Ex Parte Yoshima

Patent Trial and Appeal Board

Jul 28, 2014

11917247 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KAZUMASA YOSHIMA
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Appeal 2012-006302
Application 11/917,247
Technology Center 3700
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Before: JENNIFER D. BAHR, ANNETTE R. REIMERS, and
JILL D. HILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kazumasa Yoshima (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 13–24 under 35 U.S.C. § 112,
second paragraph, as being indefinite,1 and under 35 U.S.C. § 103(a) as
being unpatentable over Stava (US 2004/0035839 A1, pub. Feb. 26, 2004)

1 On page 2 of the Final Rejection, the Examiner set forth two separate
rejections of claims 13–24 under 35 U.S.C. § 112, second paragraph. The
Examiner withdrew the first rejection, but maintains the second rejection.
Ans. 4, 6, 7.
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and Tanaka2 (JP 2005-230825A, pub. Sept. 2, 2005). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claim 13, reproduced below, is illustrative of the claimed subject
matter.
13. A tandem arc welding device operating in accordance with
an operation program for welding a welding object, wherein the
welding device is movable in a forward direction and a
backward direction, the welding device comprising:
a welding conditions holding unit for holding
fore-going welding condition parameters to
be sent to a welder having a fore-going electrode,
where the fore-going electrode proceeds along a
welding direction, and where the fore-going
welding condition parameters include a fore-going
electric current indication and a fore-going voltage
indication, and
hind-going welding condition parameters to
be sent to a welder having a hind-going electrode,
where the hind-going electrode proceeds behind
the fore-going electrode along the welding
direction, where the hind-going welding condition
parameters include a hind-going electric current
indication and a hind-going voltage indication,
wherein the fore-going welding condition
parameters and the hind-going welding condition
parameters are stored together as welding
conditions in a welding conditions table,

2 Appellant and the Examiner refer to this reference as “Hamamoto.” An
English language translation of this reference was entered into the electronic
record for this application on December 12, 2007.
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wherein the welding conditions table is
independent of the operation program;
a welding conditions editing unit for editing data
items constituting the welding conditions stored in the
welding conditions table;
an electrode decision unit that makes a decision as
to which of the two electrodes becomes the fore-going
electrode, based on fore-going electrode information of
the operation program; and
a welder control unit which designates, based on
the decision made by the electrode decision unit, one of
the two welders as the welder having the fore-going
electrode and the other welder as the welder having the
hind-going electrode, and sends the fore-going welding
condition parameters to the welder having a fore-going
electrode and the hind-going welding condition
parameters to the welder having a hind-going electrode.

OPINION
Indefiniteness
The Examiner asserts that there is “insufficient antecedent basis” for
“the limitation ‘the two welders’” in the last paragraph of claim 13. Ans. 4.
The Examiner states that “[t]he word ‘welder’ is not used anywhere else in
Claim 13.” Ans. 7. This statement is not correct. The term “welder”
appears twice in claim 13 prior to the last paragraph, in the phrases “a
welder having a fore-going electrode” and “a welder having a hind-going
electrode.” These two occurrences of the term “welder” provide sufficient
antecedent basis for “the two welders.”
Thus, we do not sustain the rejection of claims 13–24 under 35 U.S.C.
§ 112, second paragraph.
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Obviousness
Claim 13 requires a welding conditions holding unit for holding
fore-going welding parameters and hind-going welding parameters,
including voltage and current indications, stored together as welding
conditions in a welding conditions table independent of the operation
program. Appeal Br. 18, Clms. App. The Examiner found that Stava’s
controller 200 satisfies the requirements of the claimed “welding conditions
holding unit.” Ans. 5. The Examiner stated that Stava’s controller 200
“would contain welding parameters for the foregoing and hind going
electrodes.” Id. (citing Stava, Fig. 2 and ¶ 26).
Appellant argues that Stava provides no description of any table in
controller 200, much less any description of controller 200 storing both
welding condition parameters for electrode 12 and welding condition
parameters for electrode 14 in a table. Appeal Br. 13. Appellant further
contends that “[Tanaka] does not disclose that the switching unit 22 stores
the welding condition parameters in a welding conditions table which is
independent of the operation program” and that the Examiner “does not cite
any portion of Stava or [Tanaka] as teaching the welding conditions table
storing the fore-going and hind-going welding conditions independently of
an operation program as required by claim 13.” Id. We agree with
Appellant.
Stava mentions nothing about a table storing parameters for both
electrodes. In fact, Stava shows a controller (200 for PS1, for electrode 12)
and a separate controller as part of PS2 (a duplicate of PS1, for the other
electrode 14). Stava, Fig. 2; ¶ 25. As pointed out by Appellant, Stava does
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not disclose a table for holding parameters, much less a table which stores
together the parameters for both electrodes.
The Examiner does not point out any disclosure in Tanaka of a table
for storing together welding condition parameters for both the foregoing and
hindgoing electrodes. Tanaka recognizes the importance of the
“precedence” electrode, and discloses a switching part 22 which effectively
switches the first and second power supplies for supplying power to the
precedence (foregoing) electrode and the other (hindgoing) electrode, when
the welding direction is reversed. Tanaka Transl. ¶¶ 3, 8, 9, 15, 17, 21–23.
The Examiner proposes to “combine the teachings of Stava with [Tanaka] to
provide the switching unit for allowing the electrodes to weld in tandem in a
forwards and backwards direction.” Ans. 5–6. Thus, the Examiner’s
proposed combination of Stava and Tanaka does not cure the deficiency of
Stava vis-à-vis the welding conditions table called for in claim 13.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claim 13 and of its dependent claims 14–24.

DECISION
The Examiner’s decision rejecting claims 13–24 under 35 U.S.C.
§ 112, second paragraph, and under 35 U.S.C. § 103(a) is reversed.
REVERSED

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