Ex Parte Delgado

Board of Patent Appeals and Interferences

Jan 16, 2008

10679880 (B.P.A.I. Jan. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID DELGADO
____________

Appeal 2008-0558
Application 10/679,880
Technology Center 1700
____________

Decided: January 16, 2008
____________

Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-27, 35, and 37-42, which are the only claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections of claims 18-27, reverse the rejections of
claims 1, 3-17, 35, and 37-42, and set forth a new ground of rejection of
claims 35, 37, 38, 40, and 41.

Appeal 2008-0558
Application 10/679,880

I. BACKGROUND
The invention relates to a welding implement. Independent claims 1,
10, 18, and 35 are illustrative:
1. A flexible welding implement, comprising:

a torch head operable to couple electricity to a welding
electrode disposed therein;

a cooling fluid supply tube operable to convey a cooling fluid to
the torch head;

a cooling fluid return tube operable to convey the cooling fluid
from the torch head;

a first biasing member comprising a helix of non-tubular
material defining an axial flow path and operable to flexibly and
fluidicly couple the cooling fluid supply tube to the torch head such
that the cooling fluid flows axially through the flow path of the first
biasing member; and

a second biasing member comprising a helix of non-tubular
material defining an axial flow path and operable to flexibly couple
the cooling fluid return tube to the torch head.

10. A flexible welding implement, comprising:

a torch coupleable to a handle, comprising:

a torch head operable to receive a cooling liquid; and

a plurality of non-tubular coils disposed generally
parallel with one another and with an axis of the handle
within the torch to enable the torch head to be displaced
relative to the handle, wherein the torch directs the
cooling liquid to flow through the coils to and from the
torch head.
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18. A welding instrument, comprising:

a torch, comprising:

a torch head;

a tripod support system secured to the torch head to
flexibly support the torch head, the tripod support system
comprising:

a first leg comprising a first spring;

a second leg comprising a second spring; and

a third leg comprising a third spring;

the springs being disposed generally parallel to an axis of
a handle support the torch head.

35. A welding instrument, comprising:

a torch head;

a plurality of tubes operable to convey fluids; and

a plurality of coils comprising a helix of non-tubular
material defining an axial flow path and secured to the torch
head to enable to torch head to be angled relative to the
plurality of tubes and to route fluids axially through the coils.

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Application 10/679,880

The Examiner relies upon the following prior art as evidence of
unpatentability:
Keller US 4,145,595 Mar. 20, 1979
Willgohs US 3,999,033 Dec. 21, 1976
Rehrig US 5,403,987 Aug. 5, 1995
Delgado US 6,855,905 Feb. 15, 2005

Appellant’s Admission of Prior Art (AAPA); Specification 1-2, ¶ [0003]

Claims 18-21 stand rejected under 35 U.S.C. § 102(b) and/or 102(a)
as being anticipated by AAPA.
Claims 1, 3, 10, 11, 13-25, 35, and 37-41 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Keller.
Claims 4-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller in view of Delgado. Claim 12 stands rejected under
35 U.S.C. § 103(a) as being unpatentable over Keller in view of Rehrig.
Claims 26, 27, and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller in view of Willgohs.
Appellant does not separately argue with any reasonable specificity
the individual claims rejected under 35 U.S.C. § 102 over AAPA (Br. 7-8).
Therefore, we select independent claim 18 to decide this issue on appeal
regarding claims 18-21. Appellant also does not separately argue with any
reasonable specificity the individual claims rejected using Keller, except to
focus on independent claims 1, 10, and 35 (Br. 9-13). Thus, we will focus
on each of the independent claims to decide this issue on appeal regarding
all the claims.

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ISSUES ON APPEAL
The first issue is whether the Appellant has shown that the Examiner
reversibly erred in rejecting claims 18-21 as anticipated by AAPA.
For the reasons that follow, we agree that the Examiner has
established that these claims are anticipated by AAPA.
The second issue is whether the Appellant has shown that the
Examiner reversibly erred in rejecting claims 1, 3, 10, 11, 13-25, 35, and 37-
41 as being anticipated by Keller.
For the reasons that follow, we determine that the Examiner has
established a prima facie case of anticipation with respect to claims 18-25,
and also has established a prima facie case of obviousness with respect to
claims 26 and 27 dependent thereon in view of the reference evidence,
which prima facie case has not been adequately rebutted by Appellant’s
arguments. However, we reverse the rejections of claims 1, 3-17, 35, and
37-42 for the reasons set forth below. We also enter a new ground of
rejection on claims 35, 37, 38, 40, and 41.
Thus, the decision of the Examiner to reject the claims on appeal is
AFFIRMED-IN-PART.

