Ex Parte Daniel et alDownload PDFPatent Trial and Appeal BoardDec 21, 201612361928 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 12/361,928 01/29/2009 Joseph A. Daniel 072056-8046.US00 9148 91854 7590 12/23/2016 Lincoln Electric Company/Perkins COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 EXAMINER DUNIVER, DIALLO IGWE ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 12/23/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): wdcle @perkinscoie. com patentprocurement @perkinscoie. com ip @ lincolnelectrie .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH A. DANIEL, EDWARD HILLEN, and WILLIAM T. MATTHEWS Appeal 2015-003032 Application 12/361,928 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joseph A. Daniel et al. (“Appellants”) seek our review under 35 U.S.C. § 134(a) of the final rejection of claims 21, 22, 24—27, 30, 31, 36, 37, 39-42, 4AA6, and 53-56. Appeal Br. 5, 18. Claims 32, 33, 35, 47, 48, 50, 57, and 58 have been allowed. Id. at 5; Final Act. 13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-003032 Application 12/361,928 CLAIMED SUBJECT MATTER Appellants’ invention “relate[s] to a measurement of energy imparted to a weld” (Spec. 12), which can be used “to determine the mechanical properties of the weld for quality control purposes” {id. 13). Claims 1, 26, 32, 36, 41, and 47 are independent and claim 21 is reproduced below with emphasis to a certain claim limitation at issue in this appeal. 21. A method for monitoring a welding operation within a welding power supply, comprising: sampling pairs of instantaneous voltage and current values from a welding waveform during a first time period; determining instantaneous energy values from the sampled pairs of instantaneous voltage and current values; summing the instantaneous energy values to determine a total energy input into a weld during the first time period; comparing the determined total energy to an acceptable range of total energy values for the welding operation; determining a length of the weld made during the first time period; and determining an energy input per unit length during the first time period using the determined total energy input and the determined length of the weld. Appeal Br. 19 (Claims App.) (emphasis added). THE REJECTIONS1 I. Claims 21, 22, 25—27, 29, 53, and 55 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Blankenship (US 2005/0133488 Al, published June 23, 2005) and Paton (US 4,996,409, issued Feb. 26, 1991). Final Act. 3. 1 The rejection of claims 29 and 30 under 35 U.S.C. § 112, second paragraph, (Final Act. 2—3) was subsequently withdrawn (Adv. Act. dated July 8,2014). 2 Appeal 2015-003032 Application 12/361,928 II. Claims 24, 27, 30, and 31 stand rejected as unpatentable over Blankenship, Paton, and Suzuki (US 6,703,585 B2, issued Mar. 9, 2004). Final Act. 7. III. Claims 36, 37, 40, 41, 44, 54, and 56 stand rejected as unpatentable over Blankenship and Paton. Final Act. 8. IV. Claims 39, 42, 45, and 46 stand rejected as unpatentable over Blankenship, Paton, and Suzuki. Final Act. 12. ANALYSIS Rejection I: Claims 21, 22, 25—27, 29, 53, and 55 The primary issue before us is whether it would have been obvious to use Blankenship’s device to “compar[e] the determined total energy to an acceptable range of total energy values for [a] welding operation,” as recited in independent claim 21, or “compar[e] the determined instantaneous energy values to an acceptable range of instantaneous energy values for [a] welding operation,” as recited in independent claim 26. See Appeal Br. 19-20 (Claims App.). A related issue is whether Blankenship’s cursors 172, 174 set upper and lower limit values, between which can be construed as satisfying the claimed “acceptable range.” In rejecting independent claims 21 and 26, including their respective dependent claims 22, 25, 27, 29, 53, and 55, the Examiner reasons that it would have been obvious for an operator to use Blankenship’s device “to compare the calculated total heat energy to an acceptable range of total energy values.”2 Ans. 4. 2 In the Final Office Action, and in satisfying this claimed limitation, the Examiner found that Blankenship “implicitly teaches of structure capable of 3 Appeal 2015-003032 Application 12/361,928 In support of this determination, the Examiner refers to Blankenship’s Figure 8, which we reproduce below: FIGl 8 Figure 8 “displays total deposition rate of the tandem of welding electrodes as a function of position as well as user-operable cursors for identifying total deposition rate at selected positions.” Blankenship 122. Blankenship describes welding parameter values 170, such as heat input 178, for welding at positions of lower and upper cursors 172, 174, including difference values 180 (delta) between welding parameter values at the upper and lower cursors 172, 174. Id. 1 65. Blankenship further describes that a comparing the determined total energy to an acceptable range of total energy values for a welding operation.” Final Act. 4—5. As with Appellants, we understand that the Examiner’s obviousness determination (in the Answer) supplants the original finding from the Final Office Action. See Reply Br. 5 (“the Examiner’s Answer does not rebut Appellants’ arguments in the Appeal Brief’). 