Steven K. Gilliam

Patent Trials and Appeals Board

Jul 22, 2019

14483449 - (D) (P.T.A.B. Jul. 22, 2019)

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.
14/483,449 09/11/2014 Steven K. Gilliam RDFZ 200003US01 3534
27885 7590 07/22/2019
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
07/22/2019 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 STEVEN K. GILLIAM1
____________________

Appeal 2018-007381
Application 14/483,449
Technology Center 3600
____________________

Before: BRETT C. MARTIN, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1–6, 8, 9, and 20–23. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Appeal Brief indicates that Republic Doors & Frames is the real party
in interest. Appeal Br. 1.
Appeal 2018-007381
Application 14/483,449

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a welded steel door in which a
pan is joined with a lid. Spec. ¶ 1. Claim 1, reproduced below with
emphasis added, is the sole independent claim on appeal.
1. A welded steel door comprising:
a pan including a bottom surface forming a first face of the
door and flanges extending on opposite edges thereof forming
opposite side edges of the door, the flanges having a lid engaging
surface spaced from the bottom surface;
a lid having a top surface forming a second face of the door
opposite the first face, opposite edges of the top surface each
having a hem mated with a respective lid engaging surface of
each flange, the hem including a portion of the top surface folded
back on itself; and
a plurality of projection spot welds[2] securing the lid to
the pan, the projection spot welds spaced along each hem, the
welds extending between the portion of the top surface of the lid
folded back on itself of each hem and the respective lid engaging
surface of each flange.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jessen
Gabbianelli
US 3,252,262
US 2002/0104830 A1
May 24, 1966
Aug. 8, 2002

2 “In the case of projection welding, small, raised projections are embossed
into one of the two mating substrates. When current is passed through
the opposing electrodes, the current travels exclusively through these
small weld projections (-0.040'' dia x 0.035" high).” Gilliam Declaration
¶ 7.
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Application 14/483,449

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EVIDENCE
The evidence relied upon by Appellant in contesting the rejection of
the claims on appeal is:
Steven K. Gilliam’s Declaration under 37 CFR 1.132 (filed on
February 9, 2017) (hereinafter the “Gilliam Declaration”)3
REJECTION
Claim 1–6, 8, 9, 20–23 are rejected under 35 U.S.C. § 103 as
unpatentable over Jessen and Gabbianelli.

OPINION
The Examiner finds that Jessen discloses many of the elements recited
in claim 1, including a pan and lid (bottom skin 10 and top skin 11), but
relies on Gabbianelli to teach the use of projection spot welds in metal
construction. Final Act. 2–3. The Examiner determines that it would have
been obvious to use projection spot welds in place of at least some of the
spot welds4 used by Jessen to secure Jessen’s top skin 11 to bottom skin 10
“in order to be able to apply a weld at an inaccessible location–such as
inside of the door–thereby allowing the welds to be hidden on the finished
produc[t].” Id. at 3.5

3 Steven K Gilliam is the sole named inventor in the present application.
4 In spot welding, “metals in direct contact with each other are squeezed
between opposing weld tip electrodes. While under pressure, current is
passed through the opposing electrodes, making the metal molten across that
entire area of electrode contact.” Gilliam Declaration ¶ 8.
5 After discussing the disclosure of Gabbianelli, the Examiner refers to
MPEP § 2113 and In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) for the
principle that, in product claims, product-by-process limitations are given
patentable weight only to the extent they define the recited structure rather
than the process by which the product was made. Final Act. 3–4. Despite
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Application 14/483,449

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Appellant contends that projection spot welding requires concentrated
electrical current flow through raised projections that provide an electrical
pathway between first and second work pieces. Appeal Br. 4; Gilliam
Declaration ¶ 7. Appellant argues that in Jessen, metal tabs are inserted into
slots in order to provide a secure connection between the two work pieces
and such tabs would interfere with the use of projection welding because the
tabs would create alternate pathways for electric current, reducing the
concentration of electrical power in the projections. Appeal Br. 6; Gilliam
Declaration ¶ 7.
In response, the Examiner refers to Appellant’s Figure 6 and
paragraph 26 of the Specification and finds that the structure Appellant
discloses as usable with projection spot welds is similar to the structure in
Jessen (which Appellant contends is not compatible with projection spot
welds). Ans. 10–14. The Examiner finds that, as shown in Figure 6 and
discussed in paragraph 26, Appellant’s lip 52 engages end face 54 and
restricts movement of the work pieces described in Appellant’s
Specification. The Examiner finds that this would result in creation of the
same allegedly undesirable alternate pathway that Appellant asserts would
be created by the Examiner’s proposed modification to the structure of
Jessen. Id. at 10–11. The Examiner states:
The workpieces in Jessen would be equally spaced as those used
by Applicant. Therefore, [Appellant’s] argument essentially
boils down to whether or not the energy is allowed to
concentrate. The teaching of projection welds by the secondary

this reference to MPEP § 2113 and Thorpe, the rejection of claim 1 appears
to give the term “projection spot weld” in claim 1 patentable weight
inasmuch as the rejection relies specifically on Gabbianelli to disclose
projection spot welds. See id. at 3.
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Application 14/483,449

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reference of Gabbianelli . . . would accomplish this required
spacing and concentration of energy because energy could be
applied locally, therefore the combination and the invention
would both function in the same way: reliance on the projection
welds for required spacing.

Id. at 11–12.
In reply, Appellant contends that although lip 52 can be used to
position lid 32 relative to pan 30 prior to projection welding, a person of
ordinary skill in the art would understand that lip 52 is not in contact with
pan 30 (the opposing work piece) during projection welding. Reply Br. 3.
Rather, according to Appellant, lip 52 drops into slot S of pan 30 as
projections 46/66 are melted during the welding process. Id. Thus,
according to Appellant, no undesirable alternative electrical pathway is
created by contact between lip 52 and pan 30.
In contrast, Appellant argues, the structure of Jessen requires
significant, continuous contact before and during the performance of spot
welding. Id. at 3–6. Specifically, according to Appellant, Jessen requires its
lid and pan to be placed into contact so that tab 35 is inserted into slot 34 and
then the lid is shifted relative to the pan in order to position tab 35 into a
position that locks the lid and pan together. Id.; see also Fig. 6.
Appellant’s argument is persuasive. Although we appreciate the
Examiner’s finding Appellant’s lip 52 engages with slot S (Ans. 10–14), the
Examiner has not demonstrated that any contact provided by this
engagement would equate to the amount of contact required by the structure
in Jessen. As shown in Figures 7 and 9 of Jessen, tab 35 of top skin 11 is
initially inserted into slot 34 of bottom skin 10 (as shown in dashed lines),
and then moved into a final position locking top and bottom skins 11 and 10
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Application 14/483,449

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together. See Jessen 2:50–3:5. Jessen explains that this locking position is
created via a wedging action between tab 35 and skin 10. See id. As shown
in Figure 9 of Jessen, this wedging action appears to result in a relatively
large amount of surface area being placed in contact between skin 10 and 11.
Thus, we agree with Appellant that the assembly process disclosed by Jessen
would provide an alternate electrical pathway that would interfere with the
energy concentration required for projection spot welding. Accordingly, a
person of ordinary skill in the art would not have found it obvious to modify
Jessen to include projection spot welds as proposed by the Examiner. We do
not sustain the rejection of claim 1 and associated dependent claims 2–6, 8,
9, and 20–23 as unpatentable over Jessen and Gabbianelli.

DECISION
The Examiner’s rejection of claims 1–6, 8, 9, 20–23 is reversed.

REVERSED