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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/377,152 02/11/2009 Masaru Nishimura 10921.607USWO 3229
52835 7590 08/04/2017
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASARU NISHIMURA
Appeal 2015-003046
Application 12/377,152
Technology Center 3700
Before MICHAEL L. WOODS, AMANDA F. WIEKER, and
SEAN P. O’HANLON, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Masaru Nishimura (“Appellant”) appeals from the Examiner’s
rejection of claims 1 and 3—12. Appeal Br. 1. We have jurisdiction over
appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
Appeal 2015-003046
Application 12/377,152
CLAIMED SUBJECT MATTER
Appellant’s invention relates to a welding torch mounted on an
industrial robot. Spec. 1,11. 7—10. Claims 1 and 9 are independent and
claim 1 is reproduced below, with emphases added to particular limitations
at issue in this appeal.
1. A consumable electrode gas shield arc welding torch
comprising:
a torch body provided with a wire insertion hole at an axial
center;
a tip body provided with a wire insertion hole at an axial
center and mounted to a front end of the torch body;
a tip holder provided with an insertion hole at an axial
center and mounted to a front end of the tip body;
a spring provided with a wire insertion hole at an axial
center and provided in the tip body to come into contact with the
front end of the torch body;
a pressing shaft provided with a wire insertion hole at an
axial center and provided in the tip body to come into contact
with a front end of the spring; and
a power supply tip provided with a wire insertion hole at
an axial center and pressed by the pressing shaft and the tip
holder;
wherein the power supply tip is provided with a front end
and a base end opposite to the front end of the power supply tip,
and formed with at least one vertical slit extending from the front
end of the power supply tip along the wire insertion hole of the
tip;
wherein the power supply tip includes a side surface
formed with a tapered surface which is slidable in contact with a
base end of the tip holder so that a space is defined between an
inner surface of the tip holder and the front end of the power
supply tip when the front end of the power supply tip is inserted
into the insertion hole of the tip holder;
wherein the tapered surface is spaced apart from the front
end of the power supply tip and the vertical slit extends from the
front end of the power supply tip toward the base end of the
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Appeal 2015-003046
Application 12/377,152
power supply tip beyond the tapered surface, the vertical slit
being configured to divide the tapered surface into parts;
wherein the spring presses the pressing shaft and the
pressing shaft presses the power supply tip to cause the tapered
surface of the power supply tip to slide along the base end of the
tip holder in a direction toward the front end so that an inner
surface of the wire insertion hole of the power supply tip presses
a welding wire;
wherein the tapered surface of the power supply tip is
configured to increase monotonically in diameter from the front
end of the power supply tip toward the base end of the power
supply tip; and
wherein the tapered surface of the power supply tip has a
maximum diameter, the insertion hole of the tip holder has a
maximum diameter, and the maximum diameter of the tapered
surface of the power supply tip is greater than the maximum
diameter of the insertion hole of the tip holder.
Appeal Br. 16—17 (emphases added) (Claims App.).
THE REJECTIONS1
I. Claims 1,3,4, and 6—12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nishimura (JP 2002-059265, published February 26,
2002) and Takagi (US 2003/0019857 Al, published January 30, 2003).
Final Act. 3.
II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nishimura, Takagi, and Steenis (US 6,559,416 Bl, issued May 6,
2003) . Final Act. 6.
1 In the Answer, the Examiner withdrew a rejection of claims 1—9 as failing
to comply with the written description requirement. Ans. 2; Final Act. 2.
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Appeal 2015-003046
Application 12/377,152
ANALYSIS
Rejection I: Claims 1, 3, 4, and 6—12
Independent claims 1 and 9 each recite, inter alia, a “power supply
tip” with a “tapered surface.” Appeal Br. 16, 19 (Claims App.). These
claims further require that the “tapered surface . . . increase monotonically in
diameter from the front end of the power supply tip toward the base end of
the power supply tip.” Id. at 17, 19. To illustrate an embodiment of the
claimed power supply tip, we reproduce Figure 5 of Appellant’s
Specification, below:
FIG, 5
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rr a 1 f
v.......
an
Figure 5 shows an example of power feed tip for an embodiment of
the welding torch. Spec. 7,11. 29-30.
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Appeal 2015-003046
Application 12/377,152
Appellant submits that “power supply tip” 31, 34 includes tapered
surface 3Id, 34d, and that the tapered surface increases monotonically in
diameter from front end 31a, 34a toward the base end (unnumbered, but
opposite the front end). Appeal Br. 4, 5.
