14134396 - (D) (P.T.A.B. Apr. 24, 2019)

Ex Parte DREXLER et al

Patent Trials and Appeals BoardApr 24, 2019

14134396 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/134,396 12/19/2013 909 7590 04/26/2019 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 FIRST NAMED INVENTOR Frank DREXLER 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 ATTORNEY DOCKET NO. 073837-0450409 (GER9087A) CONFIRMATION NO. 7783 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 04/26/2019 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK DREXLER, JOACHIM SCHNEIDER, and HANS-GERD KORTMANN Appeal2017-007941 Application 14/134,396 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and LEE L. STEPINA, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Drexler et al. (Appellants 1) appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1, 3---6, and 8-15 2 under 35 U.S.C. Â§ 103(a) as unpatentable over Christ (US 2007 /0172335 Al, published July 26, 2007), McVey (US 2,411,931, issued Dec. 3, 1946), and Yake (US 7,255,521 B2, 1 Appellants identify Newfrey LLC as the real party in interest. Appeal Br. 3. 2 Claims 2 and 7 are canceled. Appeal Br. Claims App. Appeal2017-007941 Application 14/134,396 issued Aug. 14, 2007) or Huber (US 2005/0008427 Al, published Jan. 13, 2005). We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. CLAIMED SUBJECT MATTER Claims 1 and 6 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of welding a weld stud to a workpiece and of checking the strength of the welded joint, wherein the method includes the steps: providing a tool, a workpiece, and a weld stud, the weld stud comprising: a shank; a flange axially adjoining the shank, the flange projects radially relative to the shank and defines a polygon shaped outer circumference; an annular section axially adjoining the flange and including an axially facing and radially extending annular weld surface; and the annular section and the flange comprise a head section, and the polygonal shape of the flange extends over the annular section up to its axially facing annular weld surface; welding the weld stud onto the workpiece by drawn-arc stud welding; applying the tool to the polygonal shaped head section of the stud; applying a predetermined test torque to the weld stud with the tool; and checking the welded joint for satisfactory acceptance of the test torque. 2 Appeal2017-007941 Application 14/134,396 DISCUSSION The Examiner determines that Christ, Mc Vey, and Yake or Christ, Mc Vey or Huber disclose or suggest all of the limitations of independent claim 1. See Final Act. 2-3. As the Examiner's findings regarding Mc Vey are not pertinent to our decision, we do not discuss those findings in our analysis below. The Examiner admits that Christ "does not show a tool to apply a torch to test or check a welded joint of the stud weld and the workpiece for a satisfactory acceptance of a test torque wherein the weld stud is welded by a drawn-arc stud welding process." Id. at 2. The Examiner finds, however, that "Yake shows a drawn arc welding that is well known in the art to weld a weld stud to a workpiece as illustrated in Figure 6." Id. at 3 ( citing Huber 2:16-19). The Examiner further finds that "Huber also shows drawn arc welding that is known in the art (see para [0003])." Id. According to the Examiner, based on these findings, "it would have been obvious to one of ordinary skill in the art to ... adapt Christ with a drawn arc welding process that is known in the art as an alternative welding means to also effectively weld andjoin a stud weld to a workpiece." Id. Appellants contend that it would not be obvious to modify Christ to use drawn-arc welding, "because friction welding is critical to Christ's invention, and drawn-arc welding was not a workable or obvious alternative in Christ." Appeal Br. 7. In support of this contention, Appellants explain that "Christ is critically dedicated to using 'friction-welding' (Christ at title, abstract, & every claim) to solve a corrosion problem that Christ perceived with conventional welds." Id. at 8. According to Appellants, 3 Appeal2017-007941 Application 14/134,396 For Christ's welding and soldering process to work, rotation must first frictionally melt the weld stud's outstanding weld-surface 4 and/or the mating surface of the workpiece 24, which allows the rotating and pressing motion to then briefly press the spinning soldering surface 5 against the surface 26 of the workpiece 24 so as to cause lower-heat soldering ( e.g., of a zinc surface coating), without applying so much heat to the soldering zone 27 that it would cause welding. Id. (citing Christ ,r 35). Appellants further assert that "Christ's sequential welding/soldering technique and required annular weld and solder joints 25, 27 are specific to friction welding." Id. Thus, Appellants argue that "[i]t would not have been obvious to replace Christ's crucial friction welding with 'drawn-arc welding,' as recited in claim 1, because doing so would prevent Christ's invention from working 'for its intended purpose."' Id. at 9 ( citation omitted). Christ indicates that "[t]he object of the invention is to provide [a] friction-welded connection with protection against corrosion and other chemical influences." Christ ,r 4. Christ states that this object "is achieved in that the friction-welding surface is bordered by a circular coaxial friction- soldering surface, the friction-welding surface projecting axially in relation to the friction-soldering surface by a length essentially containing only the material required for friction-welding." Id. Thus, we agree with Appellants that Christ is exclusively concerned with a problem that occurs during friction welding. The Examiner provides no evidence that similar problems occur during drawn-arc welding. Although, the Examiner may be correct that in some circumstances it would be obvious to replace a friction weld with a drawn-arc weld, such substitution makes no sense in the context of Christ's 4 Appeal2017-007941 Application 14/134,396 disclosure, which is particularly directed to friction welding. Accordingly, the Examiner's reasoning lacks rational underpinning. For this reason, we do not sustain the Examiner's decision rejecting claim 1, and claims 3-5, which depend therefrom. The rejection of claim 6 relies upon the same erroneous reasoning as the rejection of claim 1. See Final Act. 3. Accordingly, we do not sustain the Examiner's decision rejecting claim 6 and its dependent claims 8-15 for the same reason. DECISION The Examiner's rejection of claims 1, 3-6, and 8-15 is REVERSED. REVERSED 5