Ex Parte Bashore et al

Patent Trial and Appeal Board

Oct 17, 2014

11848874 (P.T.A.B. Oct. 17, 2014)

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.
11/848,874 08/31/2007 Brian S. Bashore ITWO:0196/SWA (21126) 4557
52145 7590 10/17/2014
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
10/17/2014 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 BRIAN S. BASHORE, DARRELL L. SICKELS,
BERNARD J. VOGEL, and CALEB R. KRISHER
____________

Appeal 2012-008233
Application 11/848,874
Technology Center 3700
____________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Brian S. Bashore et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s final decision rejecting claims 1–4, 6–9, 12–17, 22, 24–
26, and 30–41. Br. 2. Claims 5, 10, 11, 13, 18–21, 23, and 27–29 have been
canceled. Id. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 According to Appellants, the real party in interest is Illinois Tool Works,
Inc. Br. 2.

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Application 11/848,874

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellants’ invention relates “to a portable battery powered welder
having various welding components integrally mounted in a suitcase.” Spec.
1, para. 1.
Claims 1, 16, 26, and 37 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. A battery powered welder, comprising:
a battery;
a welding circuit configured to output a welding power
using power from the battery;
a wire feeder configured to feed a welding wire using
power from the battery; and
a suitcase integrally supporting and completely enclosing
the welding circuit, the battery, and the wire feeder, wherein the
suitcase comprises a first access panel over a first compartment
supporting the wire feeder, the suitcase comprises a second
access panel over a second compartment supporting the battery,
and the first and second access panels are disposed along a
common side of the suitcase.

REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claim 37 under 35 U.S.C. § 102(b) as
anticipated by Carrier (US 2007/0257084 A1, published Nov. 8,
2007).
II. The Examiner rejected claims 1–4, 6–9, 12, 15–17, 22, 25, 26,
and 30–36 under 35 U.S.C. § 103(a) as unpatentable over
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Lambirth (US 2007/0251931 A1, published Nov. 1, 2007),
Albrecht (US 6,479,795 B1, issued Nov. 12, 2002), Peotter (US
5,599,470, issued Feb. 4, 1997), and Hart (US 4,911,296, issued
Mar. 27, 1990), as evidenced by Silvestro (US 2006/0027547
A1, published Feb. 9, 2006).
III. The Examiner rejected claims 13 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Lambirth, Albrecht, Peotter, Hart,
as evidenced by Silvestro, and Stanzel (US 2005/0252889 A1,
published Nov. 17, 2005).
IV. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Lambirth, Albrecht, Peotter, Hart, as
evidenced by Silvestro, and Frank (US 6,243,913 B1, issued
June 12, 2001).
V. The Examiner rejected claim 38 under 35 U.S.C. § 103(a) as
unpatentable over Carrier and Albrecht.
VI. The Examiner rejected claims 39 and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Carrier and Silvestro.
VII. The Examiner rejected claim 41 under 35 U.S.C. § 103(a) as
unpatentable over Carrier, Silvestro, and Hart.

ANALYSIS
Rejection I
The Examiner finds that Carrier teaches a battery-powered welder
having “at least one access panel” 102 attached to housing 101, as called for
by claim 37. Ans. 4.
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Appellants argue that “Carrier fails to teach or suggest [] a two access
panel battery-powered welder,” but rather teaches “a one panel battery[-
]powered welder.” Br. 7. We are not persuaded by Appellants’ argument
because it is well established that limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). In this case, we agree with the Examiner “that such recitation
is not recited in claim 37.” Ans. 18.
Accordingly, we sustain the rejection of claim 37 under 35 U.S.C.
§ 102(b) as anticipated by Carrier.

