Ex Parte Enyedy

Patent Trial and Appeal Board

Jan 6, 2014

11923277 (P.T.A.B. Jan. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD A. ENYEDY
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Appeal 2011-009030
Application 11/923,277
Technology Center 3600
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Before: STEFAN STAICOVICI, PATRICK R. SCANLON, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-12 and 14-22 as unpatentable under 35 U.S.C.
§ 103(a) over Appellant’s Admitted Prior Art (“APA”) and Seufer (US
5,816,466, iss. Oct. 6, 1998). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention relates to welding wire feeding mechanisms.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A wire feeder drive wheel kit having component parts
capable of being assembled to a wire feeder mechanism for
advancing a continuous length of wire along a pathway, the
wire feeder drive wheel kit comprising:
a first drive roller configured to be rotatably secured to a
roller support of the wire feeder mechanism; and
a second drive roller configured to be rotatably secured to
a roller support of the wire feeder mechanism in a position
adjacent to the first drive roller,
wherein the first drive roller and the second drive roller
each include an outer surface extending circumferentially about
each drive roller, and
wherein the first drive roller and the second drive roller
each have a plurality of V-shaped grooves disposed on the outer
surface defined by a pair of angled sidewalls, the angled
sidewalls defining an included angle greater tha[n] 30 degrees
and less than 90 degrees.
OPINION
Appellant argues claims 1, 3-12 and 14-22 as a group. App. Br. 11.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds, and Appellant does not dispute, that the prior art
discloses all of the elements of claim 1, except for first and second drive
rollers each having V-shaped grooves defined by side walls angled between
30 and 90 degrees. Ans. 4-5. The Examiner finds that APA discloses
angled sidewalls between 30 and 60 degrees. Ans. 4, citing Spec. 3, ll. 13-
22; fig. 5. The Examiner finds that Seufer discloses first and second drive
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rollers each having V-shaped grooves. Ans. 5. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time of the invention to modify APA with Seufer to achieve the claimed
invention. Id. According to the Examiner, a person of ordinary skill in the
art would do this to minimize the amount of pressure needed to grip the wire
while also minimizing roller slippage. Ans. 4-5.
Appellant traverses the Examiner’s rejection by first arguing that the
Examiner improperly relied on the Board’s decision from a prior, related
case (BPAI Appeal No. 2006-2370) as evidence of a motivation to combine
APA with Seufer. App. Br. 13. In particular, Appellant emphasizes that the
rejection in the prior, related case involved different prior art (i.e., Gilliland)1
than the rejection in the instant case. Id. The Examiner responds that, in
reaching a conclusion of obviousness, the prior, related case was only relied
on as evidence that one of ordinary skill in the art would have been
motivated to modify APA to include a groove on an opposite drive roller to
achieve the advantage of minimizing the possibility of roller slippage on the
wire while using the least amount of pressure to grip the wire. Ans. 7. The
Examiner further responds by stating the Seufer teaches a wire feeder drive
wheel with a groove disposed on each of two opposing drive rollers. Id.
We do not find Appellant’s argument persuasive for two reasons.
First, the Examiner’s rejection is fully supported by the combination of APA
and Seufer without resort to the record from the prior, related appeal. In the
Grounds of Rejection section of the Answer, the Examiner expressed
articulated reasoning with rational underpinning independent of reliance on

1 The rejection in the prior, related case was based, in part, on
Gilliland (US 5,540,370, iss. Jul. 30, 1996). Id., see also Board’s Decision
in Appeal No. 2006-2370).
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the prior appeal record. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)); See Ans. 4-5; see also Ans. 7.
Second and in any event, the Examiner did not err in considering the
Board’s findings from the prior, related case. In KSR, the Supreme Court
criticized a rigid approach to determining obviousness based on the
disclosures of individual prior-art references, with little recourse to the
knowledge, creativity, and common sense that an ordinarily skilled artisan
would have brought to bear when considering combinations or
modifications. 550 U.S. at 415-22. Under the expansive and flexible
approach to obviousness required by KSR, the Examiner and the Board are
not only permitted, but required, to consider demands known to the design
community, the background knowledge possessed by a person of ordinary
skill in the art, and the inferences and creative steps that a person of ordinary
skill in the art would employ, all taken into consideration together with
common sense. Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).
In Randall, the Federal Circuit directed the Board to shun focusing only on
the prior art recited in the Examiner’s rejection to the exclusion of other
background information that could explain why an ordinarily skilled artisan
would have been motivated to combine or modify the cited references to
arrive at the claimed invention. Id. at 1362-63.
As in Randall, the Examiner’s reliance on the Board’s findings in the
prior related case did not change the combination that formed the basis of
the Examiner’s rejection; rather, the Board’s prior findings based, in part, on
Gilliland constitute evidence of the state of the art and the context in which
the Examiner-cited combination should be evaluated. Randall, at 1363. For
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example, Gilliland discloses that it was known in the prior art to use angled
sidewalls on grooves on each of opposing first and second drive wheels. See
Gilliland, fig. 3B, col. 6, ll. 48-60.
Appellant next argues that it would not have been obvious to combine
APA with Seufer. App. Br. 14. In support of this argument, Appellant relies
on the declaration of Lee Seufer, inventor of the Seufer reference. App.
Br. 14. Mr. Seufer testifies that two opposed rollers with grooves less than
90o would not have been considered because “tight tolerances” of the
grooves could not be ensured. App. Br. 14, Seufer Dec. para. 7.
Appellant’s Seufer declaration does not overcome the Examiner’s
prima facie case for two reasons. First, Appellant’s Specification
acknowledges that “tight tolerances” in groove formation was made possible
by advances in machining technology. Spec. 9. However, the advancements
in machining technology that made such tight tolerances possible is neither
disclosed in Appellant’s Specification nor claimed in claim 1. Seufer’s
testimony that acutely angled grooves would not have been considered due
to machine tolerance limitations is not probative of the question of whether
it would have been obvious to use acutely angled grooves as soon as the
impediment of machine tolerance limitations was obviated by technological
advancement. Here, we are mindful that an acute angle V-shape is a simple
and well-known geometric shape.2

