Ex Parte Spicer et alDownload PDFPatent Trial and Appeal BoardAug 31, 201613624233 (P.T.A.B. Aug. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/624,233 09/21/2012 72823 7590 Quinn Law Group, PLLC 39555 Orchard Hill Place Suite 520 Novi, MI 48375 09/02/2016 FIRST NAMED INVENTOR John Patrick Spicer 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P018875-RD-SDJ/GM2592 1013 EXAMINER SAAD, ERIN BARRY ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 09/02/2016 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): mjb@quinnlawgroup.com amb@quinnlaw group .com US Docketing@quinnlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN PA TRICK SPICER, JEFFREY A. ABELL, MICHAEL ANTHONY WINCEK, DEBEJYO CHAKRABORTY, JENNIFER BRACEY, HUI WANG, PETER W. TA VORA, JEFFREY S. DA VIS, DANIEL C. HUTCHINSON, RONALD L. REARDON, and SHAWN UTZ Appeal2015-001344 Application 13/624,233 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1--4, 6, 7, and 17-20 of Application 13/624,233 under 35 U.S.C. § 103(a) as obvious and provisionally rejected those claims on the ground of nonstatutory obviousness-type double patenting (OTDP). Final Act. (Oct. 31, 2013). Appeal2015-001344 Application 13/624,233 Appellants 1 seek reversal of the Examiner's decisions pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6(b ). For the reasons set forth below, we REVERSE the obviousness rejections. We decline to review the provisional OTDP rejection. BACKGROUND The '233 Application describes a system for the application of high frequency vibration energy to weld adjacent work pieces. Spec. i-f 4. According to the Specification, the system processes sensory and control signals to predict the quality of a weld. Id. at i-f 7. The system includes a status projector to display the predicted quality status of a weld on the welded work piece. Id. Claim 1 is representative of the '233 Application's claims and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A system comprising: a host machine having a processor and tangible, non- transitory memory on which is recorded instructions for predicting a quality status of welds formed via a vibration welding process, wherein the host machine is in electrical communication with a collection of sensors and a welding controller; and a status projector in communication with the host machine, wherein the status projector is operable to selectively illuminate at least some of the welds to thereby indicate the predicted quality status of the illuminated welds; wherein the host machine is configured to execute the instructions using the processor to thereby: 1 GM Global Technology Operations LLC is identified as the real party in interest. App. Br. 3. 2 Appeal2015-001344 Application 13/624,233 receive and process signals from the sensors and the welding controller; predict the quality status of each of the welds; and display the predicted quality status of the welds, on or adjacent to the welds, by illuminating the welds via the status projector. App. Br. 17. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-3, 6, 7, 17, 18, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hesse2 and Calla. 3 Ans. 2. 2. Claims 4 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hesse, Calla, and Saito. 4 Ans. 7. 3. Claims 1--4, 6, 7, and 17-20 are provisionally rejected for OTDP over the combination of claims 8 and 12 of copending Application 13/632,670 and Calla. Ans. 9. DISCUSSION Appellants argue for the reversal of the obviousness rejections of dependent claims 2--4, 6, 7, and 18-20 and independent claim 17 on the basis of limitations present in independent claim 1. (Claim 1 7 has similar corresponding limitations). See App. Br. 6-15; Reply Br. 2---6. We, therefore, limit our analysis to claim 1 for the obviousness rejections of these 2 US 2010/0280646 Al, published Nov. 4, 2010. 3 US 2010/0326962 Al, published Dec. 30, 2010. 4 US 7,286,156 B2, issued Oct. 23, 2007. 3 Appeal2015-001344 Application 13/624,233 claims. Accordingly, claims 2--4, 6, 7, and 17-20 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Rejection 1. The Examiner rejected claims 1-3, 6, 7, 1 7, 18, and 2 0 as obvious over the combination of Hesse and Calla. Ans. 2. We begin by noting that claim 1, which is directed to a system, is written in functional language. Such claims are, of course, proper. For purposes of a prior art rejection, the Examiner must demonstrate that there is a reason to believe that the prior art system is capable of performing the claimed function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Once there is reason to believe that the prior art structure is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art. Id. In this case, claim 1 states that the claimed system includes "a status projector in communication with the host machine, wherein the status • , • 1 1 , 1 , • 1 • 11 • , , 1 , r, 1 1 1 , pro1ecwr zs operaote w setecnvety wumznare ar teasr some OJ rne wetas w thereby indicate the predicted quality status of the illuminated welds . ... " Claim 1 (emphasis added). The Examiner found that Hesse discloses "a monitoring system with sensors to determine the quality of a weld/bond .... " Ans. 12 (citing Hesse i-fi-124--36, Fig. 5). The Examiner further found that Calla discloses a laser beam, which provides sufficient light for a camera to create 2-D images for determining weld quality during vibration welding. Ans. 3 (citing Calla i-fi-f 19, 21-29). Therefore, according to the Examiner, it would have been obvious to the ordinary skilled artisan "to use a laser as taught by Calla to illuminate the welds because the laser beam ... allows the user to focus on a specific area of the weld to determine the quality." Ans. 3. 