Ex Parte Jansma

Patent Trial and Appeal BoardFeb 15, 2019

13427976 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/427,976 03/23/2012 149749 7590 02/20/2019 ITW c/o MCANDREWS HELD & MALLOY 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR Jeremy L. Jansma 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. 61974US01 (60526-US) 9453 EXAMINER DUNNER, DIALLO IGWE ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEREMY L. JANSMA Appeal2018-003467 1 Application 13/427,9762 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-3, 7, and 9, which are the only claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed August 30, 2017) and Reply Brief ("Reply Br.," filed February 14, 2018), the Examiner's Answer ("Ans.," mailed December 15, 2017), and Final Office Action ("Final Act.," mailed August 7, 2017). 2 Appellant identifies "Illinois Tool Works Inc." as the real party in interest. App. Br. 3. Appeal2018-003467 Application 13/427 ,97 6 THE INVENTION Independent claim 1, reproduced below with added emphasis, is illustrative of the claims on appeal. 1. A welding gun comprising: a gun assembly including a handle having a cable receiving end and also a connecting end; said connecting end including a tubular end fitting having female threads proximal to said connecting end; said end fitting also having an aperture adjacent said female threads, said aperture having a quadrilateral shape; a neck assembly including a body tube having a welding end and also a connecting end; said connecting end of said body tube being telescopically engageable with said tubular end fitting; said connecting end of said body tube including a circumferential, annular ring-like recess perpendicular to a longitudinal direction of said body tube and inwardly spaced from a terminus of said connecting end; said connecting end of said body tube also including a locking nut and male threads engageable with said female threads; said locking nut and male threads being disposed adjacent said annular recess away from said terminus; and a stop defined by an arcuate key circuniferentially fitable in said aperture and extending into said annular recess in an assembled disposition of the gun, thereby restricting axial movement of said neck assembly relative to said gun assembly yet allowing rotational movement of said neck assembly relative to said gun assembly, said arcuate key having a quadrilateral cross-sectional shape that coincides with the shape of said aperture, said arcuate key having an arcuate shape in a radial direction that is an arc portion of a circular quadrilateral shape, said arcuate key having an outer surface that is an arc portion of a convex polygonal shape, said arcuate 2 Appeal2018-003467 Application 13/427 ,97 6 key having a curved inner surface that coincides in shape with said circumferential annular recess, and said arcuate key further including a curved, radially extending protrusion along and parallel to an edge of said curved inner surface, said curved inner surface of said arcuate key being inserted face-first into said aperture and said curved protrusion being positioned in said circumferential annular recess in the assembled disposition of the gun. (App. Br. 21-22 (Claims App'x)). THE REJECTIONS The following rejections are before us for review: I. Claims 1-3, 7, and 9 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1-3, 7, and 9 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Haczynski et al. (US 5,866,874, iss. Feb. 2, 1999) ("Haczynski"), Redding et al. (US 6,055,703, iss. May 2, 2000) ("Redding"), and Cooper (US 4,892,432, iss. Jan. 9, 1990). ANALYSIS Rejection I Written Description The Examiner finds that the Specification does not sufficiently support the claim 1 limitation "said arcuate key having an outer surface that is an arc portion of a convex polygonal shape" (Final Act. 3). According to the Examiner, "Applicant does not describe the arcuate key of having a convex polygonal shape in Applicant's [S]pecification" and "[t]he Examiner 3 Appeal2018-003467 Application 13/427 ,97 6 suggest[s] amending Applicant's [S]pecification to include the arcuate key description as disclosed in Applicant's [S]pecification" (Id.). 