Ex Parte Achtner et al

Patent Trial and Appeal Board

May 23, 2016

11940200 (P.T.A.B. May. 23, 2016)

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.
11/940,200 11/14/2007 Richard Mark Achtner 20471 (ITWO:0155)SWA 7339
52145 7590 05/23/2016
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
MATHEW, HEMANT MATHAI
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
05/23/2016 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
____________

Ex parte RICHARD MARK ACHTNER, BRUCE PATRICK ALBRECHT,
and LEROY H. LAUER, JR.
____________

Appeal 2014-003523
Application 11/940,200
Technology Center 3700
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1, 2, 4–9, 11, 13–15, 20, 23–25, 27–29, 32, and 33. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).

We AFFIRM.

1 The Appellants identify the real party in interest as “Illinois Tool Works
Inc.” (Appeal Br. 2.)
Appeal 2014-003523
Application 11/940,200

2
STATEMENT OF THE CASE
The Appellants’ invention “relates generally to the field of welding
systems.” (Spec. ¶ 2.)
Illustrative Claim2
1. A welding system comprising:
a welding device;
a welding tip coupled to the welding device, wherein the
welding tip is configured to support an electrode;
a sensor configured to provide feedback indicative of a
distance between the welding device and the work piece; and
first, second, and third light sources coupled to the
welding device at an offset distance away from the welding tip,
wherein the first, second, and third light sources are separate
and distinct light sources that emit separate and distinct light
beams, wherein the first, second, and third light sources are
configured to guide the welding device to a position relative to
a weld location, the first light source is configured to emit a
first color indicating a first distance between the welding device
and a work piece based on the feedback, the second light source
is configured to emit a second color indicating a second
distance between the welding device and the work piece based
on the feedback, and the third light source is configured to emit
a third color indicating a third distance between the welding
device and the work piece based on the feedback.

References
Buchel US 4,924,063 May 8, 1990
Boillot US 6,352,354 B1 Mar. 5, 2002
Gartner US 2004/0090667 A1 May 13, 2004
Yuk Man US 2007/0023408 A1 Feb. 1, 2007
Fisher US 7,186,950 B1 Mar. 6, 2007
Umezawa JP 2002-153445 May 28, 2002

2 This illustrative claim is quoted from the Claims Appendix (“Claims
App.”) set forth on pages 17–20 of the Appeal Brief.
Appeal 2014-003523
Application 11/940,200

3
Rejections3
I. The Examiner rejects claims 1, 2, 4, 5, 8, 9, 11, 13, 14, 20,
23–25, 27, 28, 32, and 33 under 35 U.S.C. § 103(a) as unpatentable over
Yuk Man and Boillot. (Final Action 3.)
II. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Yuk Man, Boillot, and Fisher. (Id. at 8.)
III. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Yuk Man, Boillot, and Buchel. (Id.)
IV. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Yuk Man and Umezawa. (Id. at 9.)
V. The Examiner rejects claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Yuk Man, Umezawa, and Gartner. (Id. at 10.)

ANALYSIS
Rejection I
Independent claim 1 is directed to a “welding system” comprising “a
welding device” and “light sources coupled to the welding device.” (Claims
App.) The Examiner finds Yuk Man teaches a welding system comprising a
welding device (torch 2), a light assembly (laser tracking device 3), and a
mount (robotic arm 5) “that is configured to couple to a torch.” (Final
Action 4.)
The Appellants argue that “[w]hile Yuk Man discloses that the laser
tracking device 3 is attached to a robotic arm 5, Yuk Man does not disclose

3 The Examiner’s rejection of claims 1, 2, 4–9, 11, 13–15, 20–25, and 27–31
under 35 U.S.C. § 112, second paragraph, as indefinite (see Final Action 2)
has been withdrawn (see Answer 4).
Appeal 2014-003523
Application 11/940,200

4
that the laser tracking device 3 is coupled to torch 2, as claimed.” (Appeal
Br. 11.) We are not persuaded by this argument because Yuk Man discloses
that “[p]referably, the laser tracking device 3 is mounted to a front of the
head of the robotic arm [5]” and “the welding torch 2 is mounted to a rear of
the head of the robotic arm 5.” (Yuk Man ¶ 27; see also Answer 9.) In
other words, Yuk Man’s laser tracking device 3 is coupled to the welding
torch 2 “via” robotic arm 5. (See Final Action 4.)
The Appellants also argue “Yuk Man specifically states that the laser
tracking device 3 includes a laser sensor, or laser camera, but Yuk Man does
not teach or suggest that the laser tracking device 3 includes a laser.”
(Appeal Br. 11, emphasis omitted.) We are not persuaded by this argument
because the dictionary definition of a “laser tracker” is “[a] device which
locks on to the reflected energy from a laser marked/designated target and
defines the direction of the target relative to itself.”4 In other words, “[t]he
system of Yuk Man must have a laser in order for a laser tracking device to
function.” (Answer 6.) One of ordinary skill in the art would appreciate that
Yuk Man’s laser tracker 3 would include a source for emitting a laser for
reflection back to the camera. And one of ordinary skill in the art would
appreciate that this light-source component could be mounted on Yuk Man’s
robotic arm 5 along with the rest of the components of the laser tracker.
The Appellants further argue that “Boillot does not overcome the
deficiencies of Yuk Man.” (Appeal Br. 11–12.) However, as we do not
consider Yuk Man deficient for the reasons alleged by the Appellants, we
are unpersuaded by this argument.

