Ex Parte Giese

Board of Patent Appeals and Interferences

Apr 30, 2007

10278319 (B.P.A.I. Apr. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM R. GIESE
____________

Appeal 2007-1212
Application 10/278,319
Technology Center 1725
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Decided: April 30, 2007
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-9 and 28-45.
Claims 1, 29, 34, and 39 are illustrative:
1. A securing system for securing a welding implement neck to a
threaded connector, the securing system comprising:

a retaining nut having a plurality of wrench-flat surfaces to enable the
retaining nut to be tightened onto the threaded connector with a wrench; and
Appeal 2007-1212
Application 10/278,319

a hand operator adapted to be releasably-secured to the retaining nut
preventing axial separation therebetween, and to enable the retaining nut to
be tightened onto the threaded connector by hand, the hand operator further
having an internal peripheral surface configured to engage with wrenched-
flat surfaces to transfer torque applied to the hand operator to the retaining
nut.

29. The securing system as recited in claim 28, wherein the inner and
outer peripheral surfaces are generally non-deformable under manual
actuation.

34. A securing system for securing a welding implement neck to a
threaded connector, the securing system comprising:

a hand operator having an inner peripheral surface configured to
at least partially circumscribe a wrench-actuatable retaining nut such that
actuation of the hand operator transfers torque to the wrench-actuatable
retaining nut to secure the wrench-actuatable retaining nut to the threaded
connector, wherein the hand operator includes a resilient member
cantilevered with respect to the inner peripheral surface and configured to
selectably block separation of the hand operator with respect to the wrench-
actuatable retaining nut.

39. A securing system for securing a welding implement neck to a
threaded connector, the securing system comprising:

an operator configured to snap-fit with respect to a retaining nut,
wherein the operator is configured to transfer torque to a retaining nut upon
actuation of the operator to tighten the retaining nut with respect to the
threaded connector, the operator having a plurality of walls that define
peripheral surfaces of the operator, the plurality of walls being more rigid
than a blocking member configured to block axial separation of the operator
with respect to the retaining nut.

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Application 10/278,319

The Examiner relies upon the following references in the rejection of
the appealed claims:
Espey US 5,350,266 Sep. 27, 1994
Raloff US 5,384,447 Jan. 24, 1995
Conway US 6,713,711 B2 Mar. 30, 2004
Appellant's claimed invention is directed to a system for securing a
welding implement neck to a threaded connector. The system comprises a
retaining nut that is tightened onto the threaded connector and a hand
operator or sleeve member secured to the retaining nut. The hand operator
or sleeve allows the retaining nut to be tightened onto the connector by hand.
Appealed claims 34-45 stand rejected under 35 U.S.C. § 112, first
paragraph, description requirement. Claims 34-45 also stand rejected under
35 U.S.C. § 112, second paragraph, for indefiniteness. Claims 1-4 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Raloff. Claims
39-41, 44, and 45 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Espey. In addition, the appealed claims stand rejected under
35 U.S.C. § 103(a) as follows:
(a) claims 5 and 6 over Raloff in view of Conway,
(b) claims 42 and 43 over Espey in view of Conway,
(c) claims 7-9, 28-41, 44, and 45 over Raloff in view of Espey, and
(d) claims 42 and 43 over Raloff in view of Espey and Conway.
In reaching our decision, we have thoroughly reviewed the arguments
advanced by Appellant in the principal and Reply Briefs on appeal, as well
as the Examiner's rationale and rebuttal to Appellant's arguments set forth in
the Answer.
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Application 10/278,319

We will sustain the Examiner's § 112, first paragraph, rejection of
claims 34-45 inasmuch as we fully concur with the Examiner that the claim
recitations "a resilient member cantilevered with respect to the inner
peripheral surface" (claim 34) and "the plurality of walls being more rigid
than a blocking member" (claim 39) do not find original descriptive support
in Appellant's Specification. Appellant has accepted the Examiner's
dictionary definition of the term "cantilever" as "a projecting member
supported at only one end," but Appellant has not rebutted the Examiner's
analysis that Appellant's structure 78 "flexible fingers," although qualifying
as the claimed projecting member, is supported at both ends and, therefore,
is not cantilevered. Appellant erroneously states in the Reply Brief that "the
Examiner has, in the contrary, pointed out the ability to recognize the
claimed subject matter by suggesting a potential 'pivot point' located 'near
the end of the line from which reference number 64 is directed in Figure 6'"
(page 4, Reply Br., first para.). In fact, the relevant portion of the Answer
reads "[i]t is also noted that each of the fingers does not have a pivot point at
its base (near the end of the line from which reference number 64 is directed
in Figure 6)" (page 12 of Answer, second para., emphases added).
Appellant has simply not explained how his Specification or drawings
clearly supports a resilient member cantilevered with respect to the inner
peripheral surface of the hand operator 60.
We also agree with the Examiner that there is no original descriptive
support for the claim 39 recitation of "a blocking member configured to
block axial separation of the operator with respect to the retaining nut." The
original Specification does not describe a blocking member and it is not
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Application 10/278,319