3 Appellant argues that the rejection is improper because "arcuate key 148 shown in FIGS. 1, 2, and 6 of the present application has an outer surface that has a shape that is an arc portion of a convex polygonal shape" (App. Br. 12). According to Appellant, "a convex polygon is a multi-sided closed shape in which all of the interior angles are less than 180 degrees." (Id.). Whether a specification complies with the written description requirement of 35 U.S.C. Â§ 112, first paragraph, is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Paulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need not literally describe the claimed subject matter (i.e., using the same terms or in haec verba) in order to satisfy the written description requirement. Rather, the Specification must convey with reasonable clarity to those skilled in the art that, as of the filing date, Appellant was in possession of the claimed invention. See id. Considering the teachings of the Specification, the scope of the claims, and the relative simplicity and predictability of the relevant technology, we are persuaded that the Examiner has not shown that the Specification fails to convey with reasonable clarity to those skilled in the art that Appellant was in possession of the invention as set forth in claims 1- 3 To the extent the Examiner suggests that the rejection may be overcome by amending the Specification, the Examiner may instead consider an objection to the Specification. See, e.g., MPEP Â§ 608.0l(o). 4 Appeal2018-003467 Application 13/427 ,97 6 3, 7, and 9, at the time the application was filed. For example, as Appellant points out (App. Br. 12), Figures 1, 2, and 6 depict a key 148 having an outer surface in the shape of an arc portion of a multi-sided closed shape where all the interior angles are less than 180 degrees. 4 Responding to Appellant's argument in the Answer, the Examiner does not substantively address the disclosure of Figures 1, 2, and 6. The Examiner focuses instead on the textual description in the Specification (Ans. 7-9), and states that although the Specification "discloses that the aperture 126 generally has a quadrilateral shape" (Id. at 7), "the key is still fitable within the aperture without having the exact same shape as the aperture" (Id. at 8). According to the Examiner, Appellant's Specification "does not support claim language that describes the shape of the key as 'arcuate, quadrilateral, polygonal or convex"' (Id.). As to the shape of the key being quadrilateral, claim 1 does not recite a key having a quadrilateral shape. Rather, claim 1 calls for "said arcuate key having a quadrilateral cross-sectional shape" (App. Br. 22 (Claims Appendix)) (emphasis added). A person of ordinary skill in the art reviewing Figure 2, for example, would understand that key 148 has at least one cross-sectional shape that is quadrilateral. Therefore, we do not sustain the rejection of claims 1-3, 7, and 9 as failing to comply with the written description requirement. 4 The Examiner does not appear to disagree with Appellant's interpretation of "convex polygon." 5 Appeal2018-003467 Application 13/427 ,97 6 Re} ection II Obviousness Independent claim 1 requires, inter alia, "a stop defined by an arcuate key." In an assembled disposition of the gun, the key restricts "axial movement of said neck assembly relative to said gun assembly yet allowing rotational movement of said neck assembly relative to said gun assembly." Claim 1 further recites "said arcuate key having an arcuate shape in a radial direction that is an arc portion of a circular quadrilateral shape, said arcuate key having an outer surface that is an arc portion of a convex polygonal shape." See App. Br. 21-22 (Claims App'x.). In rejecting claim 1 as obvious over Haczynski, Redding, and Cooper, the Examiner finds that Haczynski discloses "a stop defined by an arcuate key" (Final Act. 4--5). According to the Examiner, Haczynski discloses a stop 36 defined by a curved cylindrical roll pin key 34 fitable in the aperture 38 and extending into the annular recess 98 in an assembled disposition of the gun 10, thereby restricting axial movement of the neck assembly 12 relative to the gun assembly 10 yet allowing rotational movement of the neck assembly 12 relative to the gun assembly 10. (Id. at 4) (citations omitted). The Examiner acknowledges that Haczynski is silent as to the claim 1 limitation "the arcuate key having an arcuate shape in a radial direction that is an arc portion of a circular quadrilateral shape, the arcuate key having an outer surface that is an arc portion of a convex polygonal shape." (Id. at 6). To cure this deficiency, the Examiner relies on Cooper. (Id. at 7-8). According to the Examiner: Cooper teaches in Figures 7-8 of a jagged, arcuate shape. Therefore it would have been obvious to one of ordinary skill in the art to modify further the arcuate shape of Haczynski in view 6 Appeal2018-003467 Application 13/427 ,97 6 of Redding with the jagged shape of Cooper, because Cooper allows for the holding more than two rotatable parts together. (Id. at 10; see also, Ans. 12). Appellant argues, among other things, that Cooper's "clip is not analogous to the claimed arcuate key" (Reply Br. 6). A claim is unpatentable underÂ§ 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,406 (2007). An invention "composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." Id. at 418. Instead, a determination of unpatentability on a ground of obviousness must include "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). The obviousness evaluation "should be made explicit" and it "can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id. Haczynski discloses a "key 34 in the inner body tube 14 cooperates with the keyed body tube 12 to insure that the keyed body tube is attached to the torch 10 in a predetermined orientation." (Haczynski col. 4, 11. 