Ex Parte GoughDownload PDFPatent Trial and Appeal BoardJan 19, 201812316604 (P.T.A.B. Jan. 19, 2018) 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. 12/316,604 12/15/2008 Yuma E. Gough WELD-79X-US 1408 41324 7590 01/22/2018 CHRISTOPHER JOHN RUDY 209 HURON AVENUE, SUITE 8 PORT HURON, MI 48060 EXAMINER PASCHALL, MARK H ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 01/22/2018 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 YUMA E. GOUGH Appeal 2016-003092 Application 12/316,604 Technology Center 3700 Before STEFAN STAICOVICI, RICHARD H. MARSCHALL, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Yuma Gough (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated Dec. 9, 2014, hereinafter “Final Act.”) rejecting claims 28-46.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 Appellant’s Appeal Brief (filed July 30, 2015, hereinafter “Appeal Br.”) identifies the inventor, Yuma E. Gough, as the real party in interest. Appeal Br. 1. 2 Claims 1—27 are cancelled. Final Act. 2. Appeal 2016-003092 Application 12/316,604 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention relates to “a visual aid for welding” including a “mirror . . . fixed about a welding torch.” Spec. 1. Claims 28, 31, and 42 are independent. Claim 31 is illustrative of the claimed invention and reads as follows: 31. In combination, a welding torch and a weld viewing system; the weld viewing system consisting essentially of a positionable mirror attached to the welding torch; the positionable mirror consisting essentially of a mirror, and an arm; wherein the arm is a flexible member connecting the mirror to the welding torch, such that the position of the mirror relative to the welding torch can be adjusted about flexibly, so that an optimal image of a weld area can be obtained. REJECTIONS I. The Examiner rejected claims 28, 31—36, 39, 40, 42, 44, and 46 under 35 U.S.C. § 102(b) as being anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Daly (US 3,008,514, issued Nov. 14, 1961). II. The Examiner rejected claims 29, 30, 37, 38, 43, and 45 under 35 U.S.C. § 103(a) as being unpatentable over Daly and 2 Appeal 2016-003092 Application 12/316,604 Inuzuka et al. (JP 2006-035262 A, published Feb. 9, 2006, hereinafter “Inuzuka”).3 III. The Examiner rejected claim 41 under 35 U.S.C. § 103(a) as being unpatentable over Daly, Inuzuka, and Richardson (US 4,532,408, issued July 30, 1985) or Arlt (DE 42 03 667 Al, published Aug. 12, 1993).4 ANALYSIS Rejection I The Examiner finds that Daly’s lens assembly 30 constitutes the claimed “mirror,” as required by each of independent claims 28, 31, and 42. Final Act. 3. According to the Examiner, Daly’s lens assembly “can function as or have a mirror, [because] by definition, a mirror is a reflecting surface, and the lens of 30 can have reflecting surfaces.”5 Final Act. 3. Thus, the Examiner determines that because “a surface or portions of a surface of the lenses of [Daly’s assembly] 30 are smooth and shiny and can reflect light and function as a mirror . . . the lens assembly 30 meet[s] the claimed limitation.” Ans. 6. 3 We derive our understanding of this reference from the translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation. 4 We view the Examiner’s citation to “Fisher” in the heading of this rejection as a typographical error as the Examiner does not refer to this reference in the body of the rejection. 5 The Examiner takes the position that “[t]he limitation [of] a ‘mirror’ is interpreted under the broadest reasonable interpretation to mean a reflecting surface.” Examiner’s Answer 6 (filed Nov. 17, 2015, hereinafter “Ans.”). 3 Appeal 2016-003092 Application 12/316,604 In response, Appellant argues that “[t]he lens assembly of Daly is a lens not, a mirror.” Appeal Br. 6. According to Appellant, Daly’s lens “is a refractory lens . . . not a reflective lens,” and thus Daly’s lens assembly does not constitute a “mirror.” Reply Brief 1 (filed Jan. 19, 2016, hereinafter “Reply Br.”). Daly discloses a safety shield and eye protector used with a welding torch by a welder including, inter alia, a protective lens assembly 30 that may be a single lens or a plurality of lenses 31, 32. See Daly, col. 1,11. 48— 51, col. 2,11. 33—39, Figs. 1,4. An ordinary and customary meaning of the term “lens” is “a piece of transparent material... for forming an image by focusing rays of light.” Merriam Webster’s Collegiate Dictionary (10th ed. 2005) (emphasis added). In contrast, a “mirror” is a “reflective surface.” Id. In other words, a “mirror” reflects light, whereas a “lens” transmits light. Therefore, as a lens transmits light, whereas a mirror reflects light, we do not agree with the Examiner’s position that Daly’s lens assembly 30 “can function as ... a mirror.” See Final Act. 3. We also do not agree with the Examiner that Daly’s lens assembly 30 “can . . . have a mirror.” See id. As correctly noted by Appellant, Daly’s lens assembly 30 operates as a protective filter (see Appeal Br. 6) and, hence, if it would include a mirror, as the Examiner proposes, it would reflect the light coming from the welding arc, rather than transmit such light in a filtered state. The Examiner does not make findings regarding modifying the structure of Daly’s lens assembly 30 to incorporate a mirror, nor does the Examiner explain why it would have been obvious to modify Daly as such. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). 4 Appeal 2016-003092 Application 12/316,604 Lastly, the Examiner’s determination that “a surface or portions of a surface of the lenses of [Daly’s lens assembly] 30 are smooth and shiny and can reflect light and function as a mirror” requires speculation on the Examiner’s part. Appellant is correct in that Daly is silent regarding such features. See Reply Br. 2. In conclusion, for the foregoing reasons, we do not sustain the rejection of claims 28, 31—36, 39, 40, 42, 44, and 46 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Daly. Rejections II and III The Examiner’s use of the Inuzuka, Richardson, and Arlt disclosures does not remedy the deficiency of Daly discussed supra. See Final Act. 4—5. Accordingly, for the same reasons as discussed above, we also do not sustain the rejections under 35 U.S.C. § 103(a) of claims 29, 30, 37, 38, 43, and 45 as unpatentable over Daly and Inuzuka and of claim 41 as unpatentable over Daly, Inuzuka, and Richardson or Arlt. SUMMARY The Examiner’s decision to reject claims 28-46 is reversed.6 REVERSED 6 As the Examiner’s rejections are not sustained, we do not need to reach the merits of the Declaration filed by inventor Yuma E. Gough on July 23, 2014. 5 Copy with citationCopy as parenthetical citation