Ex Parte 5,349,153 et al

Patent Trial and Appeal Board

Dec 17, 2012

90010912 (P.T.A.B. Dec. 17, 2012)

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.
90/010,912 03/12/2010 5,349,153 LEK-102-1 4661
79389 7590 12/17/2012
The Weintraub Group, P.L.C.
24901 Northwestern Highway
Suite 311
Southfield, MI 48075
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/17/2012 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 Brian Prucher
1

Appellant
____________________

Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153
2

Technology Center 3900
____________________

Before DANIEL S. SONG, RAE LYNN P. GUEST and
JOSIAH C. COCKS, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1
Inventor Bryan Prucher is the real party in interest (Appeal Brief
(hereinafter "App. Br.") 1).
2
Issued September 20, 1994 (hereinafter "'153 patent").
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

2
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a
Final Rejection of claims 1-4, 6-10 and 12-19, claims 5 and 11 having been
canceled while claims 13-19 have been added during the reexamination
(Answer (hereinafter "Ans.") 3; Appeal Brief (hereinafter "App. Br."),
Claims Appendix).
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. The '153
patent is the subject of litigation entitled Prucher v. CMW International,
Inc., 5:10-cv-14246-JCO-VMM (E.D. Mich. 2010) which has being stayed
pending the present reexamination proceeding (App. Br. 2; Ans. 3).
The invention is directed to a spot welding electrode cap and a method
for using the same. Representative independent claim 1 reads as follows
(App. Br., Claims Appendix
3
, amendments to the claims shown, italics
added for emphasis):
2 [sic, 1]. (Presently Amended) A spot welding electrode cap
for spot welding a coated metal workpiece comprising:
(a) a housing having an open end and a closed end the
housing having a cavity formed therein partially
extending from the open end toward the closed end;
(b) a mounting portion for mounting to an electrode adapter,
the mounting portion being disposed proximate the open
end of the housing;
(c) a unitary tip portion of uniform material throughout, the
tip portion being integral with the mounting portion and
being disposed proximate the closed end of the housing,
the tip portion having [a] an interior cooling wall and
[an integral] a linear end wall integral therewith, the
cooling wall having a curvilinear section at the junction
with the end wall, the cooling wall and end wall

3
We note that claim 1 has been misnumbered as claim 2 in the Claims
Appendix.
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

3
surrounding and defining the cavity within the tip
portion, the tip portion having an outer surface and an
inner surface, the inner surface being substantially
parallel to the outer surface; and wherein the cavity, the
cooling wall, the end wall and the parallel surfaces of the
tip portion cooperate to define a non-alloying contact
surface, and wherein a portion of the outer surface
defines a planar contact surface, the end wall being
parallel to the contact surface, and
(d) wherein the electrode cap is a replaceable-finned-female
electrode cap.

The evidence relied upon by the Examiner in rejecting the claims is:
Johnson 2,446,932 Aug. 10, 1948
Prucher 5,041,711 Aug. 20, 1991
Catalog Resisting Welding Products, P.R. Mallory & Co. Inc. (1974)
(hereinafter "Mallory").

The Examiner rejected claims 1-4, 7-10, 12 and 14-17 under 35
U.S.C. § 103(a) as unpatentable over Prucher in view of Johnson.
The Examiner also rejected claims 6, 13, 18 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Prucher in view of Johnson, and further in
view of Mallory.
We REVERSE.

ISSUES
The following issues are dispositive to the present appeal.
1. Whether the Examiner erred in construing the claim so that the
outer surface need not include a portion that is parallel to the recited
curvilinear portion.
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

4
2. Whether the Examiner has adequately set forth a prima facie
case of obviousness of the claims at issue.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. A. Prucher discloses a spot welding electrode (Abstract). Figure 1
of Prucher is reproduced below.

Figure 1 of Prucher shows a partial cross sectional
elevation view of the spot welding electrode 6 including a cap
portion 10 (col. 2, ll. 59-60; col. 3, ll. 35-38; Fig. 1).
B. Figure 7 of Prucher is reproduced below.

Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

5
Figure 7 of Prucher shows an elevation view of a spot
welding electrode in accordance with another embodiment, the
interior profile of the tapering upper portion 53 and fins 56 in
the internal cavity 54 being illustrated by broken lines (col. 3,
ll. 3-5; col. 5, l. 65-col. 6, l. 9; Fig. 7).

2. A. Johnson discloses a welding apparatus (Title; col. 1, l. 1-6).
Figure 12 of Johnson is reproduced below.

Figure 12 of Johnson shows a partial cross sectional
elevation view of a welding apparatus (col. 3, ll. 62-64; Fig.
12).
B. Johnson states "[c]oolant entering the pocket 122 is caused
to flow along the rounded surface portions a into the passages
118." (Col. 8, ll. 46-48).
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

6
C. Johnson discloses that "metal pickup" is a problem in
resistance welding of certain low resistance metals such as
aluminum, and has "given rise to a decided need for improving
the cooling arrangements for electrodes." (Col. 1, ll. 45-52).