4 Appeal2015-001344 Application 13/624,233 This conclusion is erroneous because the cited portion of Calla describes use of a light source to facilitate capture of weld images, which are then used to determine weld quality status. See Calla i-f 21 (explaining that light source 112 "provide[s] effective lighting for each camera 108 and 110 to obtain a properly illuminated image of the weld bead 106."); id. i-f 23 (stating that "image may enable the controller 118 to detect welding defects .... "). Calla does not provide any disclosure suggesting use of illumination to indicate the predicted quality status of the weld. See Reply Br. 4--5. As explained in Appellants' Specification, predicted quality status is determined by a monitoring system, which "is configured to monitor various control signals provided by a power supply/welding controller 20 and/or measured by a collection of sensors 25 positioned with respect to the welding apparatus 12." Spec. i-f 17. To indicate the determined poor quality status of a particular weld, the monitoring system includes a status projector, which "interacts with a host machine 40 and a work piece 30 by illuminating any suspect welds." Id. i1 18. The Specification exemplifies a status projector "configured as an optional laser projector, [which] may use a red/green/blue (RGB) laser projector to project a specific color laser indicating the suspect welds, or a gas laser with a switched color filter." Id. i-f 44 (emphasis added). Although the Examiner is correct in explaining that Hesse's system lacks a structure that is capable of conveying predicted weld quality information via illumination on suspect welds, see Ans. 3, the Examiner has not pointed to any evidence that Calla teaches or suggests such a structure. The Examiner has not provided any argument or reasoning supported by adequate facts to explain why a person of ordinary skill in the art would have been motivated to make such changes to either Hesse's monitoring 5 Appeal2015-001344 Application 13/624,233 system or Calla's illuminating apparatus to derive the claimed status projector. In the absence of such an explanation, we cannot affirm the rejection ofclaim 1. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) ("[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Rejection 2. The Examiner rejected claims 4 and 19 as obvious over the combination of Hesse, Calla, and Saito. Ans. 7. The Examiner's discussion of Saito, see id., does not provide the reasoning and explanation that was missing from Rejection 1. Accordingly, we also reverse the rejection of claims 4 and 19 as obvious. Rejection 3. For the reasons stated below, we exercise our discretion not to review the Examiner's provisional rejection of claims 1--4, 6, 7, and 17-20 for ODP. See Ex parte Jerg, 2012 WL 1375142 at *3 (BPAI 2012) (informative) ("Panels have the flexibility to reach or not reach prov1s10nal obviousness-type double-patenting rejections." (citing Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential))). On May 17, 2013, the Examiner first provisionally rejected claims 1- 4, 6, 7, and 17-20 for ODP over claims 1-3, 6, 8, and 12 of the '670 Application, without relying on Calla. Office Action 9 (May 17, 2013). Since the initial provisional ODP rejection, claims 8 and 12 of the '670 Application have been substantively amended. '670 Prosecution History Amendment & Response 3--4, 8-11 (January 17, 2014). 6 Appeal2015-001344 Application 13/624,233 Furthermore, on June 24, 2014, the '670 Application issued as U.S. Patent No. 8,757,469 B2. 5 In view of the substantial changes in the claims and the Examiner's grounds since the initial entry of the provisional ODP rejection, we would have to conduct a patentability analysis ab initio. Preferring to have the benefit of the Examiner's expertise in the first instance, we decline this opportunity. While we do not affirm the Examiner's provisional OTDP rejection, the Examiner remains free to assert a non-provisional OTDP rejection based on the issued claims of the '469 patent, whether alone or in combination with other references. CONCLUSION For the reasons set forth above, we reverse the obviousness rejections based upon the combination of Hesse and Calla, either with or without Saito. We exercise our discretion not to review the provisional OTDP rejection over the combination of claims 8 and 12 of the '670 Application and Calla. REVERSED 5 Claims 8 and 12 from the '670 Application were renumbered and are claims 1 and 5, respectively, in the issued patent. Index of Claims ('670 Prosecution History Feb. 28, 2014). 7 Copy with citationCopy as parenthetical citation