Ex Parte GieseDownload PDFPatent Trial and Appeal BoardFeb 14, 201311971743 (P.T.A.B. Feb. 14, 2013) 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. 11/971,743 01/09/2008 William R. Giese ITWO:0039-2 (13692.60) 5428 52145 7590 02/15/2013 FLETCHER YODER (ILLINOIS TOOL WORKS INC.) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER JENNISON, BRIAN W ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 02/15/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM R. GIESE ____________ Appeal 2010-006686 Application 11/971,743 Technology Center 3700 ____________ Before JAMES P. CALVE, NEIL T. POWELL, and JEREMY M. PLENZLER, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-19 and 21-24. App. Br. 2. Claims 20 and 25 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2010-006686 Application 11/971,743 2 CLAIMED SUBJECT MATTER Claims 1, 10, 14, 19, and 24 are independent. Claim 1 is reproduced below: 1. A torch system, comprising: a torch assembly, comprising: a nozzle; a diffuser; and a contact tip secured axially between the nozzle and the diffuser in response to attachment of the nozzle relative to the torch assembly. REJECTIONS1 Claims 1-5, 9-11, and 14-16 are rejected under 35 U.S.C. § 102(b) as being anticipated by Lebel (US 4,529,863; iss. Jul. 16, 1985). Claims 14, 17, and 18 are rejected under 35 U.S.C. § 102(b) as being anticipated by Sugimoto (JP 55-156680; pub. Dec. 5, 1980). Claims 19 and 21 are rejected under 35 U.S.C. § 102(b) as being anticipated by Ogden (US 3,596,049; iss. Jul. 27, 1971). Claims 6, 7, and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lebel and Matsui (US 4,672,163; iss. Jun. 9, 1987). Claims 8 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lebel and Ogden. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lebel and Sugimoto as evidenced by Walters (US 6,307,179 B1; iss. Oct. 23, 2001). Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ogden and New (US 5,772,102; iss. Jun. 30, 1998). 1 All double patenting rejections were withdrawn. Ans. 2-3; App. Br. 6-7. Appeal 2010-006686 Application 11/971,743 3 ANALYSIS Claims 1-5, 9-11, and 14-16 as anticipated by Lebel Claim 1-5 and 9 The Examiner found that Lebel discloses a torch system with a nozzle 40, diffuser 16, 17, and a contact tip 13 secured axially between nozzle 40 and diffuser 16, 17 in response to attachment of the nozzle 40 relative to the torch assembly, as illustrated in Figures 1 and 2. Ans. 5. The Examiner also found that Lebel discloses a contact tip 13 secured between a nozzle 40 and a diffuser 16, 17 in the same manner as disclosed in Appellant’s Figure 4. Ans. 5-6, 16-18. The Examiner found that Lebel discloses that contact tip 13 can be frictionally locked in position by a fastening means such as a set screw 25, making contact tip 13 out of round to fit into an oval depression in the bore 15 of diffuser 17, or a simple tight fit in the bore and force would be transmitted from nozzle 40 to diffuser 16, 17 to contact tip 13 in response to attachment of nozzle 40 to a torch assembly. Ans. 18-20. Appellant argues that Lebel does not disclose “a contact tip secured axially between the nozzle and the diffuser” because contact tip 13 is held in place with a fastener such as a screw 25, which radially secures contact tip 13 inside the gas diffusing member 16 completely independent of the nozzle 40, which may be positioned around the gas diffuser 16 after the contact tip 13 is secured to the diffuser 16. App. Br. 10-11. Appellant also argues that Lebel’s alternate means of attachment are all radial attachment means that do not secure the contact tip axially between the nozzle and diffuser. Reply Br. 5-6. These arguments do not persuade us of error in the Examiner’s finding that Lebel discloses the same structure of a contact tip secured in an Appeal 2010-006686 Application 11/971,743 4 axially spaced relationship between a nozzle and diffuser in the manner that Appellant discloses the claimed subject matter in Figure 4. The Examiner’s findings are within the broadest reasonable interpretation of this limitation and consistent with Appellant’s Specification, which discloses a similar arrangement of nozzle, contact tip, and diffuser. See fig. 4. Appellant also argues that the Examiner has ignored the fact that the nozzle 52 of the present application includes several components such as a nozzle body 62, a nozzle insert 64, and an insulator 66. Reply Br. 4. This argument is not persuasive because claim 1 recites “a nozzle.” We decline to construe this term to mean “nozzle insert” or to read such limitations into the term “nozzle”, particularly where claim 8 depends from claim 1 and calls for the nozzle to comprise a nozzle insert directly engaged with the contact tip. