Ex Parte Sigler et al

Patent Trial and Appeal Board

Sep 19, 2017

13953017 (P.T.A.B. Sep. 19, 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.
13/953,017 07/29/2013 DAVID R. SIGLER P005462-CNT-RD-SDJ 6815
60770 7590 09/19/2017
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
09/19/2017 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, JAMES G. SCHROTH, and
MICHAEL J. KARAGOULIS
Appeal 2016-001256
Application 13/953,0171
Technology Center 3700
Before STEVEN D.A. McCARTHY, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify General Motors Company and GM Global Technology
Operations LLC as the real parties in interest. Appeal Br. 2.
Appeal 2016-001256
Application 13/953,017
ILLUSTRATIVE CLAIM
Method claims 1, 9, and 14 are independent claims. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of using an electrode, the method comprising:
providing an electrode that comprises a body with a dome
face at one end of the body, the dome face comprising a dome
face surface and a round plateau centered on the dome face
surface, the round plateau having a plateau surface raised above
the dome face surface and a circumference such that the dome
face surface surrounds the round plateau, wherein the dome face
surface and the plateau surface, taken together, define an overall
spherical radius of curvature of the dome face, and wherein the
plateau surface is planar or has a spherical radius of curvature
that is greater than the overall spherical radius of curvature of the
dome face;
contacting the dome face of the electrode with one or more
workpieces to form electrical resistance welds at the one or more
workpieces;
determining when the dome face has been degraded for
suitable electrical contact with the one or more workpieces;
reforming the dome face surface; and, thereafter
continuing to form electrical resistance welds with the
electrode.
THE REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Chen (US 2005/0211677 Al; Sept. 29, 2005).
ANALYSIS
Independent claims 1 and 9 include the step of “contacting the dome
face of the electrode with one or more workpieces to form electrical
resistance welds,” and independent claim 14 similarly recites “pressing the
plateau surface and the dome face surface of the dome face of the electrode
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Appeal 2016-001256
Application 13/953,017
into an aluminum alloy workpiece.” The Examiner finds Chen discloses an
electrode having a dome face with Chen’s electrode having a face surface
“defined by concentric circle groove surfaces in end faces of electrodes 110,
120 mirroring contour of textured faces 260.” Final Act. 2 (citing Chen
1122, 26).
Appellants argue the Examiner erred in finding Chen’s electrodes 110,
120 include a round plateau or dome face. Appeal Br. 15—16. According to
Appellants, Chen’s electrodes “merely include concentric circular grooves
that have been formed in an electrode tip that otherwise exhibits a uniform
spherical radius of curvature.” Appeal Br. 16.
The Examiner responds that such structural limitations in Appellants’
method claims are not entitled to patentable weight unless the structure
affects the claimed method in a manipulative sense. Ans. 4 (citing Ex parte
Pfeiffer, 135 USPQ 31 (Bd. App. 1961)). The Examiner finds the structure
of the electrode dome face does not appear to affect the claimed method in a
manipulative sense and that “[a]n electrode of any structure is capable of
performing the method.” Ans. 4—5.
We disagree with the Examiner. Among other things, Appellants’
Specification describes the claimed electrode as useful for penetrating any
oxide coatings on workpieces to ensure good electrical contact between the
electrode and the workpiece. See, e.g., Spec. Tflf 15, 17, 42. Additionally,
the Specification states that Appellants’ “unique electrode face design is
provided that is effective for welding either aluminum sheets (or other light
metal sheets) or steel sheets, particularly for the situation when the
aluminum material stackup thickness is substantially greater than the steel
material stackup thickness.” Spec. 128.
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Appeal 2016-001256
Application 13/953,017
In light of the evidence of record, we agree with Appellants that the
Examiner has not established that Chen discloses an electrode having a
dome shape as claimed nor that the claimed dome shape deserves no
patentable weight in the evaluation of Appellants’ method claims.
Accordingly, having considered the Examiner’s rejection of independent
claims 1, 9, and 14 in light of Appellants’ arguments and the evidence of
record, we do not sustain the Examiner’s rejection of claims 1, 9, or 14, nor
dependent claims 2—8, 10-13, and 15—20.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1-20.
REVERSED
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