Ex Parte 7049546 et al

Patent Trial and Appeal Board

Feb 12, 2013

95000205 (P.T.A.B. Feb. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,205 02/02/2007 7049546 ITW 7188.64R 2817
23721 7590 02/12/2013
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
EXAMINER
DEB, ANJAN K
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/12/2013 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 Appellant

v.

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

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Technology Center 3999

____________

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

PER CURIAM

DECISION ON APPEAL
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STATEMENT OF THE CASE
In an earlier Decision (mailed Feb. 29, 2012), the Board affirmed the
Examiner’s final decision favorable to the patentability of claims 19-22 but
reversed with respect to claims 1-18 and 23-47. We entered rejections
against claims 1-18 and 23-47 designated as new grounds. Owner elected to
reopen prosecution before the Examiner (37 C.F.R. § 41.77(b)(1)). Owner
submitted amendments to the claims in the Response After Board Decision
(“Response,” filed Mar. 23, 2012). Requester did not file comments
(pursuant to 37 C.F.R. § 41.77(c)) in response to Owner’s Response.
Neither Owner nor Requester submitted comments (§ 41.77(e)) in response
to the Examiner’s determination (§ 41.77(d)) that all the rejections had been
overcome.
The proceeding has been returned to the Board (37 C.F.R. § 41.77(f)).
Our new Decision is deemed to incorporate the earlier Decision, except for
those portions specifically withdrawn. 37 C.F.R. § 41.77(f).

Claim Status/Representative Claim
Claims 1-7, 9-27, and 29-47 are present and are subject to
reexamination. Claims 8 and 28 have been canceled.

Claim 1 (as amended):
1. A welding, cutting or heating system capable of receiving a
range of input voltages spanning at least two input utility
voltages having a ratio of at least 1.5, comprising:

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an input circuit configured to receive any input voltage
within the range of input voltages, and configured to provide a
first dc signal;

a converter configured to receive the first dc signal and to
provide a boosted converter output that is maintained while an
output current is being provided, and configured to receive at
least one control input;

an output circuit configured to receive the converter
output and to provide a welding, heating or cutting signal;

a controller, including a power factor correction circuit,
and a driver circuit responsive to feedback indicative of an
input current, and configured to provide at least one control
signal to the converter; and

an auxiliary power source configured to receive the any
input voltage within the range of input voltages and configured
to provide a control power signal to the controller, regardless of
the magnitude of input.

Owner’s Contentions
Owner contends that the amendments submitted with the Response
overcome all the grounds of rejection entered in the earlier Decision:
I. Claims 1-18 and 23-47 were rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. Claims 6-18, 26-33, 37, and 39-47 were rejected, in the
alternative, under 35 U.S.C. § 112, first paragraph, for lacking adequate
written description.

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ANALYSIS
I. 35 U.S.C. § 112, Second Paragraph
In the earlier Decision, we explained why the claims that recited the
term “rectified magnitude” were indefinite. Earlier Decision 6-8. All the
claims directed to the feature of “rectified magnitude” that are now before us
add the modifier “average” -- i.e., “average rectified magnitude” --
consistent with the suggestion in the earlier Decision. See Independent
Claims 26, 32, 34, 37, 38, and 39.
We also determined that Claim 1 was indefinite for additional reasons
having to do with its recitation of “rectified magnitude.” Earlier Decision 8-
9. The feature relating to “rectified magnitude” is not recited in Claim 1 that
is before us.
Further, we earlier determined that recitations that related power
factor correction with feedback indicative of an input current rendered the
claims indefinite. Earlier Decision 9-14. Of the claims that are now before
us, all that recite the language “feedback indicative of an input current”
relate the feedback to a driver circuit, rather than to power factor correction.
See Independent Claims 1, 6, 26, 32, 34, 37, 38, and 39.
Finally, we earlier determined that dependent claims 8 and 28 were
indefinite because of a failure to relate the steps of “deriving auxiliary
power” to steps recited in the base claims. Earlier Decision 14-15. Owner
has canceled Claims 8 and 28.
Accordingly, the earlier rejection under § 112, second paragraph, has
been overcome. We withdraw the rejection of the claims under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
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II. 35 U.S.C. § 112, First Paragraph
We earlier entered an alternative ground of rejection for lack of
written description support for the relation of “feedback indicative of the
input current” to power factor correcting, and to feedback indicative of a
generic “input” for claims that did not require that the “feedback” be used
for power factor correction. Earlier Decision 15-16.
As we indicated supra, all the claims that now contain the language
“feedback indicative of an input current” relate the feedback to a driver
circuit, rather than to power factor correction. Further, all the claims reciting
feedback are limited to “a driver circuit” responsive to “feedback indicative
of an input current,” for which the '546 patent provides literal written
description support. See, e.g., Claim 1; '546 patent col. 6, l. 66 - col. 7, l. 3.
Accordingly, the earlier rejection under § 112, first paragraph, has
been overcome. We withdraw the rejection of the claims under 35 U.S.C.
§ 112, first paragraph, as lacking written description support.

