Ex Parte Daniel

Board of Patent Appeals and Interferences

Jul 31, 2012

10954945 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JOSEPH A. DANIEL
____________________

Appeal 2010-005264
Application 10/954,945
Technology Center 3700
____________________

Before: JOHN C. KERINS, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005264
Application 10/954,945
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
30, 32-75, 77-87 and 92-118. App. Br. 3. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a monitoring device for welding wire
supply. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A monitoring device for sensing of the actual amount of
welding wire on a spool with a minimum wire supply diameter
and a spool width for use in a wire feeder of an electric arc
welder operated at a known wire feed speed, said monitoring
device comprising:
an RPM device to create a spool speed signal indicative
of the rotational speed of said spool as said spool provides wire
at said known wire feed speed and a converting device that
converts, according to a set relationship, said spool speed signal
and a spool width into a wire supply signal varying between a
high level when said spool speed signal is low at a presumed
maximum supply of wire on said spool and a low level when
said spool speed signal is high at the minimum supply of wire
on said spool determined by said minimum wire supply
diameter.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lanouette US 6,248,975 B1 Jun. 19, 2001
Petersen US 2001/0020663 A1 Sep. 13, 2001
Muller EP 468953 A2 Jan. 29, 1992
Oyama JP 10-166148 A Jun. 23, 1998
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REJECTIONS1
Claims 92-108 and 115-118 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Ans. 4.
Claims 1-8, 17-30, 33, 35, 37, 39-71, 74, 75, 77-79, 80-83, 85-87, 92,
93 and 96-118 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Petersen and Oyama.2 Ans. 6.
Claims 34, 36 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Oyama and Lanouette. Ans. 11.
Claims 9-16, 72, 73, 84, 94 and 95 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Petersen, Oyama and Muller. Ans. 12.

OPINION
The rejection of claims 92-108 and 115-118 under 35 U.S.C. § 112, second
paragraph is reversed.
The Examiner contends that it is unclear whether “a minimum wire
supply diameter” and “a wire supply width” refer to the “welding wire” or
the “spool” in claim 92. Ans. 4, 13. Considered in purely grammatical terms,
the Examiner may be correct that the diameter and width could refer to
either. However, one of ordinary skill in the art reading the claim would
select the only one of the two options that makes sense: the “minimum wire
supply diameter” and “wire supply width” relate to the spool. The presence
of the term “supply” provides further indication that the width and diameter

1 The Examiner and Appellant appear to agree that claim 32 will be
cancelled. See Examiner’s letter of Mar. 22, 2010. Accordingly, we do not
consider claim 32 before us for review under 35 U.S.C. § 6(b).
2 References to Oyama will be to the translation entered October 28, 2009.
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are elements of the spool and not the wire itself. Consequently, we perceive
no ambiguity in claim 92.

The rejections of claims 1-30, 33-47, 49-75, 77-87 and 92-118 based
entirely or in part on the combination of Petersen and Oyama are affirmed.
In arguing the patentability of the claims before us for review
Appellant argues:
1. independent claim 1 and dependent claims 6-10, 15-19, 26-30, 39, 40,
43-45, 50, 51, 54, 57-60, 65 and 66 as a group based on limitations
recited in claim 1 (App. Br. 15-19);
2. independent claim 2 and dependent claims 3-5, 11-14, 20-25, 33-36,
41, 42, 46, 47, 52, 53 and 61-64 as a group based on limitations
recited in claim 2 (App. Br. 20-22);
3. independent claim 37 and dependent claims 38, 49, 55 and 56 as a
group based on limitations recited in claim 37 (App. Br. 22-24);
4. independent claim 48 separately (App. Br. 24-25);
5. independent claim 82 separately (App. Br. 26-27)3;
6. independent claim 92 and dependent claims 93-96 and 994-107 as a
group based on limitations recited in claim 92 (App. Br. 27-28);
7. independent claim 97 and dependent claim 98 as a group based on
limitations recited in claim 97 (App. Br. 29-31);
8. independent claim 108 separately (App. Br. 31-33);

