing
so. As a result, the threaded connections the Examiner relies upon do not
connect the preassembled valve assemblies to the passageways of the male
and female connectors as required by claim 16.
Based on the foregoing, we do not sustain the rejection of claim 16, or
claims 17-20 that depend directly or indirectly from claim 16.
DECISION
We affirm the decision of the Examiner to reject claims 1-8. We
reverse the decision of the Examiner to reject claims 9-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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