Ex Parte DenneyDownload PDFPatent Trial and Appeal BoardJan 31, 201713681035 (P.T.A.B. Jan. 31, 2017) Copy Citation 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. 13/681,035 11/19/2012 Paul Edward Denney 072056-8090.US01 3624 91854 7590 02/02/2017 Lincoln Electric Company/Perkins COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 EXAMINER BELLINGER, JASON R ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 02/02/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): wdcle @perkinscoie. com patentprocurement @perkinscoie. com ip @ lincolnelectrie .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL EDWARD DENNEY Appeal 2015-002142 Application 13/681,035 Technology Center 3600 Before JEFFREY A. STEPHENS, ERIC C. JESCHKE, and BRENT M. DOUGAL, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action (“Final Act.”) rejecting claims 10—12 and 16—19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is identified as Lincoln Global, Inc., which is identified as a subsidiary of Lincoln Electric Holdings, Inc. App. Br. 3. Appeal 2015-002142 Application 13/681,035 Claimed Subject Matter Claim 10, reproduced below, illustrates the claimed subject matter. 10. A welded wheel structure, comprising: a first wheel section having a first web portion; a second wheel section having a second web portion, where each of said first and second web portions are contacting each other and each of said first and second web portions have the same length; and a continuous hermetically sealed weld joint which welds said first web portion to said second web portion, such that said weld joint passes through an entire thickness of said first web portion and penetrates 5 to 100% of said thickness of said second web portion; wherein said weld joint is positioned radially around a center of said welded first and second sections, wherein said weld joint is an autogenous weld joint, and wherein said first web portion has a web length between a hub portion positioned radially inward from said first web portion and an angled portion positioned radially outward from said first web portion, and said weld joint is positioned on the first web portion 10 to 80% of the web length inward from said angled portion. Rejections Claims 10, 12, and 16—19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jones (US 1,566,017, issued Dec. 15, 1925) and Copley et al. (US 7,824,775 B2, issued Nov. 2, 2010). Final Act. 2-A. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Jones, Copley, and Yelistratov et al. (US 2009/0320288 Al, published Dec. 31, 2009). Final Act. 4—5. Claims 10-12, 16—18, and 19 stand provisionally rejected on the ground of nonstatutory double patenting over claims 9, 10-16, and 17, 2 Appeal 2015-002142 Application 13/681,035 respectively, of Application No. 13/681,085 (“the ’085 Application”). Ans. 6.2 Claims 10-12 and 16—19 stand provisionally rejected on the ground of nonstatutory double patenting over claims 12—22 of Application No. 13/269,319. Final Act. 7-8. ANALYSIS The Obviousness Rejections We have reviewed the Examiner’s rejections in light of Appellant’s arguments (App. Br. 11—25; Reply Br. 5—13). We concur with Appellant’s argument (App. Br. 18) that the Examiner does not present sufficient findings or reasoning to explain why one of ordinary skill in the art would have made the weld at central portions 18 and 20 of Jones a hermetically sealed weld. The Examiner finds Jones does not disclose that the weld forms a hermetic seal, but finds one of ordinary skill in the art would have formed Jones’s weld as a hermetic seal “for the purpose of rendering the wheel airtight.” Final Act. 2. As Appellant points out, however, Jones has a rim 34, which is a separate piece welded to the rest of the wheel, and which interfaces with the tire. See App. Br. 14—15. Although Jones does not expressly state that the rim forms a sealed cavity for a pneumatic tire, we agree with Appellant (id.) and the Examiner (Final Act. 10; Ans. 7—8) that one of ordinary skill in the art would understand Jones’s rim to form a sealed 2 In the Final Action, claim 19 was provisionally rejected on the ground of statutory double patenting over the ’085 Application (Final Act. 6), but that rejection is withdrawn and modified in the Answer (Ans. 6). 3 Appeal 2015-002142 Application 13/681,035 cavity for a pneumatic tire. Accordingly, Jones’s wheel would be airtight because of the rim, and a weld further to the center of the rotational axis of the wheel at central portions 18 and 20 would not need to be hermetically sealed in order to make the wheel airtight. See App. Br. 14—15. Thus, the Examiner’s stated reason for modifying Jones is not supported by the evidence. In the Answer, the Examiner states that it is irrelevant whether the weld would make the wheel airtight, and finds that “[t]he autogenous welding process disclosed by Jones is fully capable of producing a hermetically sealed weld, therefore any weld joint of Jones could be hermetically sealed, regardless of its location.” Ans. 8. We agree with Appellant that the mere possibility that contact seam welding could produce a hermetically sealed weld is insufficient to show that Jones’s weld is inherently hermetically sealed. Reply Br. 10. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)); see also In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting Oelrich in context of obviousness rejection). Absent either sufficient evidence that Jones’s weld on the web portions of the wheel is inherently hermetically sealed or articulated reasoning with rational underpinning for modifying the weld to be hermetically sealed, we do not sustain the rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Jones and Copley. Independent claim 19 similarly recites “a continuous hermetically sealed weld joint which welds said first web portion to said second web portion.” Because the 4 Appeal 2015-002142 Application 13/681,035 rejections of all claims on appeal rely on the Examiner’s finding that Jones teaches a hermetically sealed weld joint between the web portions, or that one of ordinary skill in the art would have had reason to modify Jones to meet the disputed limitation, we also do not sustain the rejections of claims 11, 12, and 16—19.3 The Double Patenting Rejections Appellant does not appeal the provisional double patenting rejections. App. Br. 10.4 Nonetheless, we decline to reach the provisional double patenting rejections because they are currently the only remaining rejections, in view of our reversal of the rejections under § 103(a). See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). DECISION We reverse the Examiner’s decision to reject claims 10, 12, and 16—19 under 35 U.S.C. § 103(a) as unpatentable over Jones and Copley. We reverse the Examiner’s decision to reject claim 11 under 35 U.S.C. § 103(a) as unpatentable over Jones, Copley, and Yelistratov. We do not reach the provisional double patenting rejections. REVERSED 3 Because this issue is dispositive as to all claims on appeal, we need not reach additional issues raised by Appellant’s arguments. 4 We note that the applications upon which the provisional double patenting rejections were based have been abandoned. 5 Copy with citationCopy as parenthetical citation