Ex Parte Kinder et al

Patent Trial and Appeal Board

Dec 28, 2018

13746801 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/746,801 01/22/2013
13866 7590 01/02/2019
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Boulevard
Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
David Allen Kinder
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.
1485.0l 13C 9655
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALLEN KINDER, BRYAN YOUNG, and
KYLE STUART
Appeal2018-004564
Application 13/746,801
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Victor Equipment Company ("Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-11, 13-18, 20-23,
and 25-27, which are all the pending claims. See Br. 3. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Victor Equipment Company is the applicant, as provided in 3 7 C.F .R.
§ 1.46, and is identified as the real party in interest. Br. 3.
Appeal2018-004564
Application 13/746,801
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates generally to arc welding torch
systems and components used in arc welding torches." Spec. ,r 2. Claims 1,
13, 20, 25, and 26 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A universal conduit assembly for a welding torch
compnsmg:
a conduit liner defining a proximal end portion and a
distal end portion;
a conduit tip secured to the proximal end portion of the
conduit liner; and
an interchangeable conduit stop removably secured to the
conduit tip, the interchangeable conduit stop adapted for
connection to a specific OEM power connector, wherein the
interchangeable conduit stop extends beyond a distal end of the
conduit tip to partially cover an electrical insulator surrounding
and positioned directly adjacent to the conduit liner.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Lajoie
Wells
US 2005/0072764 Al
US 2005/0218132 Al
2
Apr. 7, 2005
Oct. 6, 2005
Appeal2018-004564
Application 13/746,801
REJECTION
The following rejection is before us for review: 2 Claims 1-11, 13-18,
20-23, and 25-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lajoie and Wells. Final Act. 4--21.
ANALYSIS
Independent claim 1 recites, inter alia, that "the interchangeable
conduit stop extends beyond a distal end of the conduit tip to partially cover
an electrical insulator surrounding and positioned directly adjacent to the
conduit liner." Br. 24, Claims App. Independent claims 13, 20, 25, and 26
recite similar limitations. See id. at 26-29. Appellant argues that Wells, as
relied upon in the rejection, does not teach or suggest such a feature. See id.
at 15-19. We agree that the Examiner has not sufficiently identified credible
evidence that Wells teaches the disputed limitation.
In rejecting claim 1, the Examiner found that Lajoie discloses, inter
alia, "an interchangeable conduit stop ( e.g., conduit stop seen in Fig. 2A-3B)
removably secured to the conduit tip, the interchangeable conduit stop
2 We note that the Final Office Action (dated Jan. 4, 2017) also
included a rejection of claims 1-11, 13-18, 20-23, and 25-27 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 2-3. Appellant subsequently filed an
Amendment (dated Mar. 3, 2017), which was entered by the Examiner,
which appears to have obviated the basis of this rejection. However, neither
the Advisory Action ( dated Mar. 17, 2017) nor the Examiner's Answer
(dated Jan. 9, 2018) formally withdraws this rejection. We consider the
rejection to be effectively withdrawn and conclude that it is not before us for
review as part of the instant appeal. Should there be further prosecution of
this application, the Examiner may wish to address a formal withdrawal of
this rejection.
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Appeal2018-004564
Application 13/746,801
adapted for connection to a specific OEM power connector ( e.g., Fig. 1-4C
and para 1-39, including Fig. 2A-3B and para 26-39)." Final Act. 5. The
Examiner acknowledged that "Lajoie does not explicitly disclose [that] the
interchangeable conduit stop extends beyond a distal end of the conduit tip
to partially cover an electrical insulator surrounding the conduit liner" (id.
at 12 (boldface omitted)), but found that Wells discloses this feature (see id.
(citing Wells, Figs. 1-20, ,r,r 1-101)). The Examiner concluded that, given
the teachings of the prior art, it would have been obvious "to modify Lajoie
as suggested and taught by Wells in order to align and axially secure a liner
(e.g., Wells: abstract)." Id. at 21 (boldface omitted). The Examiner explains
in the Answer that
Wells discloses a conduit liner (16 in Fig. 6 of Wells) defining a
proximal end portion and a distal end portion; a conduit tip
( 18/3 8 in Fig. 6 of Wells) secured to the proximal end portion of
the conduit liner; and an interchangeable conduit stop (20 in
Fig. 6 of Wells) removably secured to the conduit tip, the
interchangeable conduit stop adapted for connection to a specific
OEM power connector, wherein the interchangeable conduit stop
extends beyond a distal end of the conduit tip to partially cover
an electrical insulator ( the structure near 34 in Fig. 6 of Wells)
surrounding and positioned directly adjacent to the conduit liner,
as seen in Fig. 6 of Wells.
Ans. 3.
However, Appellant persuasively asserts that, "[b ]ased on the
similarity in function, form, and terminology, one of ordinary skill in the art
would clearly note that the retaining head 16 of Wells does not correspond to
the claimed conduit liner (see Wells own use of the term 'liner' to describe
element 24 and not element 16)." Br. 17. Wells discloses that "retaining
head 16 can be secured to the gooseneck 14, establishing a position of the
retaining head 16 with respect to the gooseneck 14 and with respect to the
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Appeal2018-004564
Application 13/746,801
liner 24 that has been secured to the gooseneck 14." Wells ,r 56 (boldface
omitted); see also id., Fig. 6. Wells discloses that, "[d]uring use of the
torch[,] a welding wire (not shown) passes from a distal end of the liner 24,
through the liner 24, [and] through the retaining head 16." Id. ,r 57 (boldface
omitted). In other words, Wells discloses that retaining head 16 and liner 24
are distinct elements that are secured to gooseneck 14. Given that Wells
explicitly discloses that liner 24 is a distinct element, the Examiner's finding
that Wells discloses the disputed limitation is predicated upon an
unreasonable interpretation that retaining head 16 represents a conduit liner.
Although the Examiner did not identify what structure from Lajoie
corresponds to the claimed "conduit liner" (see Final Act. 4), the structure
that appears to correspond most closely to Appellant's conduit liner 40 is
Lajoie's liner body 23 (compare Lajoie, Fig. 2B, with Spec., Fig. 3A).
Similarly, Wells's liner 24, rather than retaining head 16, appears to
correspond most closely with both Lajoie's liner body 23 and Appellant's
disclosed conduit liner 40. See Wells, Fig. 6, ,r 55. Thus, the Examiner's
stated conclusion, from a comparison of annotated Figure 6 of Wells and
Figure 3A of the present application provided on page 4 of the Answer, that
"Wells has structure corresponding to the claimed subject matter," does not
support the Examiner's interpretation that Wells's retaining head 16 is a
"conduit liner," as claimed. Ans. 4.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
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Appeal2018-004564
Application 13/746,801
379 F.2d 1011, 1017 (CCPA 1967). Here, the Examiner has not established
a finding supported by a preponderance of the evidence that Wells, as relied
upon in the rejection presented, teaches or suggests the disputed limitation.
Also, the Examiner did not articulate a reasoned explanation based on a
rational underpinning as to how or why one of ordinary skill in the art would
have been led to modify the device of Lajoie so that the conduit stop would
extend past the distal end of the conduit tip to partially cover the insulation
of the conduit liner.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that the claims are unpatentable
based on the cited references and the stated reasoning. On this basis, we do
not sustain the rejection of claims 1-11, 13-18, 20-23, and 25-27 under
35 U.S.C. § 103(a) as being unpatentable over Lajoie and Wells.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-11, 13-18,
20-23, and 25-27 under 35 U.S.C. § 103(a) as being unpatentable over
Lajoie and Wells.
REVERSED
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