III. Prior Art
In the earlier Decision, we did not consider Requester’s numerous
proposed grounds of rejections under 35 U.S.C. § 103(a), except for original
patent claim 19, with claims 20 through 22 dependent. We sustained the
Examiner’s decision not to enter any of the proposed rejections over the
prior art as to claims 19 through 22 because Requester had not: (1) shown
that the allegedly inherent power source in JP '7781 discussed with respect

1 Japanese Patent Publication H2-41778, with English translation.
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to corresponding structure in the '546 patent would be recognized by one of
ordinary skill in the art as identical or equivalent to auxiliary power
controller 105 in the '546 patent; or (2) demonstrated after an equivalents
analysis that structures including non-equivalent structures in the prior art
would have rendered obvious the subject matter as a whole of base claim 19.
Each of present independent claims 14, 30, and 36 sets forth auxiliary
power means that are presumed to be interpreted in accordance with 35
U.S.C. § 112, paragraph six. Owner argues in the Response that Requester
has not done the required analysis of claim scope under § 112, paragraph six,
in the proposed rejections. We agree. See, e.g., Original Inter Partes
Request, filed Feb. 2, 2007, Appendix A, Claim 14 -- “JP '778 inherently
discloses this feature,” then referring to “auxiliary power supplies” in other
prior art references.
Owner also argues in the Response that each of independent claims 1,
6, 23, 26, 32, 34, 37, 38, and 39 is patentable over the prior art because the
prior art fails to teach the claimed control power, boosted converter output,
and power factor correcting. We find that each of independent claims 1, 6,
26, 32, 34, 37, 38, and 39 recites a “driver circuit” responsive to “feedback
indicative of an input current,” which is a limitation that was not present in
the earlier claims and was thus not addressed by Requester.

IV. New Ground of Rejection
Owner further argues in the Response that independent claim 23,
which is an original patent claim, is patentable over the prior art because
Requester failed to show the inherent auxiliary power source of the prior art
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derives power from the input voltages. However, Owner refers as support
for that assertion to so-called related reasoning in the earlier Decision with
respect to (means plus function) claim 19. Response 15. Owner provides no
explanation or evidence in support of why the “auxiliary power circuit” of
claim 23 should be interpreted as a 35 U.S.C. § 112, paragraph six,
limitation, or why the Board’s reasons for sustaining the Examiner’s
decision not to enter proposed rejections against claim 19 would be
applicable to claim 23.
We enter the following rejection against the claims as permitted by 37
C.F.R. § 41.77(b):
Claim 23-25 are rejected under 35 U.S.C. § 103(a) over JP '778
in view of Reynolds (US 5,319,533) or Carvalho (US 4,540,892), as set
forth in the Original Inter Partes Request, filed February 2, 2007.

DECISION
Claims 1-7, 9-22, 26, 27 and 29-47 have not been shown to be
unpatentable.
Claims 23-25 are rejected under 35 U.S.C. § 103(a) in what we
designate a new ground of rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
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issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
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paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956, 41.77(g), and 41.79(e).

AFFIRMED-IN-PART -- 37 C.F.R. § 41.77(b)

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cc:

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

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