Ex Parte 6329636 et al

Patent Trial and Appeal Board

Oct 31, 2012

95000202 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,202 01/17/2007 6329636 ITW8637R 9797
23721 7590 10/31/2012
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
THE LINCOLN ELECTRIC COMPANY
Requester and Respondent

v.

Patent of ILLINOIS TOOL WORKS, INC.
Patent Owner and Appellant
____________________

Appeal 2011-005680
Reexamination Control 95/000,202
Patent US 6,329,636 B1
Technology Center 3900

____________

Before RICHARD TORCZON, HOWARD B. BLANKENSHIP,
ALLEN R. MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU,
Administrative Patent Judges.

PER CURIAM

DECISION ON REQUEST FOR REHEARING

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Patent US 6,329,636 B1

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INTRODUCTION
Patent Owner’s Request for Rehearing (filed May 15, 2012) contends
that we erred in our Decision on Appeal mailed April 16, 2012 (“Decision”),
in which we affirmed the Examiner’s decision to reject claims 1-36.

DISCUSSION
In particular, Owner contends that we erred in our finding that
Chambers (US 4,030,024) and Miller (US 5,465,011) are analogous art. We
will consider and address points that Owner urges we misapprehended or
overlooked in reaching our decision (see 37 C.F.R. § 41.79(b)(1)), but not
re-argument of assertions that were presented in Owner’s briefs on appeal.
First, we were not persuaded of error in the Examiner’s finding that
the references are within the '636 patent's field of endeavor. Decision 16.
The Examiner agreed with, and adopted, the Requester’s position with
respect to Chambers and Miller being analogous art. Right of Appeal Notice
(RAN) 50; see also Ans. 54-60.
Requester noted that the '636 patent itself teaches that a related patent
contained the “low power” technology that Owner contends is outside the
field of endeavor. Third Party Requester Comments after Non-Final Action
13-14. The '636 patent incorporates by reference U.S. Patent 5,601,741, and
discusses the implementation of the power supply in the “FIELD OF THE
INVENTION” section. '636 patent col. 2, ll. 1-53. The '741 patent, as
identically stated in the '636 patent, says that the invention “generally relates
to power sources. More particularly, this invention relates to inverter power
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sources employed in welding, cutting and heating applications.” '741 patent
col. 1, ll. 7-9.
The '741 patent also describes a welding power source that includes
an auxiliary power controller. Col. 3, l. 64 - col. 4, l. 7.
Controller 104 [Fig. 1] is a main control board such as that
found in many inverter-type welding power sources. The main
control board provides the control signals to pulse-width
modulator 103, to control the frequency and pulse-width of
pulse-width modulator 103. Input rectifier 101, pulse-width
modulator 103, controller 104 and output transformer T3 are
well known in the art.

. . . .

Auxiliary power controller 105 receives the input line
voltage and converts that voltage to a 18 volt dc control signal.
The 18 volt control signal is created regardless of the input
voltage, and is provided to boost circuit 102. Boost circuit 102
uses the 18 volt control signal to control its switching frequency
and the magnitude of its output. Auxiliary power controller 105
also provides a 48 volt center tap ac power signal to controller
104.

