Ex Parte Bruce

Board of Patent Appeals and Interferences

Jul 1, 2012

11142109 (B.P.A.I. Jul. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL W. BRUCE
____________________

Appeal 2010-007575
Application 11/142,109
Technology Center 3700
____________________

Before: STEVEN D.A. MCCARTHY, KEN B. BARRETT, and BRETT C.
MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007575
Application 11/142,109

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

THE CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter is directed to gas shielding for
welding processes. Spec., para. [0001]. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An apparatus for providing gas to a rotating workpiece
receiving a welding operation on a weldpoint from a welding
nozzle, the apparatus comprising:
a housing having an inner surface that defines a chamber
configured so as to partially enclose at least a portion of the
rotating workpiece, wherein the housing and the welding nozzle
are stationary and located on a line perpendicular to a plane of
rotation of a control table upon which the rotating workpiece is
secured;
a nozzle clamp coupled to the housing and configured so
as to attach to the welding nozzle so that the weldpoint of the
rotating workpiece rotates within the chamber after receiving a
welding operation; and
a gas disperser disposed within the chamber, the gas
disperser adapted to receive a flow of shield gas from a shield
gas source and configured, upon receipt of the shield gas, to
disperse the shield gas within the chamber.

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Application 11/142,109

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dyer
Erikson
US 4,839,489
US 6,000,600
Jun. 13, 1989
Dec. 14, 1999
Adams US 2002/0185476 A1 Dec. 12, 2002

REJECTIONS
The Examiner made the following rejections and objection:
Claim 7 stands rejected under 35 U.S.C § 112, first paragraph, as
failing to comply with the enablement requirement. Ans. 4.
Claims 1-20 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Dyer in view of Erikson. Ans. 5.
The Examiner objects to a proposed amendment to the drawing as
containing new matter.1

1 Appellant seeks to appeal this objection. Br. 11-12. Ordinarily,
drawing objections are not appealable to the Board. Ex parte Frye, 94
USPQ2d 1072, 1077-78 (BPAI 2010) (precedential). One exception is that a
drawing objection may be appealed to the Board where the objection is so
closely related to an appealed rejection that a review of the merits of the
rejection must also address the Examiner’s reasons for entering the
objection. Here, the Examiner rejects claim 7 under 35 U.S.C. § 112, first
paragraph, for lack of enablement. Ans. 4. Lack of enablement and new
matter are separate issues, however. Ariad Pharm., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Because the drawing
objection is not properly before us in this appeal, we do not address it
further.

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ISSUES
Did the Examiner properly reject claim 7 under 35 U.S.C. § 112, first
paragraph, as being non-enabled?
Did the Examiner properly reject claims 1-20 under 35 U.S.C.
§ 103(a) as unpatentable over Dyer in view of Erikson?

ANALYSIS
The Examiner Did Not Properly Reject Claim 7 under 35 U.S.C.
§ 112, First Paragraph, for Lack of Enablement
The Examiner rejected claim 7 as failing to comply with the
enablement requirement. Ans. 4. As Appellant states, the proper “test for
enablement is whether Applicant’s disclosure is sufficient for one of
ordinary skill in the art to make and use the invention without undue
experimentation (Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916); In
re Wands, 858 F.2d 731,737 (Fed Cir. 1988)).” Br. 9. For the reasons stated
by Appellant (Br. 9-10), we agree that one of skill in the art familiar with the
Specification would not have to engage in undue experimentation merely to
add more than one dispersal tube as claimed in original claim 7. We
therefore reverse the Examiner’s rejection of claim 7.