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (the presence of a dependent claim adding a particular limitation creates a presumption that the limitation is not present in the independent claim); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (doctrine of claim differentiation is at its strongest where Appellant wants to read a feature from a dependent claim into a term in an independent claim). Appellant further contends that Lebel does not disclose a contact tip secured axially between the nozzle and diffuser in response to attachment of the nozzle to the torch assembly. App. Br. 11-12. This argument does not persuade us of error in the Examiner’s findings that attachment of the nozzle to the torch assembly would result in the contact tip being secured axially between the nozzle and diffuser by virtue of the configuration of Lebel and its various frictional attachment means. The Examiner had a reasonable Appeal 2010-006686 Application 11/971,743 5 basis for finding that Lebel is capable of performing this function due to the correspondence of Lebel’s structure to the claimed structure and Appellant has not shown that Lebel is not capable of performing this function. We sustain the rejection of claims 1-5 and 9. Claims 10 and 11 Claim 10 recites a torch system comprising a nozzle, a diffuser, and a contact tip coupled to the diffuser without a threaded fastener and without rotation of the contact tip relative to the diffuser. The Examiner found that Lebel discloses a contact tip that can be coupled to the diffuser by a simple tight fitting that welds the contact tip in place without the need of threads. Ans. 6, 20-22 (citing col. 3, ll. 58-59). The Examiner also found that Lebel discloses a portion of the torch assembly (i.e., nozzle 40) that biases contact tip 13 into position in the diffuser 16, 17 by placing force radially inwardly for the same reasons indicated regarding claim 1. Ans. 20-22. Appellant argues that Lebel does not disclose a contact tip that mounts in without a threaded fastener engaged with the contact tip and without rotation of the contact tip relative to the diffuser. App. Br. 12-13. This argument does not persuade us of error in the Examiner’s findings that Lebel’s close press fit attaches the contact tip to the diffuser without a threaded fastener or rotation of the contact tip as recited in claim 10. Appellant also argues that Lebel does not disclose a contact tip that is secured axially between the nozzle and diffuser to bias the contact tip into position in the diffuser. Reply Br. 5-7. This argument does not persuade us of error in the Examiner’s finding that Lebel’s close friction fit couples the contact tip to the diffuser and Lebel’s structure biases the contact tip into Appeal 2010-006686 Application 11/971,743 6 position in the diffuser through inwardly directed force in response to attachment of the nozzle under a broadest reasonable interpretation. Ans. 21-22. We sustain the rejection of claims 10 and 11. Claims 14-16 The Examiner found that Lebel discloses “a contact tip configured to mount without tools between a nozzle and a diffuser” because contact tip 13 can be simply fitted into the bore of the gas diffuser 16, 17. Ans. 23. Appellant argues that Lebel does not disclose a contact tip configured to mount without tools between a nozzle and a diffuser as recited in claim 14 because nozzle 40 simply surrounds gas diffusing member 16 and contact tip 13 by being frictionally or threadedly secured to the enlarged cylindrical end 17 of the gas diffuser 16. App. Br. 14. Appellant argues that Lebel does not disclose the exclusion of tools for any of the mounting techniques and the set screw 25 would require the use of a screw driver and the out of round mating and friction fitting would require a tool to ensure a tight fit. App. Br. 14-15. These arguments do not persuade us of error in the Examiner’s finding that Lebel’s close press fit is capable of mounting the contact tip without the use of tools. The Examiner had a sound basis for this finding. Appellant has not shown that Lebel’s tight fit connection is not capable of mounting a contact tip without tools. We sustain the rejection of claims 14-16. Claims 14, 17, and 18 as anticipated by Sugimoto The Examiner found that Sugimoto discloses a torch system with a threadless contact tip 1 that is configured to mount without tools between the nozzle and diffuser. Ans. 7. The Examiner found that Sugimoto discloses a contact tip without threads, which would imply the mounting of the tip being Appeal 2010-006686 Application 11/971,743 7 done without tools. Ans. 8. The Examiner also found that Sugimoto discloses that the contact tip is used for arc welding, which would entail a nozzle and a diffuser structure. Ans. 