ANALYSIS
Claims 1-4, 7-10, 12 and 14-17
The Examiner rejects these claims finding that Prucher discloses most
of the limitations recited therein, and "Figure 7 of Prucher shows the interior
and exterior endwalls being parallel." (Ans. 5). The Examiner concedes that
"Prucher does not explicitly discuss the junction of the sidewalls and the
linear end wall being a curvilinear section or the components cooperating to
define a non-alloying contact surface." (Ans. 5; FF 1). However, the
Examiner relies on Figure 12 of Johnson as disclosing "the cooling wall
having a curvilinear section at the junction with the end wall" because it
discloses "rounded surface portions a." (Ans. 5; FF 2A, 2B). The Examiner
also relies on Johnson for disclosing the problem of metal pick-up which
corresponds to non-alloying recited in the claims (Ans. 5-6; FF 2C). The
Examiner concludes that it would have been obvious to one of ordinary skill
to modify the electrode cap of Prucher in view of Johnson to provide a
curvilinear section to promote even coolant flow, and would recognize that
such combination would reduce metal pick-up, and thus, reduce alloying of
the workpiece (Ans. 6).
The Patent Owner argues, inter alia, that the limitation "inner surface
being substantially parallel to the outer surface" should be interpreted so that
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

7
"[t]he entirety of the inner surface of the cooling walls, end walls, and the
respective junctions therebetween, must be substantially parallel to the
complementary outer surface thereof to prevent any variation in cooling
within the wall." (App. Br. 9) (emphasis in original). The Patent Owner
asserts that the Examiner has overlooked the proper meaning of the claims
(App. Br. 9). The Patent Owner argues that "the combination of Prucher and
Johnson does not disclose: the entirety of the inner surface of the cooling
wall, end walls, and the respective junctions therebetween, being
substantially parallel to the outer surfaces of the cooling walls, end walls,
and the respective junctions therebetween to prevent any variation in cooling
within the wall." (App. Br. 11; see also App. Br. 9).
The Examiner disagrees with the Patent Owner's interpretation and
contends that the junction having a parallel surface "is never discussed," that
"the figures of the '153 patent all show an end wall that is thicker than the
side walls, which makes a parallel junction impossible," and that there is "no
support for the parallel nature of the inner and outer surfaces extending over
the entire surfaces, including the junctions." (Ans. 18; see also Ans. 12).
We agree with the Patent Owner. As to claim interpretation, all of the
claims on appeal recite that "the tip portion [has] an interior cooling wall and
a linear end wall." Thus, the cooling wall is part of the tip portion. The
claims also state that the "cooling wall [has] a curvilinear section at the
junction with the end wall." Hence, the curvilinear section is part of the
cooling wall. The claims further require that the outer surface and the inner
surface of the tip portion be substantially parallel. Correspondingly, because
the curvilinear section is part of the cooling wall (which in turn, is part of the
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

8
tip portion), the recited parallel relationship between the outer surface and
the inner surface of the tip portion encompasses the recited curvilinear
section.
With the above claim construction, we are in agreement with the
Patent Owner that neither Prucher nor Johnson discloses an outer surface
that can be reasonably be said to be parallel to the interior surface of the
curvilinear section at the junction with the end wall. As conceded by the
Examiner, Prucher does not disclose such a curvilinear section (Ans. 5; FF
1). Whereas Johnson discloses "rounded surface portions a" which
corresponds to a curvilinear section recited in the claims, it discloses a
chamfer on its outer surface which cannot be reasonably said to be
"substantially parallel" to the "rounded surface portions a." (FF 2A). Thus,
the combination of Prucher and Johnson suggested by the Examiner fails to
result in the invention claimed. The Examiner does not provide a rational
reason for further modifying the combination of Prucher and Johnson to
provide an outer surface that is substantially parallel to the rounded surface
portions, a feature that the Patent Owner argues is required to prevent any
variation in cooling within the wall (App. Br. 9).
The Examiner's arguments in support of the different claim
interpretation applied in the rejection touch on issues of descriptive support
and/or definiteness (Ans. 18; see also Ans. 12). We observe that the issue as
to whether there must be a parallel outer surface corresponding to the
curvilinear section arose due to the limitation "the cooling wall having a
curvilinear section at the junction with the end wall." This limitation was
added by amendment to the reexamined claims (see independent claims 1
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

9
and 7) or presented in new claims added during the reexamination (see
independent claims 13, 14 and 19). To the extent that the Examiner is of the
opinion that the pertinent limitation renders the claims unsupported by the
specification of the '153 patent, or otherwise renders the meaning of the
claims unclear, the Examiner could have set forth rejections on such bases.
However, the rejection presently before us on appeal is merely that of
obviousness.
In view of the above, the Examiner has not set forth an adequate
prima facie case of obviousness of the claims at issue and the obviousness
rejection of claims 1-4, 7-10, 12 and 14-17 is not sustained. The remaining
arguments between the Patent Owner and the Examiner with respect to these
claims are moot.

Claims 6, 13, 18 and 19
The Examiner also rejected claims 6, 13, 18 and 19 as obvious over
the combination of Prucher, Johnson and Mallory. This rejection relies on
the same application of the improper claim construction and the combination
of Prucher and Johnson discussed supra, the Examiner relying on Mallory
merely for disclosing the specific thickness of the closed end wall (Ans. 10-
11). Thus, this rejection is also not sustained for the reasons already
discussed.

CONCLUSIONS
1. The Examiner erred in construing the claims.
Appeal 2012-007910
Reexamination Control 90/010,912
Patent No. 5,349,153

10
2. The Examiner has not adequately set forth a prima facie case of
obviousness of the claims at issue.

ORDER
The Examiner's rejections are REVERSED.

REVERSED

ack
CC:
Patent Owner:
THE WEINTRAUB GROUP, P.L.C.
24901 NORTHWESTERN HIGHWAY
SUITE 311
SOUTHFIELD, MI 48075

Third Party Requester:

WOODARD, EMHARDT, MORIARTY, MCNETT & HENRY LLP
111 MONUMENT CIRCLE
SUITE 3700
INDIANAPOLIS, IN 46204-5137