Ex Parte Rogers

Patent Trial and Appeal Board

Mar 7, 2017

13105802 (P.T.A.B. Mar. 7, 2017)

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.
13/105,802 05/11/2011 Jesse Rogers 1241 002 301 0202 3993
37211 7590 03/09/2017
BASCH & NICKERSON LLP
1751 Penfield Road
PENFIELD, NY 14526
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
u sptomail @ bnpatentlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE ROGERS
Appeal 2015-005496
Application 13/105,802
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1—13 and 15—20, which are the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-005496
Application 13/105,802
CLAIMED SUBJECT MATTER
Claims 1,11, and 13 are independent. Claim 1 is reproduced below.
1. An electric arc welding torch having an adjustable
electrode receiver, comprising:
a plurality of radially positioned electrode securing wedges
forming an aperture therebetween on a first end of the torch;
an internal conical surface in contact with each securing wedge
such that each securing wedge traverses, in unison, the conical surface
in a longitudinal direction to form a variable aperture therebetween;
an electrode passing completely through said variable aperture
in contact with each securing wedge, said securing wedges further
providing electrical contact between the electrode and the conical
surface, wherein a longitudinal position of the electrode is adjustable
to permit electrodes of varying lengths to be secured by the variable
aperture; and
an adjusting collar positioning the securing wedges
longitudinally along the internal conical surface;
said adjusting collar forcing said wedges into secure contact
with the electrode, wherein the aperture is adjustable over a range of
diameters that is greater than the range of electrode diameters usable
with said torch.
REJECTIONS
Claim 10 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1—3, 5, and 8—12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sperling (US 5,473,131, iss. Dec. 5, 1995) and Young
(US 2010/0066038 Al, pub. Mar. 18, 2010).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sperling, Young, and Centner (US 2007/0215587 Al, pub. Sept. 20, 2007).
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sperling, Young, and Wienhold (US 6,260,857 Bl, iss. July 17, 2001).
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Appeal 2015-005496
Application 13/105,802
Claims 13—15 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sperling, Smith (US 2009/0050606 Al, pub. Feb. 26,
2009), and Young.
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Smith, Young, and Centner.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Smith, Young, and Gordon (US 2006/0151453 Al, pub. July 13, 2006).
Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Young, and Wienhold.
ANALYSIS
Claim 10 rejected for indefiniteness
The Examiner rejected claim 10 because “said tailpiece” lacked an
antecedent basis. Final Act. 2. In response, Appellant amended claim 10 to
recite “a tailpiece.” Early Response After Final Rejection, filed May 10,
2014, at 3, 7. The Examiner entered this amendment. Adv. Act., dated June
10, 2014. We note that this rejection is not mentioned in the Examiner’s
Answer. Thus, we do not sustain this rejection.
Claims 1—3, 5, and 8—12
rejected over Sperling and Young
The Examiner found that Sperling teaches electric arc welding torch 1
and a method of using it, as recited respectively in claims 1 and 11, except
for radial electrode securing wedges and an adjusting collar that forces the
wedges into contact with an electrode. Final Act. 3—4, 9—10. The Examiner
found that Young teaches these features and determined it would have been
obvious to include these features on Sperling to accommodate different sized
electrodes and handle greater torque forces during welding. Id. at 4—6, 10.
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Appeal 2015-005496
Application 13/105,802
We agree with Appellant that a skilled artisan would not have been
motivated to combine Young’s wedges (jaws 22) and adjusting collar (front
sleeve 18), with Sperling’s torch. As Appellant points out, Sperling’s torch
is configured to accommodate electrodes of different diameters. Sperling,
1:15—20; Appeal Br. 10; Reply Br. 4. The Examiner’s failure to address this
teaching in Sperling undermines the Examiner’s rationale. See Ans. 24. Nor
has the Examiner explained how incorporating Young’s chuck would have
improved Sperling’s ability to accommodate electrodes so that a skilled
artisan would have motivated to make the change. Appellant’s Specification
describes the advantages of the claimed wedge and adjusting collar over a
prior art collet (Spec. Tflf 5—10), such as Sperling’s, but reliance on this
disclosure for the motivation would constitute impermissible hindsight.
Appellant argues persuasively that Sperling and Young respectively
engage elongate electrode 2/drill shank 51 in an opposite manner, so the
proposed modification is not as “straightforward” as the Examiner found.
Appeal Br. 11. The Examiner describes how Sperling and Young secure
elongate members differently (Ans. 23—24), but asserts that the devices solve
the same problem and thus are interchangeable (Ans. 24—25). However,
Sperling’s collet 3 tightens as it is drawn rearwardly against taper fit lock 5.
Sperling, 3:26—38. In contrast, Young’s wedges 22 tighten as they are
pushed forwardly in separate passages 40. Young || 38—39. The Examiner
has not explained how the mechanisms are interchangeable. We also agree
with Appellant that adding Young’s wedges, collar, and other components to
Sperling would interfere with the ability of elements 17, 25 of Sperling’s
device to dissipate heat and transmit inert shielding gas. See Appeal Br. 11.
Thus, we do not sustain this rejection.
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Appeal 2015-005496
Application 13/105,802
Dependent claims 4, 6, and 7 rejected over
Sperling, Young, and Centner/Wienhold
The Examiner’s reliance on Centner and Wienhold to teach features
recited in claims 4, 6, and 7 does not overcome the deficiencies of Sperling
and Young discussed above for claim 1, from which these claims depend.
See Appeal Br. 16—17. Thus, we do not sustain these rejections.
Claims 13—15 and 20 rejected over
Sperling, Smith, and Young
Independent claim 13 recites a welding system that includes a welding
torch having a plurality of electrode securing wedges, an internal conical
surface, and an adjusting collar. The Examiner relied on Sperling and
Young to render these features obvious for similar reasons as for claim 1.
Final Act. 3—6, 13—16. The Examiner relied on Smith to teach a welding
system. Id. at 16—17. Sperling and Young do not render the welding torch
obvious for the same reasons as claim 1. Appeal Br. 18—19. Thus, we do
not sustain the rejection of claim 13 or its dependent claims 14, 15, and 20.
Claim 16) 19 rejected over Sperling,
Smith, Young, and Centner/Gordon/Wienhold
The Examiner’s reliance on Centner, Gordon, and Wienhold to teach
features of claims 16—19 does not overcome the deficiencies of Sperling and
Smith as to claim 13 from which these claims depend. Thus, we do not
sustain the rejection of these dependent claims.
DECISION
We reverse the rejections of claims 1—13 and 15—20.
REVERSED
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