OPINION
The § 102 Rejection over AAPA
We determine the following Factual Findings (FF) from the record in this
appeal:
1. The Admission of Prior Art (AAPA) in the Specification describes
a torch head with three tubes (that is, legs) attached thereto to secure the
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torch head to the torch. One tube conveys shield gas, another tube conveys
cooling liquid to the torch head and a third tube conveys cooling fluid from
the torch head. Each tube is coiled to provide flexibility, and may be flexed
to reposition the torch head. Thus, each tube comprises a spring. (See Spec.
1-2, ¶ [0003]). Appellant disputes that these three legs of AAPA comprise a
“tripod support system” because the tubes are described as “coiled around
each other” (Br. 8).
2. The plain meaning of the word “tripod” includes a three-legged
stand or support. 1

“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
However, the law of anticipation does not require that the reference
‘teach’ what the subject patent teaches. Assuming that a reference is
properly ‘prior art,’ it is only necessary that the claims under attack, as
construed, ‘read on’ something disclosed in the reference, i.e., all limitations
of the claim are found in the reference, or ‘fully met’ by it. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).

1 "tripod" Dictionary.com Unabridged (v 1.1). Random House Inc., 04 Jan.
2008 .

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Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has properly identified
factual findings and reasoning for establishing a prima facie case of
anticipation based on AAPA which Appellant has not adequately rebutted by
the arguments of record
Implicit in our review of the Examiner’s anticipation analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997). During examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Although claims are to be interpreted in light of the
specification, limitations from the specification are not to be read into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Accordingly, we must first construe the disputed term “tripod support
system” as found in the pertinent clause of claim 18 on appeal. According to
Appellant’s Specification (5-6: ¶ [0020]-[0023]), the welding torch has three
tubes (56, 58 and 60) for conveying various fluids and each tube is
respectively coupled to another tube (70, 72, 74) via a respective spring 76,
80, 82. Appellant’s Specification then states “…the embodiments describe a
tripod support system…” (Spec. 7: ¶ [0026])2. However, we cannot limit
the scope of a disputed term by the preferred embodiments absent an express
disclaimer by Appellant of a broader definition. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). Since Appellant presents no express disclaimer

2 This paragraph and original claim 18 are the only places in the
Specification that use the phrase “tripod support system”.
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in the Specification, we find that “tripod support system” as used in claim 1
includes any three-legged stand or support (FF 2).
Using this definition, we determine that the three coiled tubes of the
AAPA does meet the disputed claim language. Appellant argues that the
three coiled tubes of the AAPA are not a tripod support system because “By
definition, the three biasing members of the recited tripod support system
must be uncoupled…” from one another (Br. 8). We disagree. Appellant
has provided no evidence as support for this definition (at Br. 8) of “tripod
support system.” There is no reason to believe that the three coiled
tubes/legs of the AAPA will not function to flexibly support the torch head.
For the reasons well stated by the Examiner, the claims do not require that
each leg be “uncoiled” or “uncoupled” from one another. 3 The
Specification contains no explicit definition of “tripod support system”
which requires three uncoupled legs, and we decline to read this into it.
Thus, we agree with the Examiner and determine that the Examiner
has established that the AAPA does describe a tripod support system as
claimed. We, therefore, conclude that claim 18 is anticipated by AAPA.
For these reasons, we affirm the Examiner’s § 102 rejection based on
AAPA of claims 18-21.

The § 102 and § 103 Rejections over Keller
We determine the following additional Factual Findings (FF) from the
record in this appeal:

3 We note that Appellant has declined the invitation from the Examiner to
amend his claims to explicitly claim this argued but unclaimed distinction
(Ans. 10).
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3. Keller describes a torch head that may be flexed relative to the body
by the construction of a double helix formed of a pair of side-by-side coils
embedded in a elastomeric material 28 (col. 4, ll. 13-16; Figs. 3 and 4). The
torch body has a bore 29 for conveying shield gas to the torch head (col. 4,
ll. 44-51; Figs. 3 and 4).
4. Keller describes that it is feasible to make the double helix of
tubular rather than solid wire (col. 5, ll. 19-21). This is useful when it is
needed to supply a cooling liquid for the torch through the helix (col. 5, ll.
22-23). “In this case, one coil of the double helix serves as a flow inlet and
the other as a flow outlet, …” (col. 5, ll. 24-25, emphasis added). The bore
29 will still provide a passage for the supply of shielding gas (Keller; col. 5,
ll. 26-27).
5. Thus, we determine that, when the side-by-side coils of the double
helix of Keller are used to provide a cooling liquid to and from the torch
head, the coils are no longer “non-tubular”.

