Ex Parte Roddy et al

Patent Trial and Appeal BoardApr 26, 2016

12595558 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/595,558 10/12/2009 26096 7590 04/28/2016 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Robert J. Roddy 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. 67038-064PUS 1 4142 EXAMINER NGUYEN, CUONG B ART UNIT PAPER NUMBER 2818 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. RODDY and ALLAN D. PARKS Appeal2014-003396 Application 12/595,558 Technology Center 2800 Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and ADAM J. PYONIN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal the rejection of claims 15-20 and 22-29 1 under 35 U.S.C. Â§ 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 Claim 21, the only remaining pending claim, has been allowed. Final Rejection 19. Appeal2014-003396 Application 12/595,558 Introduction The invention is directed to a "welding electrode" including a pin and head, and having a "polymer insulating sleeve" that "is arranged between the pin and the head." Abstract. Representative Claim (Disputed limitations emphasized) 15. A welding electrode comprising: a body; a head secured to the body and including an aperture; a pin arranged within the body and extending through the aperture; a polymer insulating sleeve arranged between the pin and the head, the polymer insulating sleeve extending radially from an inner diameter to an outer diameter that are respectively in contact with the pin and head; and wherein the head and the polymer insulating sleeve respectively include first and second interlocking features interlocking with one another to retain the polymer insulating sleeve within the head. Rejections on Appeal Claims 15-19 and 22 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Roddy (US 6,750,419 B2; June 15, 2004), Aoyama (US 6,008,463; December 28, 1999), and Warnke (US 2,068,043; January 19, 1937). Final Rejection 6. Claim 20 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Roddy, Aoyama, Warnke, and Tobita (US 4,609,805; September 2, 1986). Final Rejection 10. 2 Appeal2014-003396 Application 12/595,558 Claims 23-25 and 28 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Roddy and Warnke. Final Rejection 12. Claims 26 and 29 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Aoyama '847 (US 2005/0284847 Al; December 29, 2005), Warnke, and Shafer (US 4,045,644; August 30, 1977). Final Rejection 15. Claim 27 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Aoyama '847, Warnke, and Shafer, and Applicant Admitted Prior Art (Specification page 2 lines 3-8). Final Rejection 18. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Final Rejection (mailed April 11, 2013), the Appeal Brief (filed September 10, 2013), the Examiner's Answer (mailed November 27, 2013), and the Reply Brief (filed January 27, 2014) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants' Appeal Brief and adopt them as our own, except any findings that we set aside in the analysis as follows. Claims 15, 16, 18, 19, 22, and 23 Regarding independent claim 15, Appellants argue the Examiner erred in combining Warnke with Roddy and Aoyama, because "the Warnke 3 Appeal2014-003396 Application 12/595,558 arrangement is entirely different than that of either Roddy or Aoyama" and "the insulating sleeve 20 of Roddy appears to be sufficiently located with respect to the head 18, and there is nothing to indicate otherwise." Appeal Brief 4. Appellants additionally contend the thread arrangement in Roddy "only adds cost to these components and increases the assembly time." Appeal Brief 4. We are not persuaded of error. The Examiner finds that the differences between Warnke and Roddy do not diminish that "Warnke' s threaded elements H and I can be used as teaching to modify the insulated bus[h]ing 20 of Roddy." Answer 3. We agree, as Appellants argue features in Warnke not relevant to the teaching of a thread arrangement securing a bushing (or sleeve) to a head. 2 The Examiner also finds, and we agree, motivation to combine because "the threaded element "would act as [a] locking mechanism." Answer 4. One skilled in art would consider the locking mechanism as a major benefit, because one skilled in the art would recognize in Roddy that frictional forces created when pin 22 moves downward (thereby compressing spring 28) would act to separate bushing 20 from head 18 as pin 22 moves downward. See Roddy Figure 2; see also Final Action 8. Accordingly, Appellants have not persuaded us of Examiner error and we sustain the Examiner's obviousness rejection of claim 15, as well as 2 See In re Keller, 642 F.2d 413, 425 (CCPA 1981) "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." 4 Appeal2014-003396 Application 12/595,558 independent claim 23, and claims 16, 18, 19, and 22 not separately argued with particularity. See Appeal Brief 6. Claims 17 and 24-29 Claim 17 recites the limitation "the polymer insulating sleeve is in a snap fit with the head within the aperture." The Examiner finds that, because no structure of "snap fit" is recited, the "term snap-fit in claim 17 can only [be] describe[ d] as a function of any locking mechanism" and is thus met by the threaded elements of Warnke. Answer 5. We agree with Appellants that "the understanding of what is considered a 'snap fit' by those of ordinary skill excludes a conventional threaded fastener arrangement" (Appeal Brief 5), because in a snap fit the parts are joined using a self-lockingjoint, whereas in a threaded arrangement a twisting of threads joins the parts. Therefore, we reverse the Examiner's obviousness rejection of claim 17, as well as independent claim 26 and dependent claims 24, 25, and 27-29, commensurate in scope. Claim 20 Claim 20 recites the limitation including "the aperture including a first diameter near the outer face that is smaller than a second diameter of aperture that receives the polymer insulating sleeve." Appellants argue the Examiner erred in combining Tobita with Roddy, Aoyama, and Warnke, because "Tobita does not appear to provide any advantage to fitting and securing the sleeve" and, in Roddy, "the sleeve 20 is already prevented from moving by the flange located immediately beneath the head 18." Appeal 5 Appeal2014-003396 Application 12/595,558 Brief 6. Appellants contend "there is no need or benefit to modifying Roddy with the arrangement shown in Tobita." Appeal Brief 6. We are not persuaded of error. The Examiner finds that "a skilled worker would make the modification to Roddy's device" because it "would eliminate the movement of the sleeve during the welding operation and therefore provide a better way for guiding the electrode pin to moving up and down." Answer 6. We agree, because the narrowing of the aperture (see Tobita Figure 2, Final Action 11) creates a more snug fit between the sleeve and the pin, and thus minimizes the side-to-side movement of the pin as the pin is guided up and down. Accordingly, Appellants have not persuaded us of Examiner error and we sustain the Examiner's obviousness rejection of claim 20. DECISION We affirm the Examiner's decision rejecting claims 15, 16, 18-20, 22, and 23. We reverse the Examiner's decision rejecting claims 17 and 24--29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED-IN-PART 6