The Examiner Properly Rejected Claims 1-20 under 35 U.S.C.
§ 103(a) as Unpatentable over Dyer in View of Erikson.
Appellant asserts three sub-arguments as to why the combination of
the teachings of Dyer and Erikson does not establish a prima facie case for
obviousness. Br. 14-16. These three sub-arguments, however, essentially
boil down to one main argument recited three times; namely that the
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combination of Dyer and Erikson allegedly renders the combined device
unfit for its intended purpose.2 Appellant furthers this argument by creating
a false choice between two devices that would be unfit for the intended
purpose.
According to Appellant, combining the teachings of Dyer with
Erikson results either in replacing Dyer’s moving torch and trailing housing
with the stationary torch in Erikson, thus “fail[ing] to provide an inert gas
envelope over a continuous seam weld” (Br. 15), or in “a moving
torch/trailer dragging across the moving disk [that] would disrupt the
positioning of the disk” and would thus defeat Erikson’s desire to “weld [a]
fragile disk to [a] sensor body without disrupting the position of the disk”
(id.). While both of these statements regarding Appellant’s proposed
combinations may be accurate, they do not represent the full universe of
choices for the result of combining the teachings of Erikson with Dyer.
Thus, they do not outweigh the Examiner’s reasoning.
If we look at a third choice, not argued by Appellant, but the one
actually set forth by the Examiner, we see the validity of the proposed
combination:
However, a housing and a welding nozzle being
stationary and located on a line perpendicular to a plane of
rotation of a control table upon which the rotating workpiece is
secured is known in the art. Erikson et al., for example, teach
an apparatus performing a welding around a circular disk in
which the housing and the welding nozzle (laser welder or TIG

2 See e.g., “the result would have instead yielded a system unfit for Dyer’s
intended purpose[,]” (Br. 14, para. A.), “the result would have yielded a
system unfit for its intended purpose[,]” (Br. 16, para. B.), “[a] modification
that renders the base device unfit for its intended purpose rebuts a prima
facie case of obviousness under In re Gordon[,]” (Br. 17, para. C.).
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welders; column 3, lines 30-41) are stationary and located on a
line perpendicular to a plane of rotation of a control table
(flange 38/spindle 28 combination) upon which the rotating
workpiece (sensor body 14) is secured (column 2, line 18 –
column 5, line 13; see Figure 1).

Ans. 8.
The proper teaching to be gleaned from Erikson and combined with
Dyer is that it was known in the art to hold a weld nozzle “stationary and
located on a line perpendicular to a plane of rotation” (Claim 1) of the
workpiece so as to accurately weld the workpiece. So, taking that teaching
and applying it to Dyer merely suggests to one of ordinary skill in the art
that it is known to fix a stationary weld tip at the angle shown in Erikson
over a rotating workpiece (Fig. 1) rather than moving a weld nozzle and
housing over a stationary workpiece as shown in Dyer (Figs. 1-4). The
result is an obvious combination that forms a proper basis for rejecting the
claims.
Appellant has not asserted that the Examiner has omitted any elements
of the claims at issue, merely that the combination is improper. Essentially
all that is “wrong” with Dyer, as conceded by Appellant by not arguing any
missing elements, is that it operates a moving weld nozzle and associated
housing with almost all of the properties claimed by Appellant over a
stationary workpiece. The combination suggested by the Examiner utilizes
welding and inert gas supply features of Dyer, but alters the weld nozzle
angle and then fixes the weld nozzle and housing while rotating the
workpiece as taught by Erikson. This essentially just flips which of the two
is moving and which is stationary. We find that such a modification would
have been within the capability of one of ordinary skill in the art and would
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not result in an apparatus unfit for its intended purpose. See e.g., Optivus
Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989-90 (Fed. Cir. 2006)
(affirming a finding of obviousness, in a situation where no missing
elements were noted, over patent holder’s argument that the proposed
combination “would result in a ‘death ray’ and thus teaches away” from the
claimed invention; and finding that one of skill in the art would understand
the combination to be an operable apparatus).
Also, obviousness does not require “one of ordinary skill in the art to
physically combine the mechanical elements” (see Br. 16) of the prior art,
but merely allows combination of teachings within the knowledge of one of
skill in the art. Here, we find that the Examiner provided an articulated
reasoning to combine the teachings of Dyer and Erikson with some rational
underpinning to support the legal conclusion of obviousness and that that
combination renders claims 1-20 unpatentable. Ans. 8. Accordingly, we
conclude that the Examiner has properly rejected claims 1-20 over the
combination of the teachings of Dyer and Erikson and we affirm this
rejection.

CONCLUSION
On the record before us, we find that the Examiner did not properly
reject claim 7 for lack of enablement. We conclude, however, that the
Examiner did properly reject claims 1-20 as unpatentable over the
combination of the teachings of Dyer and Erikson.
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DECISION
For the above reasons, the Examiner’s rejection of claim 7 for lack of
enablement is REVERSED. The Examiner’s obviousness rejection of
claims 1-20 is AFFIRMED.
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)(1)(iv).

AFFIRMED-IN-PART

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