3 In this section of the Brief Appellant purports to argue independent claim
67 and dependent claims 68-75 and 77-81. App. Br. 26, 27. However, no
arguments directed to these claims are found in the Brief. Nor does
Appellant present arguments concerning claims 83-87.
4 Appellant apparently intended to refer to claim 99 since claim 98 does not
depend from claim 92.
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9. independent claim 109 and dependent claims 110-114 as a group
based on limitations recited in claim 109 (App. Br. 33-35);
10. independent claim 115 and dependent claims 116-118 as a group
based on limitations recited in claim 115 (App. Br. 35-36);
11. the Examiner's rejection of claims 34, 36, and 385 over Petersen,
Oyama and Lanouette based only upon deficiencies believed to exist
in the Examiner’s rejection of their respective parent claims based on
the combination of Petersen and Oyama alone (App. Br. 36);
12. the Examiner's rejection of claims 9-16, 72, 73, 84, 94 and 95 over
Petersen, Oyama and Muller based only upon deficiencies believed to
exist in the Examiner’s rejection of their respective parent claims
based on the combination of Petersen and Oyama alone (App. Br. 37);

Those claims argued as a group will stand or fall with their respective
parent claim provided that parent claim is separately argued. 37 C.F.R. §
41.37(c)(1)(vii). Since no arguments specific to the rejections based in part
on Lanouette or Muller are provided, claims rejected thereunder will stand
or fall based on the persuasiveness of Appellant’s arguments concerning the
rejection based on the combination of Petersen and Oyama alone.
Arguments related to claims 67-75, 77-81 and 83-87 have not been made by
Appellant and are deemed to have been waived. See 37 C.F.R. §
41.37(c)(1)(vii).
Regarding the Examiner’s rejection based on the combination of
Petersen and Oyama, Appellant states:

5 See note 1.
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Overall, the Applicant believes that the claims at issue on
Appeal are allowable because neither Petersen nor Oyama
disclose a monitoring device comprising:
a converting device that converts, according to a
set relationship, [said] spool speed signal and a
spool width into a wire supply signal varying
between a high level when said spool speed signal
is low at a presumed maximum supply of wire on
said spool and a low level when said spool speed
signal is at a high at the minimum supply of wire
on said spool determined by said minimum wire
supply diameter.
Reply Br. 8. This argument is expressly made in Appellant’s discussion of
claim 1, and is repeated, in one form or another, in Appellant’s discussion of
claims 2, 82, 92, 97, 109, and 115.6 Thus, the first issue for our consideration
is whether the Examiner erred in concluding that a monitoring device (or
method) which includes a converting device (or step) as set forth in claims 1,
2, 82, 92, 97, 109 or 115, would have been obvious to one having ordinary
skill in the art.
Petersen discloses a monitoring device including a computer 36, a
“converting device,” that may receive the rotational velocity of the reel 22,
and a “spool speed signal.” See Petersen p. 3, para. [0030], figs. 1, 2.
Petersen teaches programming computer 36 with the longitudinal length of

6 We recognize that similar limitations appear in other claims. However,
Appellant has elected to make only certain arguments in contesting a
particular rejection, all other arguments that the Appellant chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(vii) (“Any arguments or authorities
not included in the brief or a reply brief will be refused consideration by the
Board, unless good cause is shown.”). See also Ex Parte Frye, 94 USPQ2d
1072, 1075-76 (BPAI 2010)(Only issues and findings of fact contested by
the Appellant will be addressed.).
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the reel between flanges 58, 60, a “spool width.”7 Id. Peterson also discloses
that the computer may be programmed to determine the length of cable 24
wound-up or paid-off from the reel 22, thereby outputting a “wire supply
signal.” Id. To calculate this length Petersen suggests using the difference in
position of the detected surfaces of the cable and/or reel (see pn Fig. 3), the
distance between the detected surfaces and the axis of rotation (accounting
for the core or “minimum wire supply” diameter, e.g., at p0), the diameter of
the cable, and the average rotational velocity. These findings were made by
the Examiner and do not appear to be the subject of any dispute.
The problem with Petersen’s disclosure, as Appellant perceives it, is
that while, as the Examiner points out, Petersen teaches programming a
“spool width” and Petersen also teaches providing a “wire supply signal”
Petersen does not provide any express guidance as to how the “wire supply
signal” is actually derived from the “spool width.” Thus, Appellant
concludes, there is no converting device or step as claimed.
The problem with Appellant’s position is that we are unable to
conceive of any way Petersen can achieve the stated goal of determining the
length of cable on the reel based on the stated radial dimensions (pn) or
rotational speed, without taking into account the longitudinal length of the
reel between flanges. For example, if such length is large, there still may be
a large quantity of cable on the reel despite the detected diameter being
small. The cable on Petersen’s reel is essentially shaped like a tubular
cylinder. Petersen’s calculation of the length of cable on the reel is similar to
calculating the volume of such a cylinder; it cannot be done knowing only
the inner and outer diameters and not its height or length. Since Petersen’s