24-25. Appellant argues that Sugimoto does not disclose a contact tip that is configured to mount without tools between a nozzle and a diffuser because Sugimoto merely shows a contact tip 1 and the Examiner has suggested that Sugimoto discloses a contact tip configured to mount without tools between a nozzle and a diffuser by merely disclosing a contact tip. App. Br. 16-17; Reply Br. 7-8. The Examiner’s finding that Sugimoto discloses a contact tip configured to mount between a nozzle and a diffuser is not supported by a preponderance of evidence where Sugimoto discloses a contact tip without any disclosure of a nozzle or diffuser. We cannot sustain the rejection of claims 14, 17, and 18. Claims 19 and 21 as anticipated by Ogden Claim 19 recites a torch system with a nozzle insert configured to mount between a nozzle and a diffuser and bias the contact tip axially into a mounted position within the diffuser. The Examiner found that Ogden discloses a nozzle insert (gas diffuser disc 66) configured to mount coaxially between a nozzle (gas cup 16) and a diffuser 40, 42 with gas supplying slots 60, and axial passages (Figures 1, 11, and 19) downstream from passages in the diffuser 40, 42 and parallel to an axis of the nozzle insert 66. Ans. 9. The Examiner also found that Ogden discloses a contact tip 14 having a gas diffuser 66 fixed thereto and such mounting would bias contact tip 14 axially as well as within the diffuser configuration. Id. The Examiner reasoned that because the contact tip 14 has no threads and a clamp device 18 is used to Appeal 2010-006686 Application 11/971,743 8 hold the structure together within the diffuser 40, 42, the nozzle insert 66 is configured to bias the contact tip 14 axially into a mounted position within the diffuser because it is fixed and in contact with the nozzle 16. Ans. 27. Appellant argues that Ogden lacks a nozzle insert configured to bias a contact tip axially into a mounted position within the diffuser, as recited in claim 19, because the gas diffuser disc 66 does not appear to bias a contact tip into a mounted position within the shell members 40, 42. App. Br. 18. Appellant also argues that Ogden discloses that the contact tip 14 has fixed thereto a suitable gas diffuser disc 66 and this disclosure in no way suggests that gas diffuser disc 66 biases contact tip 14 into a mounted position within shell members 40, 42. Id. Appellant further argues that it is unclear how the Examiner interprets gas diffuser 66 as being configured to bias the contact tip 14 axially into a mounted position within shell members 40, 42. App. Br. 18 (citing col. 2, ll. 72-75; fig. 1); Reply Br. 9. The Examiner had a sound basis for finding that Ogden’s nozzle insert (gas diffuser disc 66) is capable of biasing the contact tip 14 axially into a mounted position based on Ogden’s disclosure that contact tip 14 lacks any screw threading and has fixed thereto a suitable gas diffuser disc 66 which secures contact tip 14 to the nozzle (gas cup 16) as shown in Figure 1 of Ogden. Appellant has not shown that Ogden’s gas diffuser disc 66 is not capable of performing this function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (where Patent Office has a reason to believe that a functional feature is an inherent characteristic of the prior art, the burden can be shifted to an applicant to show that the prior art structure is not capable of performing the claimed function). The Examiner’s finding is consistent with Appeal 2010-006686 Application 11/971,743 9 the broadest reasonable interpretation of this limitation interpreted in light of Appellant’s Specification, which discloses a nozzle insert 64 with an annular portion 74 positioned around a contact tip 50 with a gap 76 between contact tip shoulder 60 and annular portion 74 of the nozzle insert 64. Spec. 8, para. [0030]; fig. 4. We sustain the rejection of claims 19 and 21. Claims 6, 7, and 24 as unpatentable over Lebel and Matsui The Examiner found that Lebel lacks a nozzle with a threadless mount comprising a lock-ring disposed in an annular groove of the nozzle to couple the nozzle to the torch assembly. Ans. 10. The Examiner found that Matsui discloses a torch system with a nozzle 6 comprising an annular groove 16, 18 and lock ring 20 disposed in the annular groove 16, 18. Ans. 11. The Examiner determined that it would have been obvious to include Matsui’s locking ring in Lebel based on Matsui’s teaching that such a lock-ring reduces the amount of precise/high dimensional accuracy of manufacturing of the nozzle member, thereby decreasing manufacturing costs. Ans. 31, 33. Appellant argues that Matsui does not remedy the deficiencies of Lebel as to claim 1 such as securing a contact tip axially compressed between the nozzle and a