Ex Parte Rotheut et al

Patent Trial and Appeal Board

Oct 26, 2017

13350214 (P.T.A.B. Oct. 26, 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.
13/350,214 01/13/2012 Dietmar Rotheut 83220262 1006
28395 7590 10/30/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER STAPLETON, ERIC S
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETMAR ROTHEUT and GUIDO H. MUELLER
Appeal 2017-000032
Application 13/350,214
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dietmar Rotheut and Guido H. Mueller (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 9, 11—
15, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants’ invention relates to an apparatus for welding seamed or
beaded flanges of sheet metal components by means of a tong-type welding
apparatus. Spec. para. 2.
Appeal 2017-000032
Application 13/350,214
Claims 9, 17, and 18 are independent. Claim 9 is illustrative of the
claimed invention and reads as follows:
9. Apparatus for welding a component, comprising:
a tong-type welding device having an electrode and an
abutment movable in opposition to one another along an axis;
and
a support for the component positioned between the
electrode and the abutment, and having a receptacle for receiving
the abutment, the abutment engaging the receptacle and
clamping the support and the component between the electrode
and the abutment when the electrode and abutment are urged
together.
THE REJECTIONS
The Examiner has rejected:
(i) claims 9, 11, 14, 15, 17, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Honda (JP 2004074259 A, published Mar. 11, 2004)1 in
view of Lee (US 6,010,121, issued Jan. 4, 2000); and
(ii) claims 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over Honda in view of Lee and Levi (US 2002/0017752 Al, published Feb.
14, 2002).
1 The Examiner provides an English-language abstract of Honda. Honda
Motor Co. Ltd. appears, from the record, to be the named assignee on this
Japanese publication, with Toshiaki being the named inventor. We will refer
to this reference, as have Appellants and the Examiner, as the Honda
reference.
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Appeal 2017-000032
Application 13/350,214
ANALYSIS
Claims 9, 11, 14, 15, 17, and 18—Obviousness—Honda/Lee
The Examiner explains that Honda discloses an apparatus comprising
a support for a component positioned between an electrode and an abutment
of a tong-type welding device by providing the following annotated version
of Figure 2 of Honda:
ill
See Ans. 11; see also Final Act. 3—5. Annotated Figure 2 of Honda,
reproduced above, is a side elevation view of a welding machine comprising
a welding base 1 and a robot 100 having a welding electrode 111. Honda,
Abstract. It can be seen from the above annotations that the Examiner finds
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Application 13/350,214
that either the lower portion of arm 107 of robot 100 or the top element 13 of
welding base 1 corresponds to the claimed support, and that a portion of
robot 100 that is under and opposite to welding electrode 111 corresponds to
the claimed abutment.
The lower portion of arm 107 is positioned to the left of welding
electrode 111 and appears to be in a fixed location such that it cannot be
moved laterally toward the welding electrode and the abutment. Further, the
welding base 1 is positioned to the right of welding electrode 111 and
appears to have wheels 2 that are placed on tracks such that the welding base
1 is not movable laterally towards welding electrode 111. See id. at Figs. 2—
3. As best understood, then, the Examiner’s position is based upon a claim
construction in which “positioned between” does not require at least a
portion of the claimed support to intersect the axis along which the claimed
electrode and abutment opposably move. In other words, the Examiner
appears to regard “positioned between,” in the case of the Honda reference
(using the orientation shown in Figure 2), as requiring the element(s)
corresponding to the claimed support merely to be at a vertical height
somewhere “between” the height of the abutment and the height of the
electrode, regardless of the lateral (horizontal) position and extent of the
support.
In so construing the claim, the Examiner exceeds the bounds of the
broadest reasonable interpretation of the claims, in light of the additional
language present in the claims as well as in light of the Specification. In
order for the support to have a receptacle for receiving the abutment such
that the axis along which the electrode and abutment move intersects the
abutment, as claimed, a portion of the support itself must intersect that axis
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Appeal 2017-000032
Application 13/350,214
as well. This axis is termed a “clamping axis” in the Specification, and the
Specification refers to a “closed system of forces” involving the support,
further connoting that the “positioned between” language is to be understood
as being positioned between along the claimed axis. Spec, paras. 28, 33.
As noted previously, neither of the elements identified by the
Examiner in Honda as corresponding to the claimed support appears to be
positioned or positionable such that a receptacle in the support will be
engaged by the abutment when the electrode and abutment are urged
together, as required by claim 9. Honda, Fig. 2. The Examiner makes no
particular finding with respect to these limitations, and does not explain how
Honda might be interpreted as meeting the limitations. Final Act., passim.;
Ans., passim. Thus, the Examiner fails to establish that Honda discloses an
apparatus comprising a support for a component that is positioned between
an electrode and an abutment of a tong-type welding device, as claimed.
The Examiner does not rely on Lee in any manner relative to modifying a
position of either of the supports cited by the Examiner, such that the
support would have a portion positioned between an electrode and an
abutment.
Accordingly, the Examiner has not established a prima facie case of
obviousness directed to claims 9, 17, and 18. The rejection of claims 9, 17,
and 18, and of claims 11,14 and 15, depending therefrom, is not sustained.
Claims 12 and 13—Obviousness—Honda/Lee/Levi
The Examiner does not rely on Levi in any manner that remedies the
above-noted deficiency in the rejection of claim 9, from which claims 12 and
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Application 13/350,214
13 depend, over Honda and Lee. Final Act. 9—10. For the same reasons
discussed supra, we do not sustain the rejection of claims 12 and 13.
DECISION
The rejections of claims 9, 11—15, 17, and 18 are reversed.
REVERSED
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