'741 patent col. 4, ll. 25-31, 44-51.
Thus, welding power sources in the prior art included the type of “low
power” power supplies (e.g., auxiliary power controller 105) that Owner
now submits is not within the field of endeavor of the '636 patent. The
invention generally relates to power sources, consistent with the literal
language of the '636 patent.
Our reviewing court was not persuaded that the Board had defined the
“field of endeavor” too broadly in the case of In re Mettke, 570 F.3d 1356
(Fed. Cir. 2009), cited with approval in Western Union Co. v. Moneygram
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Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010). The Board had
found that the field of endeavor was “pay-for-use public communication
terminals,” but Mettke argued that the term “communication” over-broadly
swept in such fields as facsimile machines, telephones, televisions, cellular
phones, and global positioning systems. Mettke contended that the field of
endeavor with respect to the claim was limited to an “Internet terminal.”
Mettke, 570 F.3d at 1359. However, the Court noted that the specification of
the patent described various communication media, including facsimile
machines and email, as related to the invention, and found that the record
supported the Board’s findings with respect to analogous art. Id.
Significantly, the Mettke patent undergoing reissue (US 5,602,905) listed
U.S. patents in the “BACKGROUND--DESCRIPTION OF PRIOR ART” as
known prior art, the patents not being limited to describing Internet
terminals.
In this case, the incorporated-by-reference '741 patent and the '636
patent further describe the low-power controller power source, which
indicates that the field of endeavor is not limited to circuitry that provides
welding power. The welding-power circuitry would not function without the
low-power controller circuitry.
Owner suggests that we did not address In re Klein, 647 F.3d 1343
(Fed. Cir. 2011), in the Decision because “it was released after the briefing
in this case.” Req. Rh’g 8. “In view of Klein, the Board should reverse its
decision.” Id. However, we did consider Klein in reaching our
determinations. The case and why it is not germane to the invention of the
'636 patent was, in fact, discussed at the oral hearing. See Hrg. Trans. 9-13.
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In Klein, our reviewing court determined that the Board had made a
factual finding with respect to the problem the inventor was facing; namely,
“making a nectar feeder with a movable divider to prepare different ratios of
sugar and water for different animals.” 654 F. 3d at 1348. The Court
determined that three references were not analogous because the purpose of
each reference was to separate solid objects. As such, an inventor
considering the problem of “making a nectar feeder with a movable divider
to prepare different ratios of sugar and water for different animals” would
not have been motivated to consider any of the references. Id. at 1350-51.
The Court further determined that the remaining two references were not
analogous because they did not address multiple ratios or have a “movable
divider.”
[A]n inventor considering the problem of “making a nectar
feeder with a movable divider to prepare different ratios of
sugar and water for different animals,” would not have been
motivated to consider either of these references since neither of
the references shows a movable divider or the ability to prepare
different ratios.

Klein, 654 F.3d at 1352.
We therefore disagree with Owner’s characterization that the Court
“found five prior art references nonanalogous because they were pertinent
only to some aspect of the invention,” and because “none were related to the
problem as a whole.” Req. Rh’g 9 (emphasis deleted). The Court
determined the references were non-analogous because none were
reasonably pertinent to the problem of making a nectar feeder with a
movable divider to prepare different ratios of sugar and water for different
animals.
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In this case, the Examiner found that the inventor was faced with the
problem of providing control power from high voltage, without the need for
transformer taps, and further providing isolation between high and low
voltages (e.g., Ans. 13). The '636 patent provides more than adequate
support for the finding. For example:
[A] welding power source that may receive any common input
voltages or frequency is desirable. Preferably, this is
accomplished without the need of any linkages for the welding
power input and for the control power input.

'636 patent col. 2, ll. 54-58 (emphasis added).
If, as Owner suggests (Req. R’hg 8), we “completely ignored” other
challenges facing the inventor, the other challenges were not relevant in our
determination as to whether adequate evidence supported the Examiner’s
finding that Chambers and Miller represented prior art.
Our reviewing court has “reminded ... the PTO that it is necessary to
consider ‘the reality of the circumstances’ - in other words, common sense -
in deciding in which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the inventor.” In re
Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (citations omitted). A person of
ordinary skill is a person of ordinary creativity, not an automaton. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). One of ordinary skill in the
art would have looked to power supply circuits that supply power to
controller elements, regardless of the end use of the device in which the
circuits were used. The artisan1 would not have limited his consideration to

1 As noted in the Decision (22, n.13), according to Owner’s expert the
minimum level of skill in the art includes a bachelor’s degree in electrical
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power sources used in welding, cutting, and heating applications when
wishing to improve controller power sources in such equipment.
Thus, we remain unconvinced that the Examiner erred in finding that
even if “low power, non-welding” power supplies were not within the field
of endeavor, they were, at the least, reasonably pertinent to the problem
facing the patentee and thus are prior art as contemplated by 35 U.S.C.
§ 103(a). We are not persuaded that we misapprehended or overlooked
anything in rendering the Decision.

DECISION
We have granted Owner’s request for rehearing to the extent that we
have reconsidered our decision affirming the rejection of claims 1-36, but
we decline to modify the decision in any way.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. § 1.304(a).

DENIED

engineering or similar discipline, three years of experience with welding,
cutting, or heating applications, a general knowledge of power electronics,
and a specific background in welding power supplies.
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Patent Owner:

GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589

Third Party Requester:

TERRANCE J. WIKBERG
LINCOLN ELECTRIC COMPANY/PERKINS COIE LLP
607 14TH STREET, NW
WASHINGTON, DC 20005-2003