clear from the Specification drawings, particularly Figure 6, which feature or
features the claim term is referring too. As explained by the Examiner, catch
portion 82 of the resilient member might be considered a blocking member,
as could securing groove 80 of retaining nut 50, surface 84 of the securing
groove, as well as fingers 78 of the resilient member. In the absence of a
clear indication in the original Specification of what constitutes the blocking
member, we must agree with the Examiner that the breadth and scope of
claim 39 is not originally described in appellant's Specification.
We will also sustain the Examiner's § 112, second paragraph, rejection
of claims 34-45 for the reason that Appellant has not adequately explained
how the resilient member is cantilevered with respect to the inner peripheral
surface of the hand operator and, as set forth above, Appellant has not
reasonably defined the scope of the blocking member of claim 39. In our
view, the Examiner has raised reasonable questions regarding the ambiguity
of claims 34 and 39. While Appellant maintains that an applicant can be
his/her own lexicographer, this does not relieve an applicant of the duty to
reasonably circumscribe the scope of the claims.
We will also sustain the Examiner's § 102 rejection of claims 1-4 over
Raloff. Appellant contends that Raloff "does not disclose a hand operator
'adapted to be releasably secured to the retaining nut,' as recited in
independent claim 1 (emphases added)" (page 16 of principal Br., first
sentence). However, as explained by the Examiner, the outer element 70
can be, alternatively, molded as a separate piece onto inner element 68 and
"secured thereto by means of a mechanical or chemical fastening system"
(col. 7, ll. 16-18). Since a screw is a common mechanical fastening system
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Appeal 2007-1212
Application 10/278,319

that is releasably securable, we agree with the Examiner that the reference
reasonably describes a hand operator that is releasably-secured to the
retaining nut. As set forth by the Examiner, one of ordinary skill in the art
may select one of only two options, namely, a releasably-secured fastening
system or a permanent one. We find that such a limited choice presents a
fair description of both.
We will not sustain the Examiner's § 102 rejection of claims 39-41,
44, and 45 over Espey, or the § 103 rejections of claims 42 and 43, claims
7-9, 28-41, 44, and 45, and claims 42 and 43, all of which involve Espey.
Espey, as acknowledged by the Examiner, is not directed to a system for
securing the neck of a welding implement to a threaded connector but,
rather, is directed to a nut and cap assembly wherein a plastic cap is used to
provide protection and decoration for nuts and to guard against injury caused
by the sharp edges of nuts. Espey discloses that "[t]his is particularly
important in the case of nuts used on the front wheel fork shaft of a bicycle
where the normally tubular shaft is journaled in a generally vertical sleeve
forming part of the frame of the bicycle" (col. 1, ll. 21-24). The basis for the
Examiner's rejection is the rationale that "there is no claim language that is
specific to a 'welding' securing system in claim 39, only the 'intended use' of
the securing system" (page 18 of answer, penultimate full sentence).
However, we find that the claim 39 recitation "for securing a welding
implement neck to a threaded connector," as well as similar language in the
other independent claims, imparts a function to the claimed securing system
that must be considered in the Examiner's rejections. The rejections
employing Espey must include a finding that the cap and nut assembly of
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Espey is at least capable of securing a welding implement neck to a threaded
connector. Since the Examiner has made no such finding, the § 103
rejections based on Espey cannot stand.
Finally, we will sustain the Examiner's § 103 rejection of claims 5 and
6 over Raloff in view of Conway. Appellant has not rebutted the Examiner's
legal conclusion that it would have been obvious for one of ordinary skill in
the art to modify the securing system of Raloff by fabricating the hand
operator out of a polymeric material including glass-filled nylon or glass-
filled polycarbonate, as suggested by Conway, "in order to provide a non-
conductive, light-weight, flexible and durable polymeric material for use as
a hand tightening securing system" (page 7 of Answer, last para.). Appellant
relies solely upon the purported deficiency of Raloff regarding the features
of independent claim 1 discussed above.
In conclusion, based on the foregoing, the Examiner's rejections of
claims 1-6 and 34-45 are sustained, whereas the Examiner's rejections of
claims 7-9 and 28-33 are reversed. Consequently, the Examiner's decision
rejecting the appealed claims is affirmed-in-part.

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Application 10/278,319

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED-IN-PART

cam

Patrick S. Yoder
FLETCHER, YODER & VAN SOMEREN
P.O.BOX 692289
Houston, TX 77269-2289
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