4 http://www.thefreedictionary.com/laser+tracker (last visited May 9, 2016).
Appeal 2014-003523
Application 11/940,200

5
The Appellants do not argue that the Examiner otherwise errs in the
rejection of independent claim 1. Thus, we sustain the Examiner’s rejection
of independent claim 1 as unpatentable over Yuk Man and Boillot.
Independent claim 20 is directed to a “torch lighting system”
comprising “a light assembly configured to mount to a torch.” (Claims
App.) The Appellants do not draw a distinction between an element being
“coupled to” a torch versus an element being “configured to mount to” a
torch. (See Appeal Br. 11; Reply Br. 2–3.) As such, the Examiner’s
findings regarding a prior art light source being coupled to a torch are
considered to likewise establish that this prior art light source is configured
to be mounted to a torch. Thus, we sustain the Examiner’s rejection of
independent claim 20 as unpatentable over Yuk Man and Boillot.
Independent claim 23 is directed to a method involving “a torch” and
light-beam-generating steps. (Claims App.) Independent claim 23 does not
recite a light source or a lighting assembly (see id.), and, therefore, does not
require a lighting element to be coupled and/or mounted to the torch. As
such, the arguments discussed above do not correspond to limitations recited
in independent claim 23; and the Appellants do not argue the Examiner
otherwise errs in the rejection of independent claim 23. (See Appeal Br. 11;
Reply Br. 2–3.) Thus, we sustain the Examiner’s rejection of independent
claim 23 as unpatentable over Yuk Man and Boillot.
Claims 2, 4–9, 11, 13, 14, 24, 25, 27, 28, 32, and 33 each depends
directly or indirectly from one of independent claims 1, 20, and 23. (See
Claims App.) As these dependent claims are not argued separately (see
Appeal Br. 12), they fall with independent claims 1, 20, and 23.
Appeal 2014-003523
Application 11/940,200

6
Rejections II and III
Claims 6 and 7 each depends directly from independent claim 1. (See
Claims App.) The Appellants argue only that the additional prior art
references introduced into the combination (i.e., Fisher, Buchel) do “not cure
the deficiencies of Yuk Man and Boillot.” (Appeal Br. 12, 13). As we do
not consider Yuk Man and/or Boillot deficient for the reasons alleged by the
Appellants, we are unpersuaded by this argument. Thus, we sustain the
Examiner’s rejection of dependent claim 6 as unpatentable over Yuk Man,
Boillot, and Fisher; and we sustain the Examiner’s rejection of dependent
claim 7 as unpatentable over Yuk Man, Boillot, and Buchel.
Rejection IV
Independent claim 15 is directed to a torch system comprising “a
torch” and “a single guide light coupled to the torch.” (Claims App.) The
Appellants advance arguments akin to those discussed earlier in our analysis
of independent claim 1 (see Appeal Br. 14–15) and, as indicated above, we
are not persuaded by these arguments. The Appellants also argue that
“Umezawa does not overcome the deficiencies of Yuk Man.” (Id. at 15.)
As we do not consider Yuk Man to be deficient for the reasons alleged by
the Appellants, we are unpersuaded by this argument. Thus, we sustain the
Examiner’s rejection of independent claim 15 as unpatentable over Yuk Man
and Umezawa.
Rejection V
Claim 29 depends directly from independent claim 15. (See Claims
App.) The Appellants argue only that the additional prior art reference
introduced into the combination (i.e. Gartner) “does not cure the deficiencies
Appeal 2014-003523
Application 11/940,200

7
of Yuk Man and Umezawa.” (Appeal Br. 15–16.) As we do not consider
Yuk Man and/or Umezawa deficient for the reasons alleged by the
Appellants, we are unpersuaded by this argument. Thus, we sustain the
Examiner’s rejection of dependent claim 29 as unpatentable over Yuk Man,
Umezawa, and Gartner.

DECISION
We AFFIRM the Examiner’s rejections of claims 1, 2, 4–9, 11, 13–15,
20, 23–25, 27–29, 32, and 33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED