Ex Parte Ertmer

Patent Trial and Appeal BoardJul 31, 2015

12403240 (P.T.A.B. Jul. 31, 2015)

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. 12/403,240 03/12/2009 Jonathan R. Ertmer 21926/YOD (ITWO:0266) 9291 52145 7590 07/31/2015 FLETCHER YODER (ILLINOIS TOOL WORKS INC.) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER TRAN, THIEN S ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 07/31/2015 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 JONATHAN R. ERTMER ____________ Appeal 2013-007942 Application 12/403,240 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 Jonathan R. Ertmer (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3–10, and 12–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed to a positioning attachment for a welding torch. Independent claim 1, reproduced below, is illustrative: 1. A positioning attachment for a welding torch comprising: Appeal 2013-007942 Application 12/403,240 2 two or more legs extending from a nozzle of the welding torch and being configured to extend from the nozzle of the welding torch toward a workpiece to touch the workpiece to define either a distance between the welding torch and the workpiece, an angle of the welding torch with respect to the workpiece, or both; and wherein the two or more legs comprises a first leg and a second leg, a second length of the second leg is different than a first length of the first leg, and the second length of the second leg determines the angle of the welding torch with respect to the workpiece. THE REJECTIONS The Examiner has rejected: (i) claims 1–3, 5, 7, 8, 10–13, 15, and 17–20 under 35 U.S.C. § 103(a) as being unpatentable over Morley (US 2,845,524, issued July 29, 1958) in view of Halbing (US 1,994,700, issued Mar. 19, 1935) and Boehnlein (US 2003/0034337 A1, published Feb. 20, 2003); (ii) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Morley in view of Halbing, Boehnlein, and Hixon (US 4,914,268, issued Apr. 3, 1990); (iii) claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Morley in view of Halbing, Boehnlein, and Hori (US 5,635,091, issued June 3, 1997); and (iv) claims 9, 14, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Morley in view of Halbing, Boehnlein, and Haberman (US 5,147,997, issued Sept. 15, 1992). A rejection of claims 1–20 under 35 U.S.C. § 112, first paragraph, has been withdrawn by the Examiner. Ans. 4. Appeal 2013-007942 Application 12/403,240 3 ANALYSIS Claims 1–3, 5, 7, 8, 10–13, 15, and 17–20--Obviousness-- Morley/Halbing/Boehnlein The Examiner finds that Morley discloses all elements of independent claims 1, 10, and 17, except that the legs of Morley do not have different lengths. Final Act. 5. The Examiner relies on Boehnlein as teaching “the second length of the second leg (Fig 11, second end 116, 0035) is different that the first length of the first leg (Fig 11, collar 106, 0035).” Id. at 5–6. The Examiner’s position is that “[t]he collar 106 of Boehnlein can be reasonably interpreted as legs because the collar is elongated and extends from the central body 114, the collar having a similar shape to the second leg 116.” Ans. 6. The Examiner also finds that Halbing discloses “changing the leg angle/height (Pg 2, Col. 1, Lines 64–75 thru Col. 2, Lines 1–2) of the positioning attachment is known in the art” to provide “the advantage of adapting the carriage to various contours of the work surface (Pg 2, Col. 1, Lines 70–75).” Final Act. 6. The Examiner’s position is that “Halbing [also] discloses the legs (Halbing, Figs 1, 2, legs 16, 18) which are attached to the welding torch nozzle (Halbing, Fig 1, torch T) and extends from the torch nozzle.” Ans. 7. Appellant argues that the combined teachings of Morley, Halbing, and Boehnlein fail to disclose a second leg having a length that is different than the length of a first leg. Appeal Br. 10–12; Reply Br. 2–3. Specifically, Appellant asserts that Boehnlein does not teach this element because “the collar 106 is used to attach the second end 116 of the welding guide device 102 to a torch 10, but the collar 106 is not a leg.” Appeal Br. 11; Reply Br. 2 (emphasis in original). Appellant also argues that Halbing does not Appeal 2013-007942 Application 12/403,240 4 disclose this limitation because supports 17 of Halbing do not extend from a welding torch nozzle to a workpiece. Appeal Br. 12; Reply Br. 3 (emphasis in original). Collar 106 of Boehnlein circumferentially extends around the insulator 30 “for attaching the guide device to the insulator 30.” Boehnlein ¶ 35; Fig. 1. As noted by Appellant, when attached, collar 106 wraps around the torch, but collar 106 does not extend from the torch and is not configured to touch the workpiece, both conditions being required by the claims. See Boehnlein, Figs. 1, 5, 11. As such, the Examiner’s position that collar 106 of Boehnlein constitutes a leg is not supported by a preponderance of the evidence. As to Halbing, the Examiner has offered a reason why one of ordinary skill in the art might modify Morley based on the teachings of Halbing, namely, to adapt the carriage to various contours of the work surface. However, the teachings of Halbing are based on adjusting a carriage that is connected not only to the welding torch, but also to a guide tube for feeding the welding rod. Halbing, p. 2, col. 1, ll. 55–57; Fig. 1. It is unclear whether the Examiner is proposing to substitute the entire carriage of Halbing for the adapter nozzle of Morley or whether the Examiner intended some other modification that was less than a full substitution of one attachment device for the other. The Examiner has not cogently explained what modification to Morley was contemplated or what the resulting structure would be. For these reasons, the Examiner has not established a prima facie case of obviousness. The rejection of claims 1–3, 5, 7, 8, 10–13, 15, and 17–20 is not sustained. Appeal 2013-007942 Application 12/403,240 5 Claim 4--Obviousness--Morley/Halbing/Boehnlein/Hixon The Examiner does not rely on Hixon in any manner that remedies the deficiencies noted above with respect to the combination of the teachings of Morley, Halbing, and Boehnlein. Accordingly, the rejection of claim 4 is not sustained. Claim 6--Obviousness--Morley/Halbing/Boehnlein/Hori The Examiner does not rely on Hori in any manner that remedies the deficiencies noted above with respect to the combination of the teachings of Morley, Halbing, and Boehnlein. Accordingly, the rejection of claim 6 is not sustained. Claims 9, 14, and 16--Obviousness--Morley/Halbing/Boehnlein/Haberman The Examiner does not rely on Haberman in any manner that remedies the deficiencies noted above with respect to the combination of the teachings of Morley, Halbing, and Boehnlein. Accordingly, the rejection of claims 9, 14, and 16 is not sustained. DECISION The rejection of claims 1–3, 5, 7, 8, 10–13, 15, and 17–20 under 35 U.S.C. § 103(a) as being unpatentable over Morley, Halbing, and Boehnlein is REVERSED. The rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Morley, Halbing, Boehnlein, and Hixon is REVERSED. The rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Morley, Halbing, Boehnlein, and Hori is REVERSED. Appeal 2013-007942 Application 12/403,240 6 The rejection of claims 9, 14, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Morley, Halbing, Boehnlein, and Haberman is REVERSED. REVERSED em