2 Otherwise, Gilliland, which was cited by the same Examiner in the
prior, related case, already taught that two, opposing V-shaped grooves, each
with an inward taper provides more contact with the wire than a single
groove and, therefore, minimizes the possibility of rollers slipping on wire
while using the least amount of pressure to grip the wire. Gilliland, col. 6, ll.
48-60.
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Secondly, the Seufer Declaration assumes that the claimed invention
is limited to opposing rollers that have opposing grooves. Seufer Dec.
para. 7. However, claim 1 does not require that any combination of first and
second grooves on the first and second drive rollers, respectively, “oppose”
each other, only that each roller has a plurality of grooves disposed on the
outer surface. Clms. App’x., claim 1. Furthermore, claim 1 does not require
that the first and second drive rollers “oppose” each other, only that they are
positioned “adjacent” each other. Id. Thus, the Seufer Declaration relies on
limitations imported from the Specification and is not commensurate with
the scope of claim 1. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345
F.3d 1318, 1327 (Fed. Cir. 2003) ( it is improper to read a limitation from
the specification into the claims). Consequently, Seufer’s declaration
testimony is not probative of the disputed issues regarding claim 1, as
currently presented on appeal.
Next, Appellant argues that the Examiner’s proposed combination
would only result in the bottom roller of APA (fig. 5) being modified with
two grooves, instead of only one. App. Br. 15. Appellant further argues that
the proposed grooves would be rounded, not V-shaped. Id. These
arguments are without merit. Seufer teaches the use of opposing rollers with
corresponding, opposing, V-shaped grooves. See Seufer, fig. 18, col. 15,
ll. 2-5.3 Thus, the Examiner’s proposed combination, as we interpret it,
includes a plurality of V-shaped grooves on each of the first and second
drive rollers.

3 “. . . a pair of diametrically opposed wire driving rolls 272 and 274
are each provided with a peripherally extending V-shaped wire receiving
groove 276 . . . ” Id.
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Appellant next attempts to distinguish the claimed invention on the
basis that Seufer’s grooves are serrated, whereas Appellant’s grooves are
not. App. Br. 16, Reply Br. 6. This argument is unpersuasive. Claim 1 uses
the open ended transition term “comprising.” Clms. App’x. A comprising
transition means that the named elements are essential, but other elements
may be added and still form a construct within the scope of the claim.
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997). The
scope of Claim 1 does not preclude using serrations in the grooves.
Finally, Appellant argues that the Examiner improperly relied on
hindsight reasoning. App. Br. 17, Reply Br. 9. We disagree. Appellant’s
drive mechanism relies almost entirely on conventional drive roller
technology, the sole alleged improvement being merely a variation in the
geometric profile of a groove. Design incentives and other market forces
can prompt variations of existing work. KSR, 550 U.S. supra, at 417. When
a person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability. Id. The Supreme Court admonishes us to ask whether
an improvement is more than merely the predictable use of prior art
elements according to their established functions. Id. In this case, we
conclude that Appellant has not claimed anything beyond a predictable
variation of the prior art.
Among the inventions that the law deems obvious are those
modest, routine, everyday, incremental improvements of an
existing product or process . . . [that] do not involve sufficient
inventiveness to merit patent protection.
Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337 (Fed. Cir. 2009).
In view of the foregoing discussion, we believe the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
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the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claims
1, 3-12 and 14-22.
DECISION
The decision of the Examiner to reject claims 1, 3-12 and 14-22 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)(iv).
AFFIRMED

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