Claims 1 and 9 further require that “the tapered surface . . . has a
maximum diameter . . . [that] is greater than the maximum diameter of the
insertion hole of the tip holder.” Id. at 17, 19. To illustrate these features,
we reproduce a partial view of Appellant’s Figure 3, below:
Figure 3 is a sectional view showing an embodiment of the welding
torch. Spec. 7,11. 25—26.
According to Appellant, the above Figure depicts tapered surface 3Id
(of power supply tip 31, numbered in Figure 5) with a “maximum diameter
. . . greater than the maximum diameter of the insertion hole of the tip
holder” 32. Appeal Br. 5, 6.
a a
2 5
2 a
1 a
5
Appeal 2015-003046
Application 12/377,152
In addressing the claimed “power supply tip,” the Examiner relies on
Takagi’s Figures 1 and 7 (Ans. 3—4), which we reproduce, below:
F I G . 1 F ! G . 7
24
Figure 1 (left) is a fragmentary vertical section view showing an
example of a conventional welding tip. Takagi 1 56. Figure 7 (right) is an
enlarged fragmentary vertical section view of the essential part of the
welding tip. Id. 1 62. In citing Takagi’s Figure 1, the Examiner finds that
“contact 200 and the metal guide 210 .. . [are] the tapered surface and the tip
holder, respectively.” Ans. 3. In referring to Figure 1, the Examiner
explains, “contact 200 has a maximum diameter denoted near the character
reference 200 which is bigger than [the] maximum diameter of the metal
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Appeal 2015-003046
Application 12/377,152
guide 210.” Adv. Act. 2 (dated April 23, 2014). In citing Takagi’s Figure 7,
the Examiner finds that contact 14, the claimed “power supply tip,”
“increases monotonically in diameter from front end to the base end.” Ans.
4.
According to Takagi, Figure 1 depicts a conventional welding tip and
Figure 7 depicts a welding tip according to a first embodiment of the present
invention. Takagi 56, 61, 62.
In contesting the rejection, Appellant argues that the Examiner relies
on different embodiments of Takagi for teaching the claimed “power supply
tip” “without providing any rational basis for doing so.” See Reply Br. 2.
Appellant’s argument is persuasive. It is not enough to show simply
that the references disclose each element of a claim; in addition, it is
important to identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements in the manner set forth in
the claim. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010) (citing
KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“apatent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art”)).
In the present case, in addressing the claimed “power supply tip”
having a “tapered surface” that (1) increases monotonically in diameter and
(2) has a maximum diameter greater than the maximum diameter of the tip
holder’s insertion hole, the Examiner relies on two distinct embodiments
within Takagi to satisfy these two claimed limitations. In particular, the
Examiner relies on Takagi’s Figure 7 for satisfying (1), the claimed
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Appeal 2015-003046
Application 12/377,152
increasing monotonically in diameter, and Takagi’s Figure 1 for satisfying
(2), the claimed maximum diameter. See Ans. 3^4. As discussed above,
however, these embodiments are distinct, as Figure 1 depicts a conventional
welding tip and Figure 7 depicts a welding tip according to Takagi’s first
purportedly inventive embodiment. See Takagi ]Hf 56, 61,62. Furthermore,
the rejection provides no explanation as to why a person of ordinary skill in
the art would have combined the conventional welding tip of Takagi’s
Figure 1 with the inventive welding tip of Takagi’s Figure 7. See Ans. 3^4;
see also Adv. Act. 2 (dated April 23, 2014); see also Final Act. 3—5.
For the foregoing reason, we do not sustain the rejection of claims 1,
3, 4, and 6—12 as unpatentable over Nishimura and Takagi.
Rejection II: Claim 5
The rejection of claim 5 relies upon the same unsupportable reasoning
relied on and discussed, supra, with respect to Rejection I. See Final Act. 6.
The Examiner’s reliance on Steenis does not cure this deficiency. For the
same reasons that we do not sustain the rejection of claims 1,3,4, and 6—12,
we do not sustain the rejection of claim 5.
SUMMARY
We reverse the rejection of claims 1, 3, 4, and 6—12 as unpatentable
over Nishimura and Takagi.
We also reverse the rejection of claim 5 as unpatentable over
Nishimura, Takagi, and Steenis.
REVERSED
8