Rejection II
Claims 1, 3, 4, 6–9, 12, 15–17, 22, 25, 26, 30, 31, and 33–36
In rejecting independent claims 1, 16, and 26, the Examiner finds that
Lambirth discloses battery-powered welder 100 (see Ans. 5–6); Albrecht
discloses housing 101 having access panel 104 over a compartment
containing wire feeder 100 (see id. at 8); Peotter discloses a welding
apparatus having access panel 27 over a compartment containing battery 15
(see id. at 9); and Hart discloses access panels 18, 24 disposed along a
common side of a suitcase 10 (see id.). The Examiner further finds that
Silvestro discloses that multiple access panels provide access to different
areas of a welding apparatus. See Id. at 10. The Examiner then concludes
that it would have obvious for a person of ordinary skill in the art to provide
the battery-powered welder of Lambirth with first and second access panels,
as taught by Albrecht and Peotter, respectively, and disposed along a
common side of a suitcase, as taught by Hart, “in order to present a means to
provide quick access to inside items . . . since as evidenced by Silvestro,
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providing multiple access panels provides access to different components
within a welding apparatus.” See Id. at 11.
Appellants argue that because Peotter relates to an engine driven
welder that uses a battery to start the engine, Peotter fails to disclose an
access panel over a compartment containing a battery that powers a welder
and a welding wire, as called for by each of independent claims 1, 16, and
26. Br. 11–13.
We are not persuaded by Appellants’ argument because Appellants
cannot show nonobviousness by attacking Peotter individually when the
rejection as articulated by the Examiner is based on a combination of
Lambirth, Albrecht, Peotter, and Hart, as evidenced by Silvestro. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). While Appellants
are correct that Peotter fails to disclose a battery that powers a welder and a
welding wire, the Examiner relied upon Lambirth as disclosing this element
of the claims. See Ans. 5.
Appellants further argue that Peotter teaches away from using a snap-
“mounted access panel” because it specifically discloses “inside legs” for
preventing battery box 19 from “being pulled completely out of the base.”
Br. 13 (citing, Peotter, col. 2, ll. 19, 20). We disagree with Appellants’
argument, because obviousness does not require that all of the features of the
secondary reference can be bodily incorporated into the primary reference.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the
Examiner is not proposing to use the particular construction of Peotter’s
access panel 27 (i.e., the inside legs). Rather, the Examiner is merely
proposing to provide an access panel, as taught by Peotter, to the battery
compartment of Lambirth’s portable welder, as modified by Albrecht, and
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further providing to the battery compartment access panel a snap-fit
connection, based on the disclosure of Hart. See Ans. 10–12. We thus do
not agree with Appellants that Peotter teaches away from Appellants’
invention. Prior art does not teach away from claimed subject matter merely
by disclosing a different solution to a similar problem unless the prior art
also criticizes, discredits or otherwise discourages the solution claimed. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Lastly, Appellants argue that Lambirth fails to disclose, “a wire spool
mount disposed in the first compartment,” as called for by independent
claim 26. Br. 13. According to Appellants, just because Lambirth discloses
that wire feed motor 150 may be disposed inside portable welder 1, this does
not mean that the wire spool is likewise inside the welder 1. Id. (citing
Lambirth, para. 33 and Fig. 2).
What a reference teaches a person of ordinary skill is not limited to
what a reference specifically “talks about” or what is specifically
“mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In this case, a person of ordinary
skill in the art would have readily recognized that because the welding wire
extends through welding cable 20, which in turn is connected to portable
welder 1, the welding wire spool must likewise be disposed inside the
welder in order for the wire feed motor 150 to push and/or pull the welding
wire through the welding cable. See Lambirth, paras. 27, 33 and Figs. 1, 2.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claims 1, 16, and 26 under 35 U.S.C. § 103(a) as unpatentable
over Lambirth, Albrecht, Peotter, and Hart, as evidenced by Silvestro.
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Appellants do not make any other substantive arguments with respect
to the rejection of dependent claims 3, 4, 6–9, 12, 15, 17, 22, 25, 30, 31, and
33–36. Br. 13. Accordingly, for the reasons expressed supra, we likewise
sustain the rejection of dependent claims 3, 4, 6–9, 12, 15, 17, 22, 25, 30, 31,
and 33–36 over the combined teachings of Lambirth, Albrecht, Peotter, and
Hart, as evidenced by Silvestro.

Claims 2 and 32
Dependent claim 2 adds the limitation that “the first and second
access panels are coupled together at a hinge.” Br. 19, Claims App’x. Using
somewhat different claim language, dependent claim 32 adds the limitation
that “the first and second access panels are hingedly coupled together.” Id.
at 22.
The Examiner finds that Hart discloses first and second access panels
18, 24 disposed along a common side of suitcase 10 and that they are
“coupled together at a hinge (elongated hinge 48).” Ans. 9. Appellants
argue that Hart’s panels are not coupled to each other by a hinge, but rather
that “each of [the] hinges is attached to a wall or platform of the storage
device.” Br. 16 (citing, Hart, col. 4, ll. 5–14).
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
In this case, the Examiner’s interpretation in effect renders meaningless, or
superfluous, the term “together.” In other words, although Hart’s access
panels are coupled at respective hinges, they are not “coupled together at a
hinge,” as per claim 2 or “hingedly coupled together,” as per claim 32. Hart
specifically discloses coupling panel 18 to platform 28 by hinge 48, coupling
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panel 20 to housing wall 34 by hinge 50, and storage drawer 24 is merely
located underneath platform 24 and is adapted for sliding. See Hart, col. 4,
ll. 5–14 and 54–61 and Figs. 2, 4.
As such, for the foregoing reasons, we do not sustain the rejection of
claims 2 and 32 under 35 U.S.C. § 103(a) as unpatentable over Lambirth,
Albrecht, Peotter, and Hart, as evidenced by Silvestro.

Rejections III–V
With respect to Rejections III and IV, Appellants rely on the
arguments presented supra in Rejection II, regarding independent claims 1
and 16. Br. 16, 17. Similarly, with respect to Rejection V, Appellants rely
on the arguments presented supra in Rejection I. Br. 17. Accordingly, for
the reasons described above we likewise sustain Rejections III–V.

Rejection VI
Appellants argue that Silvestro fails to disclose an access panel over a
compartment containing a battery that powers a welder and a welding wire,
as called for by claims 39 and 40, because Silvestro relates to an engine
driven welder that uses a battery to start the engine. Br. 7, 8 (citing Silvestro,
para. 44).
Appellants are attacking the teachings of Silvestro individually,
whereas the basis of the Examiner’s rejection is a combination of Carrier
and Silvestro. While Appellants are correct that Silvestro fails to disclose a
battery that powers a welder and a welding wire, the Examiner relied upon
Carrier as disclosing this element of the claims. See Ans. 4, 5.
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As such, we sustain the rejection of claims 39 and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Carrier and Silvestro.
Rejection VII
Similar to dependent claim 2, dependent claim 41 adds the limitation,
“the first and second access panels are coupled together at a hinge.” Br. 23,
Claims App. The Examiner finds that Hart teaches this limitation. Ans. 16.
However, for the reasons set forth supra in Rejection II, we agree with
Appellants that, “Hart does not disclose two access panels coupled together
at a hinge.” Id. at 18 (emphasis added). Accordingly, we do not sustain the
rejection of claim 41 over the combined teachings of Carrier, Silvestro, and
Hart.

SUMMARY
We affirm the Examiner’s decision as to claims 1, 3, 4, 6–9, 12–17,
22, 24–26, 30, 31, and 33–40 and reverse as to claims 2, 32, and 41.
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-IN-PART

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