diffuser of the torch assembly, which is also recited in claim 24. App. Br. 19; Reply Br. 10-11. Because we sustain the rejection of claim 1 based on Lebel, this argument is not persuasive. Appellant also argues that Matsui discloses a ring spring 20 that provides a radial force rather than an axial compression and has no relevance to a contact tip, much less a contact tip axially compressed between the nozzle and diffuser of the torch assembly as recited in claim 24. App. Br. 19-20. These arguments are not persuasive because claim 24 recites that the Appeal 2010-006686 Application 11/971,743 10 nozzle has an annular groove and a lock ring disposed therein to mate with a corresponding annular groove on a torch assembly. The Examiner found that Matsui discloses such structure in Figure 1 and Appellant’s arguments do not persuade us of error in those findings. The Examiner relied on Lebel to disclose a contact tip axially compressed between a nozzle and diffuser of a torch assembly. Ans. 30. We sustain the rejection of claims 6, 7, and 24. Claims 8 and 13 as unpatentable over Lebel and Ogden Claims 8 and 13 depend from claims 1 and 10 respectively and recite that the nozzle comprises a nozzle insert directly engaged with the contact tip. The Examiner found that Ogden discloses a nozzle insert 66 directly engaged with a contact tip including a plurality of axial passages aligned with a longitudinal axis of the torch. Ans. 12-13. Appellant argues that Lebel lacks axial securement as recited in claim 1 and Ogden does not cure this deficiency. App. Br. 21-23. Appellant also argues that Lebel does not disclose a contact tip coupled to a diffuser without a threaded fastener and without rotation of the contact tip relative to the diffuser as recited in claim 10. App. Br. 23. Because we sustain the rejections of claims 1 and 10 based on Lebel, these arguments are not persuasive. There are no deficiencies for Ogden to remedy in this regard. We sustain the rejection of claims 8 and 13. Claim 12 as unpatentable over Lebel and Sugimoto as evidenced by Walters The Examiner found that Sugimoto and Walters teach a tapered outer end portion of a contact tip as recited in claim 12. Ans. 14. The Examiner determined that it would have been obvious to include this feature on Lebel based on Walters’ teaching that this configuration increases the contact area between the diffuser and contact tip thereby creating a strong gas seal and Appeal 2010-006686 Application 11/971,743 11 increasing the current that can be conducted to the weld wire while reducing resistance heating between parts. Ans. 14. Appellant argues that Sugimoto and Walters do not remedy the deficiencies of Lebel as to claim 10. App. Br. 24. Because we sustain the rejection of claim 10 as anticipated by Lebel, there are no deficiencies for Sugimoto and Walters to remedy as to claim 10. We sustain the rejection of claim 12. Claims 22 and 23 as unpatentable over Ogden and New The Examiner found that New discloses a nozzle insert with threads on the cylindrical wall and configured to mate with threads on the diffuser as a means to readily replace a nozzle insert and flow control member thereby increasing operational efficiency of the torch. Ans. 15. The Examiner determined that it would have been obvious to include this feature on Ogden to obtain the advantages set forth in New. Ans. 15. Appellant argues that Ogden does not disclose a nozzle insert that is configured to mount coaxially between a nozzle and diffuser and “to bias a contact tip axially into a mounted position within the diffuser,” as recited in claim 19 and New does not cure that deficiency. App. Br. 25. Because we sustain the rejection of claim 19 as anticipated by Ogden, there are no deficiencies for New to remedy as to claim 19. We sustain the rejection of claims 22 and 23. DECISION We AFFIRM the rejection of claims 1-5, 9-11, and 14-16 under 35 U.S.C. § 102(b) as being anticipated by Lebel. We REVERSE the rejection of claims 14, 17, and 18 under 35 U.S.C. § 102(b) as being anticipated by Sugimoto. We AFFIRM the rejection of claims 19 and 21 under 35 U.S.C. Appeal 2010-006686 Application 11/971,743 12 § 102(b) as being anticipated by Ogden. We AFFIRM the rejection of claims 6, 7, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Lebel and Matsui. We AFFIRM the rejection of claims 8 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Lebel and Ogden. We AFFIRM the rejection of claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Lebel and Sugimoto as evidenced by Walters. We AFFIRM the rejection of claims 22 and 23 under 35 U.S.C. § 103(a) as being unpatentable over Ogden and New. 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). 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