11357458 (B.P.A.I. Apr. 19, 2011)

Ex Parte Wilks

Board of Patent Appeals and InterferencesApr 19, 2011

11357458 (B.P.A.I. Apr. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL T. WILKS ____________ Appeal 2010-005349 Application 11/357,458 Technology Center 1700 ____________ Before CHUNG K. PAK, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-36, 38, 40, and 42. An oral hearing was conducted April 12, 2011. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-005349 Application 11/357,448 2 Claim 1 is illustrative: 1. A device for purging gas, comprising: a conduit assembly defining an interior volume, the conduit assembly comprising: a first conduit portion having an open first end and an open second end; and a second conduit portion having an open first end and a closed second end, wherein the open second end of the first conduit portion is disposed proximate to the open first end of the second conduit portion to define a weld region; a supply element supplying a gas to the interior volume at a substantially constant rate; and a vent element venting the gas from the interior volume at a rate that maintains the gas in the interior volume within a pressure range suitable to hold a weld bead in the weld region in equilibrium during formation of a weld to join the first conduit portion and the second conduit portion; wherein said vent element is configured such that an interior volume of said first and second conduit portions are substantially free of obstructions to thereby maintain fluid flow of said gas within said interior volume of said second conduit portion through to said open first end of said first conduit portion and wherein said vent element does not contact said first and second conduit portions such that an interior surface of said first and second conduit portions remains free of obstruction to substantially permit free gas flow between said closed end of said second conduit portion and said open end of said first conduit portion. The Examiner maintains the following rejections: Claims 1-5, 7-23, 33-38 and 41 under 35 U.S.C. § 102(b) as anticipated by Thode (US 5,425,492 issued Jun. 20, 1995). Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Thode. Claims 24-32 and 39-40 under 35 U.S.C. § 103(a) as unpatentable Appeal 2010-005349 Application 11/357,448 3 over the combined prior art of Thode and Barefoot (US 5,864,111 issued Jan. 26, 1999). Claim 42 under 35 U.S.C. § 103(a) as unpatentable over the combined prior art of Thode and Barefoot (US 6,739,204). ISSUES 1) Did the Examiner err in finding that Thode describes the claimed arrangement of the first and second conduit portions as required in independent device claim 1, as well as in independent method claim 33? 2) Did the Examiner err in finding that Thode describes the claimed arrangement of the vent element such that an interior of the first and second conduit portions remains free of obstructions as required by independent device claims 1 and 24? We answer these questions in the affirmative. PRINCIPLES OF LAW “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Appeal 2010-005349 Application 11/357,448 4 Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). As stated by the Federal Circuit: [The claims] are part of “a fully integrated written instrument,” . . . consisting principally of a specification that concludes with the claims. For that reason, claims “must be read in view of the specification” . . . . [T]he specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (internal citations omitted). ANALYSIS with Factual Findings Appellant argues that the Examiner has not shown how Thode identically discloses the first and second conduit portions to define a weld region at the open second end of the first portion and the open first end of the second portion as recited in the device of claim 1 (App. Br. 6-7; Reply Br. 1-4). We agree. As this same requirement is recited in independent claim 33, we also reverse the § 102 rejection of claim 33 for this reason.1 Specifically, we agree with Appellant that the Examiner has taken an unreasonably broad interpretation of the aforementioned claim limitation for all of the reasons well explained in the briefs (see, especially, Reply Br. 1-4). 1 It is therefore unnecessary for us to reach the issue of whether the Examiner also erred because Thode does not describe supplying gas at “a substantially constant rate” as recited in claim 33 as argued by Appellant (e.g., App. Br. 12-14). Appeal 2010-005349 Application 11/357,448 5 We also agree with the Appellant that the Examiner has not reasonably explained how the vent element of Thode is arranged such that an interior surface of both conduit portions “remains free of obstruction” as required in claims 1 and 242 since the interior of Thode’s conduit portions is filled with dam assemblies (App. Br. 7-8; Reply Br. 4). Therefore, we are persuaded that the Examiner's interpretation of the disputed claim language is overly broad and not reasonable. As such, we cannot sustain either the anticipation rejection or the obviousness rejections which all rely on these flawed interpretations. The Examiner has not relied upon the other applied reference to correct this deficiency of Thode (e.g., the Examiner has not relied upon either Barefoot reference to teach or suggest these features). Accordingly, all of the Examiner’s rejections are reversed. DECISION We reverse all of the Examiner’s § 102 and § 103 rejections. ORDER REVERSED ssl 2 Appellant’s counsel during the oral hearing admitted that dependent claims 20, 21, 30, 31, that recite a spacer element as described as an option in the Specification, are inconsistent with independent claims 1 and 24, and would be cancelled. We agree that this inconsistency should be taken care of in any further proceedings.