Ex Parte Cigelske

Board of Patent Appeals and Interferences

Aug 12, 2009

10811520 (B.P.A.I. Aug. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES J. CIGELSKE, JR.
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Appeal 2009-003625
Application 10/811,520
Technology Center 1700
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Decided: August 12, 2009
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 9-11 and 38-43.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. Claim 9 is
illustrative:
9. A shield for preventing arcing from an electrical stud of a portable
welding apparatus, the shield comprising a generally inverted U-shaped
configuration adapted to at least partially surround the electrical stud, the
shield constructed of a non-conductive material, the inverted U-shaped
shield having a first planar side having an upper edge, a second planar side
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Application 10/811,520

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extending inwardly from the upper edge of the first planar side and having
an inner edge, the second planar side oriented in a plane generally
perpendicular to the plane of the first planar side, a third planar side
extending from the inner edge of the second planar side, the third planar side
oriented in a plane generally parallel to the plane of the first planar side to
form the inverted U-shape.

The Examiner relies upon the following reference as evidence of
obviousness:
Bowsky et al. (Bowsky) US 5,129,843 Jul. 14, 1992
Appellant's claimed invention is directed to a shield for preventing
arcing from an electrical stud of a portable welding apparatus. The shield
comprises a generally inverted U-shaped configuration that is adapted to at
least partially surround the electrical stud.
Appealed claims 9-11 and 38-43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bowsky.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection.
Bowsky, like Appellant, discloses a plastic shield for preventing
arcing around an electrical stud. The shield of Bowsky comprises a plastic
block 8 which includes three open-ended cylindrical wall shields 14 that are
integrally molded onto the outer surface of the plastic block 8. Appellant
has not refuted the Examiner's factual finding that Figure 1 of Bowsky
depicts block 8 of the shield as generally U-shaped "with the 'U'" lying on its
left side in the figure" (Ans. 5, second. para.). Also, since the claimed shield
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Application 10/811,520

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is "adapted to at least partially surround the electrical stud," the claims
embrace a shield which entirely surrounds the electrical stud. Manifestly, a
shield which entirely surrounds the stud meets the requirement for at least
partially surrounding the stud. Hence, the shield of Bowsky which
comprises cylindrical wall shields 14 is adapted to at least partially surround
the electrical stud.
Moreover, as noted by the Examiner, Bowsky expressly teaches that
"[i]t is to be understood that the shape and number of wall shields can be
varied in accordance with the terminal assembly pins with which they are to
be associated" (col. 4, ll. 24-27). Accordingly, we agree with the Examiner
that it would have been prima facie obvious for one of ordinary skill in the
art to select any known shape for shield 14 of Bowsky, including a U-shape,
if it was not necessary to totally surround the electrical stud to prevent
arcing. We observe that Appellant's Specification attaches no criticality to
the particular shape of the shield but teaches that the bottom of the shield is
open due to the absence of conductive components in that area. In
particular, Appellant's Specification discloses that "[t]he space directly
below the electrical stud 44 can be basically left with no shielding material
since there are no conductive components in the near vicinity in the
downward direction since only the plastic louvers 36 are in that area”
(page 10, first para.). Hence, in the absence of demonstrated criticality, we
are confident that one of ordinary skill in the art would have found it
obvious to partially or entirely shield an electrical stud contingent upon the
areas that are susceptible to arcing.
Claim 11 recites that the shield is made of biaxially-oriented
thermoplastic film having a specified thickness. The Specification states
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Application 10/811,520

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that the plastic material for the shield is preferably MYLAR having a
thickness preferably within the recited range. Bowsky, on the other hand,
teaches that the shield can be molded "from any one of a number of known
plastic compounds, advantageously with hard, insulative physical
properties" (col. 3, ll. 48-50). Consequently, we agree with the Examiner
that Bowsky would have suggested the use of a notoriously, well-known
thermoplastic material for the shield. Appellant's Specification attaches no
criticality to the use of MYLAR and the stated preference for such a
material, as well as its thickness, would seem to allay any suggestion of
criticality. Furthermore, we agree with the Examiner that it would have
been obvious for one of ordinary skill in the art to resort to routine
experimentation to determine the optimum thickness of the shield to achieve
effective prevention of arcing.
Claim 38 calls for the shield being affixed to an internal surface of a
welding apparatus housing. While Bowsky is not specifically directed to a
welding apparatus, Appellant's Specification acknowledges that such
apparatus were known in the art at the time of filing the present application.
Consequently, if arcing was a problem associated with known welding
apparatus, we are satisfied that one of ordinary skill in the art would have
found it obvious to employ a plastic shield of the type disclosed by Bowsky
around electrical studs that are susceptible to arcing. Appellant does not
state that discovery of the arcing problem is part of the present invention. In
any event, we are persuaded that appreciation of the problem, as well as its
solution, would have been obvious to one of ordinary skill in the art. In re
Ludwig, 353 F.2d 241, 244 (CCPA 1965).
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Application 10/811,520

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As for the claim 39 requirement for having at least one of the sides of
the shield interfitting with a plurality of ribs on the internal surface of the
housing, we find that the use of ribs, a conventional attachment means, for
securing the shield to the housing would have been obvious to one of
ordinary skill in the art. Appellant has presented no reason why the use of
such a well-known means for attaching elements would have been
nonobvious to one of ordinary skill in the art. We also agree with the
Examiner that Bowsky evidences the obviousness of positioning the shield
intermediate the electrical stud and the housing of the apparatus. Again, we
are confident that one of ordinary skill in the art would have found it
obvious to determine the effective locations of the shield for the prevention
of arcing.
As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims 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)(1)(v)(2008).
AFFIRMED

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