Ex Parte Shigeyoshi

Patent Trial and Appeal Board

Nov 23, 2016

12984077 (P.T.A.B. Nov. 23, 2016)

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.
12/984,077 01/04/2011 Masayuki SHIGEYOSHI 373955US99 1627
22850 7590 11/28/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAYUKI SHIGEYOSHI
Appeal 2015-000577
Application 12/984,077
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-000577
Application 12/984,077
CLAIMED SUBJECT MATTER
The claims are directed to a tip-base metal distance control method for
an arc welding system. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
Claim 1:
A tip-base metal distance control method for an arc
welding system, the method comprising:
(i) measuring actual welding current values under a
predetermined actual welding condition, and calculating an
average actual welding current value under the actual welding
condition to obtain a calculated average actual welding current
value;
(ii) extracting, from a reference-current storage table, a
stored average welding current value under a stored welding
condition corresponding to the actual welding condition to obtain
an extracted average welding current value, and setting the
extracted average welding current value as a reference current
value;
(iii) comparing the calculated average actual welding
current value with the reference current value to obtain a
comparison result; and
(iv) correcting a position of a welding torch in arc
welding in an upward or a downward direction based on the
comparison result so as to maintain a fixed distance between a
tip at an end of the welding torch and a base metal.
REJECTION
Claims 1—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shigeyoshi (US 2008/0083716 Al) in view of
Blankenship et al. (US 6,940,039 B2) and Jung (KR 102001-0095573 A).
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Appeal 2015-000577
Application 12/984,077
OPINION
In the Final Office Action, the Examiner cites paragraphs 8, 9, 12, 22,
27, 28, 55— 59, 62, 66, 68, 70, 86, 87, and Figure 4 of Shigeyoshi as
disclosing subject matter falling within limitations (ii) and (iv) of
independent claim 1, and within similar limitations appearing in independent
claims 8 and 9. Appellant accurately summarizes the cited paragraphs and
correctly argues that these paragraphs do not appear to contain any subject
matter falling within these contested limitations. App. Br. 21—28. In
response, the Examiner reproduces the citation to the aforementioned
paragraphs of Shigeyoshi with some additional cites, but does not provide
further explanation of the reasoning or respond to Appellant’s arguments.
Ans. 6. Repetition does not shed light on the Examiner’s position.
“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless, ’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
the factual basis for its rejection of an application under sections 102 and
103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial
and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94
USPQ2d 1072, 1075—77 (BPAI 2010)(precedential). For that review to be
meaningful, it must be based on some concrete evidence in the record to
support the Examiner’s factual findings and legal conclusions. In re Zurko,
258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132, such as by identifying where or how each limitation of
the rejected claims is met by the prior art references. In re Jung, 637 F. 3d
1356, 1363 (Fed. Cir. 20U); see also 37 C.F.R. § 1.104(c)(2) (“When a
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Application 12/984,077
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be designated as
nearly as practicable. The pertinence of each reference, if not apparent, must
be clearly explained and each rejected claim specified.”); Gechter v.
Davidson 116 F.3d 1454, 1460 (Fed. Cir. 1997)(PTO must create a record
that includes “specific fact findings for each contested limitation and
satisfactory explanations for such findings.”).
In further responding to Appellant’s arguments the Examiner points to
portions of the Blankenship and Jung references not previously relied on
regarding the contested limitations. App. Br. 6—7. These citations do not
address the specific language of the claims and also do not make it apparent
how each contested limitation of the rejected claims is met by the prior art.
The Examiner proceeds to raise several issues relevant to 35 U.S.C. § 112—
a section under which no rejection has previously been set forth—and
introduce additional evidence not previously relied upon. Ans. 7, 9 (citing
Kazuichi, JP11-058016); Reply Br. 6—7. It is not clear on the record before
us, but if the Examiner intended to include a new rejection, different from
that from which the appeal was taken, there is a procedure for doing so,
which was not followed. See 37 C.F.R. § 41.39(2). We cannot affirm any
rejection to which an appellant has not had a fair opportunity to react. Jung,
637 F. 3d at 1365.
As to the Examiner’s proposed construction of the term “fixed,” (Ans.
7, 10) in light of the shortcomings discussed above, we do not regard the
issue as dispositive, but nevertheless note that it is not reasonable to attribute
a meaning to a term that contradicts its use in the Specification. The
Examiner cannot reasonably include, within the definition of the term
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Appeal 2015-000577
Application 12/984,077
“fixed,” subject matter which the Specification expressly identifies as not
fixed. See Spec. 5:4—15; Reply Br. 5—6. “[When giving claim] terms their
broadest reasonable construction, the construction cannot be divorced from
the specification.” In reNTP, 654 F. 3d 1279, 1288 (Fed. Cir. 2011).
DECISION
The Examiner’s rejection is reversed.
REVERSED
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