Ex Parte Miura

Patent Trial and Appeal Board

Jun 13, 2016

13164207 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/164,207 06/20/2011
28268 7590 06/14/2016
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
FIRST NAMED INVENTOR
Daisuke MIURA
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.
120045 1398
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/14/2016 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 DAISUKE MIURA
Appeal2014-005269
Application 13/164,207
Technology Center 3700
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-7 as unpatentable under 35 U.S.C. § 103(a) over either
Kondo (US 7,141,753, iss. Nov. 28, 2006) or von Daniken (US 5,977,506,
iss. Nov. 2, 1999) in combination with Yoshitaka (JP 2001-105142, pub.
April 17, 2001) and either Oaks (US 4,911,591, iss. Mar. 27, 1990) or
Collins (US 4,762,451, iss. Aug. 9, 1988) and claims 9-15 over Gajovski
(US 3,579,802, iss. May 25, 1971), Yoshitaka, and either Oaks or Collins.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-005269
Application 13/164,207
THE INVENTION
Appellant's invention relates to arc welding. Spec. i-f 2. Claim 2,
reproduced below, is illustrative of the subject matter on appeal.
2. An arc welding apparatus for welding a weld member
held by a welding head to a workpiece by arc welding; wherein
the arc welding apparatus comprises:
a weld member including a flat planar portion;
a tubular member protruding perpendicularly from that
weld member at a weld position on the weld member; the
tubular member is formed as a hollow conical shape open at the
mouth, with an inner diameter and an outer diameter increasing
from the weld member to the mouth; and
an arc welder including a welding head operable to hold the
weld member with the large-diameter open mouth of the tubular
member in contact at a weld location to be welded on the
workpiece.
OPINION
Unpatentability of Claims 1-7 over
Either Kondo or Von Daniken, Yoshitaka, and either Oaks or Collins
Claim 1
The Examiner finds that either Kondo or von Daniken discloses a
welding apparatus as claimed except for a hollow tubular member with the
claimed conical shape. Final Action 2. The Examiner relies on Yoshitaka as
disclosing a weld member with a hollow, conically-shaped tubular member
open at the mouth and with an interior diameter that increases toward the
mouth. Id. The Examiner relies on either Oaks or Collins as disclosing a
hollow tubular member with an increasing diameter conical shape on both its
exterior and interior. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
adapt Kondo or von Daniken with a hollow, conically-shaped, tubular
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Appeal2014-005269
Application 13/164,207
member as claimed. Id. According to the Examiner, a person of ordinary
skill in the art would have done this so that the weld member can be more
effectively welded to the work piece.
Appellant traverses the Examiner's rejection by arguing that
Y oshitaka does not teach a tubular member with both an inner diameter and
an outer diameter that increases toward the mouth. Appeal Br. 6. Appellant
argues that Y oshitaka, at best, teaches an inner diameter that increases
toward the mouth, but otherwise has a constant outer diameter along its
length. Id. Appellant argues that neither Oaks nor Collins teaches a welding
process and, instead, teach mechanically fastening a conical member to a
work piece. Id. at 8. According to Appellant, a person of ordinary skill in
the art would not look to either Oaks or Collins to improve the effectiveness
of a welding process. Id. at 8-9.
In response, the Examiner directs our attention to column 1 of Oaks as
disclosing that it was known to use welding as an attachment means. Ans. 5.
The Examiner directs our attention to column 2 of Collins as disclosing
welding. Id.
In reply, Appellant directs our attention to Figure 1 of Collins as
disclosing that nut 1 is mechanically fastened to support plate 10 and then
support plate 10 is welded to the claimed work piece. Reply Br. 5.
Similarly, Appellant directs our attention to Figure 3 of Oaks to show that
the conical portion of Oaks is not welded to a work piece. Id. at 6.
We have reviewed the recited passage in column 1 of Oaks relied on
by the Examiner as disclosing welding. Although it does mention welding
generally, there is no disclosure associating welding with a hollow,
conically-shaped, tubular member. Similarly, the passage of Collins relied
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Appeal2014-005269
Application 13/164,207
on by the Examiner merely discloses mechanically fastening a nut to a cage
that is then welded to support panel 10. Collins, col. 2, 11. 23-31.
Under the circumstances, we agree with Appellant that there is no
teaching in either Oaks or Collins from which a person of ordinary skill in
the art would have learned that using a hollow, conically-shaped tubular
member with both an inner and outer side that increases in diameter in the
direction toward an open mouth provides an improved welding result.
Consequently, the Examiner erred in finding that it would have been obvious
for a person of ordinary skill in the art to combine the prior art in the manner
proposed to achieve the claimed invention.
Accordingly, we do not sustain the unpatentability rejection of claim 1
over either Kondo or Von Daniken, Y oshitaka, and either Oaks or Collins.
Claims 2-7
Claim 2 is an independent claim. Claims App. It is somewhat similar
in scope to claim 1 except that claim 1 is a method claim and claim 2 is an
apparatus claim. Id. Claims 3-7 depend directly from claim 2. Id. The
Examiner's rejection of claim 2 relies on the same finding of fact regarding
the conical shape of the hollow tubular member based on either Oaks or
Collins that we discussed above with respect to claim 1. Final Action 3.
The Examiner's rejection of claim 2 suffers from the same infirmity
that was identified above with respect to claim 1. Thus, for essentially the
same reason expressed above in connection with claim 1, we do not sustain
the unpatentability rejection of claim 2, neither do we sustain the rejection of
claims 3-7 that depend therefrom. See In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (dependent claims are nonobvious ifthe independent claims
from which they depend are nonobvious ).
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Appeal2014-005269
Application 13/164,207
Unpatentability of Claims 9-15 over
Gajovski, Yoshitaka, and either Oaks or Collins
Claims 9-15
Claim 9 is an independent claim and claims 10-15 depend therefrom.
Claims App. As with the rejection of claims 1 and 2, the Examiner's
rejection of claim 9 is predicated on finding that either Oaks or Collins
discloses the claimed conical shape of the hollow, tubular member. Final
Action 3--4. Appellant traverses the rejection using essentially the same
argument that we found persuasive with respect to claims 1 and 2. Appeal
Br. 6-9. We find that argument equally persuasive here.
Accordingly, for essentially the same reasons discussed above with
respect to claim 1, we do not sustain the rejection of claims 9-15.
DECISION
The decision of the Examiner to reject claims 1-7 and 9-15 is
reversed.
REVERSED
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