Thomas S. Donnelly, Jr., Appellant v. Robert C. Watson, Commissioner of Patents, Appellee, 278 F.2d 853 (D.C. Cir. 1960)

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U.S. Court of Appeals for the District of Columbia Circuit - 278 F.2d 853 (D.C. Cir. 1960) Argued March 9, 1960
Decided March 24, 1960
Petition for Rehearing Denied July 8, 1960

Mr. Robert G. Mentag, Detroit, Mich., with whom Mr. Albert W. Rinehart, Washington, D. C., was on the brief for appellant.

Mr. David Kreider, Attorney, United States Patent Office, Washington, D. C., with whom Mr. Clarence W. Moore, Washington, D. C., Solicitor, United States Patent Office, was on the brief, for appellee.

Before FAHY, WASHINGTON and DANAHER, Circuit Judges.

FAHY, Circuit Judge.

The appeal is from a judgment of the District Court dismissing Donnelly's complaint filed under 35 U.S.C. § 145 (1958), by which he sought court authorization for the issuance of a patent to him on five claims of his application Serial No. 203,594, describing an electrode holder for use in electric are welding. The Patent Office had denied the application on the basis of the disclosures of the prior art, namely, the patents of Beauregard, No. 2,455,108, of Niemann, No. 1,860,262, and of Smout, et al., No. 571,035. The District Court also concluded that in light of these disclosures the improvements claimed by Donnelly were not patentably inventive. We find no basis for disturbing the resulting judgment dismissing the complaint.

The principal contention of Donnelly is that he solved the problem of undue heating of that part of the holder where the operator grips it. Donnelly brings the electric cabling or wires through a hollow tubing to the forward part of the lower jaw which clasps the electrode, and attaches the cabling at or near that point. This avoids undue heating which occurs when the electric current from the cable passes a comparatively long distance from the point of connection in the holder to the location of the electrode. Since the holder is constructed of material of low conductivity in comparison with the wire of the cable, heat due to electrical resistance can be decreased by shortening the distance between the point at which the cable is connected and the location of the electrode. But whatever improvements Donnelly brought about in this and in other respects,1  were changes, as the District Court found, of a mere mechanical nature when compared with the prior art. Donnelly's electrode holder has too many resemblances to the reference patents, and too few differences therefrom, to entitle him to a ruling that the differences would not be obvious to a person having ordinary skill in the art.2  For example, in Beauregard the cabling was brought quite far forward before being attached to any metal part of the holder; and for Donnelly to provide a somewhat clearer passage for air through the entire length of the lower jaw, than was done by Beauregard, does not amount to patentable invention.



Donnelly also claims that his holder solves problems of weight, balance and fraying of the cable


See 35 U.S.C. § 103 (1958)