8-11). Haczynski further discloses that "key 34 may be a cylindrical roll pin 36 fixedly positioned in a receiving hole 38 in the inner body tube oriented 7 Appeal2018-003467 Application 13/427 ,97 6 perpendicular to the longitudinal axis of the conductive inner body tube." (Id. at col. 4, 11. 12-15). Cooper discloses "a clip adapted for securing at least two rotating parts axially together while allowing their relative rotations with substantial freedom." (Cooper col. 1, 11. 6-9). For example, Cooper discloses that the clip may be "applied to holding pairs of gears axially together in change speed gearboxes or transmissions." (Id. at col. 1, 11. 9-11 ). We do not see why, and the Examiner has not adequately explained why, a person of ordinary skill in the art would have been motivated to modify Haczynski's roll pin 36 to have "the jagged shape of Cooper." The Examiner's articulated reason for the modification, namely, "because Cooper allows for the holding more than two rotatable parts together" does not identify a reason that would have prompted a person of ordinary skill in the art to modify the shape of Haczynski's key. According to the Examiner, Haczynski' s key restricts axial movement while allowing rotational movement of the neck assembly (Final Act. 4). Given that Haczynski's key already performs that function, we do not see why a person of ordinary skill in the art would look to Cooper to change the shape ofHaczynski's key. that Furthermore, we disagree with the Examiner's alternative reasoning it would have been obvious to a skilled artisan to modify the shape of the locking mechanism the torch handle or support of Haczynski since [Appellant's] [ S Jpecification does not disclose that the shape of the locking mechanism [ of] the torch handle solves any problem or is for a particular reason other than restricting the movement of neck assembly of the gun. It appears that the claimed invention would perform equally well with the shape of the quadrilateral shape locking mechanism of Redding and Cooper because the combination does teach of a 8 Appeal2018-003467 Application 13/427 ,97 6 quadrilateral arcuate key shaped structure used to restrict the movement of two connected tubular shaped structures. (Final Act. 11; Ans. 12). As best understood, the Examiner's position is that the claimed shape of the arcuate key (locking mechanism) amounts to an obvious matter of design choice. There clearly are cases where minor changes in the location and/or orientation of elements to arrive at the claimed invention may be an obvious matter of design choice. For example, "when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious." KSR, 550 U.S. at 417 ( citations and emphasis omitted). However, we find this reasoning inapplicable to the subject matter claimed, and insufficient to support a conclusion of obviousness under the facts of this case. The function of the arcuate key is explicitly set forth in claim 1, namely "restricting axial movement of said neck assembly relative to said gun assembly yet allowing rotational movement of said neck assembly relative to said gun assembly." 5 The Examiner's alternative reasoning does not identify a reason, absent hindsight, that would have prompted a person of ordinary skill in the art to modify the shape of Haczynski's roll pin 36 to have the jagged shape of Cooper's clip. In view of the forgoing, we do not sustain the rejection of independent claim 1. For the same reasons, we also do not sustain the rejection of 5 Appellant's Specification discloses that the locking mechanism prevents unauthorized removal of the neck assembly from the gun assembly. See Spec. 13, 11. 9--19. 9 Appeal2018-003467 Application 13/427 ,97 6 dependent claims 2, 3, 7, and 9. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious"). DECISION The Examiner's decision to reject claims 1-3, 7, and 9 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement is reversed. The Examiner's decision to reject claims 1-3, 7, and 9 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 10