Ex Parte Ohmi et al

Patent Trial and Appeal Board

Sep 17, 2012

10266480 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TADAHIRO OHMI, TAKAHISA NITTA, YASUYUKI SHIRAI,
and OSAMU NAKAMURA
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Appeal 2010-004732
Application 10/266,480
Technology Center 3700
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Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004732
Application 10/266,480
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 18, 21-29, and 32. We have jurisdiction under 35
U.S.C. § 6(b).
The Claimed Subject Matter
Claim 18, reproduced below, is illustrative of the claimed subject
matter.
18. A long-life welding electrode comprising:
a main body; and
a tip section extending straight from said main body, said
tip section tapering from said main body to a distal
semispherical tip surface,
the semispherical tip surface extending outward from
said tip section in a direction opposite said main body, and
shaped to form an equipotential surface which is vertical
against an operative electric line of force generated in operation
between the welding electrode and a material to be welded,
wherein said main body, said tip section, and said tip
surface extend along a straight line,
wherein said semispherical tip surface has a diameter in a
range greater or equal to 0.05 mm and less than 0.3 mm, and
wherein said main body and said tip section is configured
to generate a successive arc.

References
The Examiner relies upon the following prior art references:
Blaszkowski
Sawada
Denko
US 3,277,267
US 5,506,387
JP 59156625A
Oct. 4, 1966
Apr. 9, 1996
Sep. 5, 1984

Rejections
I. Claims 18, 21-23, 26-28, and 32 are rejected under 35 U.S.C. § 102(b)
as anticipated by Sawada.
Appeal 2010-004732
Application 10/266,480
3
II. Claims 24, 25, and 29 are rejected under § 103(a) as unpatentable over
Sawada.
III. Claims 18, 21-29, and 32 are rejected under § 103(a) as unpatentable
over Blaszkowski and Denko.

SUMMARY OF DECISION
We REVERSE.

OPINION
The critical limitation on appeal requires a semispherical tip having “a
diameter in a range greater or equal to 0.05 mm and less than 0.3 mm.”
In Sawada, the Examiner found a hemispherical tip with a radius R of
0.15 mm to 0.3 mm or more. Ans. 4 (citing Sawada, col. 5, ll. 32-48).
Appellants point out that the claim refers to diameter, not radius. App. Br.
9-10. Appellants argue that Sawada teaches, in effect, a diameter of greater
than (or equal to) 0.3 mm. App. Br. 10. The Examiner responds by stating
that the tip of the electrode will have a smaller diameter and the diameter
depends on where the diameter measurement is taken. Ans. 9-10.
Appellants correctly point out that there is only one diameter in a
semisphere. Reply Br. 3. As such, we have been apprised of an error in the
Examiner’s finding that Sawada describes a semispherical tip having a
diameter in the claimed range. Accordingly, we do not sustain the
Examiner’s anticipation or obviousness rejection based on Sawada, as both
of these rejections rely on this erroneous finding.

Appeal 2010-004732
Application 10/266,480
4
In Blaszkowski, the Examiner found an electrode worn into an arcuate
shape. Ans. 7. The Examiner cites to column 23, lines 39-40 for describing
an arcuate tip, which the Examiner equates to a semispherical tip. Ans. 16-
17. Appellants argue that an arcuate surface does not disclose a
semispherical surface. Reply Br. 6. This argument is persuasive, as there is
no indication in Blaszkowski and no explanation from the Examiner as to
why one of ordinary skill would consider a disclosure of an arc (a 2D curve)
to disclose a semisphere (a 3D curve). Accordingly, we are apprised of an
error in the Examiner’s conclusion that the teachings of Blaszkowski and
Denko render obvious an electrode having a semispherical tip.

DECISION
We reverse the Examiner’s decision regarding claims 18, 21-29, and
32.

REVERSED

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