Applying the legal principles previously set forth with respect to
anticipation to the factual findings regarding Keller, we determine that the
Examiner has not properly identified factual findings and reasoning for
establishing a prima facie case of anticipation based on Keller with respect
to independent claims 1, 10, and 35.
In order to meet all the limitations of independent claims 1, 10 and
35, the Examiner’s position is that Keller implicitly teaches that both a
plurality of solid wires and a plurality of tubular wires may be present in
the welding instrument (Ans. 11-12). We can not agree. As argued by
Appellant, once one follows the sole teaching in Keller to make the wires
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tubular to convey cooling liquid to and from the torch head, there are no
longer first and second biasing members comprising a helix of non-tubular
material in Keller as required by claim 1, nor a plurality of coils of non-
tubular material in Keller as required by claim 35.4 The only express
teaching in Keller, as pointed out by Appellant, is to make each wire of the
double helix tubular to convey cooling liquid to and from the torch head
(FF 4 and 5). We do not see any teaching in Keller, implied or otherwise,
to have a plurality of tubular wires/coils to convey the cooling fluid to and
from the torch head and a plurality of non-tubular wires/coils as proposed
by the Examiner. Thus, we agree with Appellant that the interpretation of
Keller set forth by the Examiner is incorrect and concomitantly that Keller
does not anticipate independent claims 1, 10, and 35.
We are constrained by these circumstances to reverse the Examiner’s
rejections based on Keller of claims 1, 3-17, 35, and 37-42.
However, Appellant has not disputed the merits of this rejection with
respect to claims 18-25. Independent claim 18 does not require that any of
the springs be made of non-tubular material. Thus, we summarily affirm
this rejection with respect to claims 18-25 for the reasons set forth by the
Examiner (Ans. 4-5; Office Action, mailed Jan. 18, 2006, paragraph
bridging pages 9 and 10). Likewise, since Appellant did not argue the
obviousness rejection of claims 26 and 27 which depend therefrom, we
affirm the rejection for the reasons set forth by the Examiner (Ans. 7-8).

4 Likewise, there is no longer a plurality of non-tubular coils, wherein the
torch directs the cooling fluid to flow through the coils to and from the torch
head, as required by independent claim 10.
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For these reasons, we affirm the Examiner’s rejections based on
Keller of claims 18-27.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new
ground of rejection:
Claims 35, 37, 38, 40, and 41 are rejected under 35 U.S.C. § 102(b) as
anticipated by Keller. The elements recited in these claims read on Fig. 3 of
Keller. Fig. 3 of Keller is reproduced below:

Fig. 3 of Keller depicts a welding torch. Fig. 3 and the relevant
description thereof (see e.g., col. 4, ll. 7-50) teach a torch head with a
plurality of tubes (tube 26 and the unnumbered tube to the right of bore 27B)
operable to convey fluids (that is, the tubes are capable of conveying fluids)
and a plurality of coils comprising a helix of non-tubular material (“…a
double helix 25 is formed by a pair of side-by-side coils…” as described in
col. 4, ll. 14-15). These coils define an axial flow path (similar to
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Appellant’s axial flow path within, e.g., coils 76, 80) via the bore 29 and
enable the torch head to be angled relative to the tubes and to route fluids
axially through the coils (see Fig. 4). Note these claims do not define over
two tubes in series nor do these claims recite any structure to require that
each tube be connected to respective different sources of fluid.
With respect to claim 37, a first coil of the pair of coils is “adapted to”
direct a gas axially through the coil via bore 29 (that is, the coil/bore
structure is capable of directing a gas). Likewise, with respect to claim 38, a
second coil of the pair of coils is “adapted to” direct a cooling fluid axially
therethrough (that is, the coil/bore structure is capable of directing a cooling
fluid). With respect to claim 40, each tube is disposed through a tube
support member, namely, the connector 27. With respect to claim 41, the
elastomeric deformable support member 28 extends through the plurality of
coils and is configured to retain a user-determined position of the torch head
(see Fig. 4).

CONCLUSION
In summary, the rejections of claims 18-25 for anticipation and of
claims 26 and 27 under obviousness are affirmed. The § 102 and § 103
rejections of claims 1, 3-17, 35, and 37-42 are reversed. We set forth a new
ground of rejection over claims 35, 37, 38, 40, and 41 as anticipated by
Keller.
Regarding the affirmed rejection(s), 37 C.F.R. 41.52 (a)(1) provides
“[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
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This decision also contains a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). That section provides that, “[A] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.”
Regarding the new ground of rejection, Appellant must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the
following options with respect to the new ground of rejection, in order to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . ; or

(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .

In order to preserve Appellant’s right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejections of claims 18-27, we
defer the effective date of the affirmance until after a request for rehearing of
the new ground, or, until conclusion of the prosecution for the new ground
before the Examiner unless, as a mere incident to the limited prosecution,
the affirmed rejections are overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART; § 41.50(b)

PL initials:
sld

PATRICK S. YODER
FLETCHER YODER
P.O. BOX 692289
HOUSTON, TX 77269-2289

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