Ex Parte Sigler et al

Patent Trial and Appeal Board

Dec 23, 2016

13777345 (P.T.A.B. Dec. 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.
13/777,345 02/26/2013 David R. Sigler P024306-CON-RD-SDJ 4685
60770 7590 12/27/2016
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
MATHEW, HEMANT MATHAI
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
12/27/2016 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 DAVID R. SIGLER and MICHAEL J. KARAGOULIS
____________________

Appeal 2015-003443
Application 13/777,345
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David R. Sigler and Michael J. Karagoulis (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 2,
6–8, and 10. Claims 3 and 9 are indicated by the Examiner as containing
allowable subject matter, and claims 4 and 5 are withdrawn from
consideration. See Final Act. 1, 4. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2015-003443
Application 13/777,345

2

THE INVENTION
Appellants’ claimed invention relates to welding electrodes for
electrical resistance welding. Claims 1 and 6 are independent. Claim 1 is
illustrative of the claimed subject matter and is reproduced below:
1. A welding electrode comprising a body with a round,
spherically domed weld face for contact of the spherically domed
face with a workpiece in an electrical resistance welding
operation, the spherically domed weld face comprising
concentric circular rings of ridges that are separated by surfaces
of the spherically domed weld face such that the concentric
circular rings of ridges are spaced from each other radially from
a center of the spherically domed weld face, the concentric
circular rings of ridges being positioned to contact and impress
into a workpiece surface with each of the individual ridges
projecting outwardly from the surfaces of the spherically domed
weld face that are adjacent thereto, the concentric circular rings
of ridges having height dimensions in the range of twenty
micrometers to two hundred micrometers and spacings between
ridge heights in the range of eighty micrometers to fifteen
hundred micrometers, and wherein the material of the concentric
circular rings of ridges is susceptible to degradation in welding
operations.

THE REJECTION
Claims 1, 2, 6–8, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Urech (US 4,591,687, issued May 27, 1986).

Appeal 2015-003443
Application 13/777,345

3
ANALYSIS
Claim 1 requires, inter alia, a spherically domed weld face that
contacts a workpiece, and ridges that project outwardly from the surfaces of
the spherically domed weld face.
Appellants argue, relying principally upon a “Declaration of David R.
Sigler Under 37 C.F.R. § 1.132”1 filed September 20, 2013 (hereinafter
“Sigler Declaration” or “Sigler Decl.”), that the tops of the raised areas 15 of
Urech define the spherical base weld face surface 7 and as such, the raised
areas 15 “cannot at the same time ‘project outwardly’ from the base weld
face surface 7 as stated in claims 1 and 6.” Appeal Br. 10 (citing Sigler
Decl. ¶ 19). Appellants assert that this difference in structure is apparent
from the disparities in function. See id. at 11–13.
In response, the Examiner relies on an annotated version of Figure 2
of Urech, appearing at page 4 of the Answer, and takes the position that
“each of the individual ridges project[s] outwardly from the surface[ ] of the
face (contour of bottom of ridges shown by dashed line make the spherically
domed weld face in which ridges extend up and out from the face.” Ans. 5
(citing Urech, Figs. 2 and 6). As to Appellants’ arguments that the grooves
of Urech do not provide the same functional attributes, the Examiner states
that any functional attributes are a recitation of the intended use and that
Urech is capable of performing these functions. See id. at 11.
Claim 1 requires, “a round, spherically domed weld face for contact
… with a workpiece,” and claim 6 requires, “a domed weld face configured
at one end of the body to contact a sheet metal workpiece surface.” Appeal

1 Mr. Sigler is a named co-inventor of the present application.
Appeal 2015-003443
Application 13/777,345

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Br. 15–16 (Claims App.). The Examiner does not point to any disclosure or
provide any technical reasoning that establishes that what is regarded as a
spherical weld face in Urech, i.e., an arc extending along the bottoms of the
plurality of ridges, would, or is capable of, contacting the workpiece, as
required by the claims. To the contrary, Urech discloses that “the material
of sheets 25 and 26, in the vicinity of the axis of the electrode, penetrates to
a depth of about 50% of the depth of the groove into grooves 11 and 12.”
Urech, col. 17, ll. 21–24; Figs. 2 and 3. Urech also discloses that “raised
areas of the electrodes press into the relevant workpiece-parts while parts of
the set-back areas come into contact with workpiece-material.” Id. at col.
10, ll. 18–22 (emphasis added). As such, the Examiner-defined spherical
weld face at the innermost extent of the ridges does not, in the intended use
of the electrode, contact the surface of the workpiece, as claimed, nor has the
Examiner established by a preponderance of the evidence that it is capable
of doing so.
Accordingly, the rejection of claims 1, 2, 6–8, and 10 is not sustained.
DECISION
The rejection of claims 1, 2, 6–8, and 10 under 35 U.S.C. § 103(a) is
reversed.

REVERSED