7 Note Petersen uses the term “length” in a manner consistent with what
Appellant regards as “width.”
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computer 36 is provided with the requisite “spool speed signal” and “spool
width” and has a program structure enabling determination of “a wire
supply” that may be based at least in part on those factors, we find it is
inherently capable of converting, and inherently does convert, spool speed
and width signals into a wire supply signal as recited. Furthermore, the fact
that Petersen omits the details of how the sensed values or set system
parameters are used to perform the calculation suggested by Petersen is
evidence that one of ordinary skill in the art would know how to carry out
Petersen’s direction, for example, by employing the values discussed above.
The Examiner supplements Petersen’s teachings regarding the “RPM
device” which creates the “spool speed signal” with Oyama. Appellant does
not provide a detailed discussion of Oyama with regard to claims 1, 2, 82,
92, 97, 109 or 115. However, it is worth mentioning that Oyama’s device
and method, while only described two-dimensionally and thus not expressly
discussing “spool width,” is otherwise nearly identical to Appellant’s
claimed subject matter. Oyama seeks to determine the amount of wire
remaining on a spool 2 as that wire is transferred at a constant velocity via
rollers 1 to a welding operation. Oyama p. 2, para. [0003]; p. 3, para. [0012].
Oyama monitors the ratio of angular velocity of the spool (via tachometer 6,
an “RPM device”) to the angular velocity of the feed rollers 1 (via
tachometer 4), in order to determine the diameter of wire remaining on the
spool. Oyama pp. 3-4, para. [0013]. This clearly meets the “wire supply
signal” converted from the “spool speed signal” limitations because as
Appellant points out in the Specification, “[i]t must be remembered that the
signal indicative of the actual diameter of the wire on the spool is in the
preferred embodiment a relationship between the wire feed speed and the
rotational speed of the spool.” Spec. 5:18-20. Oyama relies on the same
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principle as Appellant does to determine the quantity of remaining wire. See
Spec. 16:6-20.
Oyama expressly suggests including a display 7 (fig. 1 embodiment)
for exhibiting the supply of wire and a danger signal 8 (fig. 2 embodiment)
to stop operation of the welder feed when the supply is low. Thus,
Appellant’s argument regarding the “gage” of claims 92, 97, 115 lacking
such features appears to be without merit. Oyama also expressly suggests
providing the ability to input (via inputs 9, 10 of the fig. 3 embodiment) the
maximum and minimum diameters of the wire supply. Oyama p. 5, para.
[0022]. Thus, Appellant’s argument regarding claims 37 and 108, that the
Examiner’s proposed combination lacks “an adjust circuit . . .” or “converter
. . . adjusting” as claimed also appears to be without merit.

The rejection of claim 48 is reversed.
Regarding claim 488, Appellant correctly points out that while
Petersen and Oyama each disclose determining the rotational speed of the
spool, and therefore must inherently possess some device for achieving this,
e.g., “an RPM device,” both Petersen and Oyama are silent regarding the
specific structure and configuration of such a device. The Examiner
improperly interprets Oyama’s schematic illustrations as indicative of the
presence of specific structures. See Ans. 18. We cannot agree with the
Examiner that one of ordinary skill in the art would understand Oyama’s
schematics in that way or that the schematically depicted tachometer would
inherently require the features recited in claim 48. The issue of whether such
features would have been an obvious way to implement the teachings of

8 See note 6.
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Oyama to provide a tachometer is not presented by the Examiner for our
review. Accordingly, we must reverse the Examiner’s rejection of claim 48.

DECISION
The rejection of claims 92-108 and 115-118 under 35 U.S.C. § 112,
second paragraph is reversed.
The rejections of claims 1-30, 33-47, 49-75, 77-87 and 92-118 based
entirely or in part on the combination of Petersen and Oyama are affirmed.
The rejection of claim 48 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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