4 Appeal 2015-003032 Application 12/361,928 user can move cursors 172, 174 with a mouse pointer or keyboard, for example, and set cursor values 170 to reflect new cursor positions. Id. In satisfying the claimed limitation “comparing . . . total energy to an acceptable range of total energy values,” the Examiner explains that because Figure 8 “shows the difference values 180 between the welding parameter values at the upper and lower cursors 172, 174,” an “operator can compare the welding total input heat energy graph line to an upper and lower limit of the total input heat energy values.” Ans. 5. The Examiner further takes the position that because cursors 172, 174 “set[] upper and lower limit values” (see id.), “Blankenship “does teach ‘comparing the determined total energy to an acceptable range of total energy values for the welding operation’” (id. at 6). In contesting the rejection, Appellants argue that the Examiner’s reliance on Blankenship’s cursors 172, 174 is misplaced for two reasons: (1) because these cursors 172, 174 do not correspond to “heat input ‘limits,’” and (2) because these cursors 172, 174 do not define the claimed “‘acceptable range.’” Reply Br. 7—9. Appellants’ arguments are persuasive, as the rejection fails to establish how Blankenship’s cursors 172, 174 are themselves “limits,” within which define an “acceptable range of total energy values.” In contrast to the Examiner’s position, Blankenship specifically discloses that cursors 172, 174 represent positions along the weld length where welding parameter values for deposition rate 176 and heat input 178 are calculated. See Blankenship | 65. Claim 21 recites, inter alia, a method comprising the step of “comparing the determined total energy to an acceptable range of total 5 Appeal 2015-003032 Application 12/361,928 energy values for the welding operation.” Appeal Br. 19 (Claims App.) (emphasis added). Furthermore, the Specification describes that the total energy “may be compared to known standards of acceptability to determine whether or not the quality of the weld is acceptable. ” Spec. 144 (emphasis added). Accordingly, a person of ordinary skill in the art, upon reading the Specification, would interpret the claimed “comparing the determined total energy to an acceptable range” as requiring a comparison of the total energy “to known standards of acceptability” to determine, for example, “whether or not the quality of the weld is acceptable.” In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (although the USPTO construes claim language under the broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure). The Examiner’s finding that an “operator can compare the welding total input heat energy graph line to an upper and lower limit of the total input heat energy values” (Ans. 5) fails to adequately address how the heat input values (as measured at locations set by cursors 172, 174) represent either “limits” or, more importantly, define within them an “acceptable range” as required by the claims. Moreover, obviousness grounds cannot be sustained by mere conclusory statements, and it is not enough for the Examiner to simply state that an “operator can compare” the values, without providing an explicit reason for why an operator would do so. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some 6 Appeal 2015-003032 Application 12/361,928 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness). In other words, it is not enough for the Examiner to conclude that “it would have been obvious ... to compare the calculated total heat energy to an acceptable range of total energy values” (id. at 4) without providing a reason to do so. For the foregoing reasons, we do not sustain the rejection of independent claims 21 and 26, and their respective dependent claims 22, 25, 27, 29, 53, and 55, as unpatentable over Blankenship and Paton. Rejections II—IV: Claims 24, 27, 30, 31, 36, 37, 39, 40, 41, 42, 44, 45, 46, 54, and 56 In rejecting claims 24, 27, 30, 31, 36, 37, 39, 40, 41, 42, 44, 45, 46, 54, and 56, under one of Rejections II—IV, the Examiner relies on the same unsupportable determination discussed above with respect to Rejection I, namely, that Blankenship’s cursor values 172, 174 represent limits within which, “an acceptable range” of energy values are compared with the determined energy. Final Act. 7 (Rejection II); Ans. 16 (Rejection III), 20 (Rejection IV). Accordingly, for the same reasons we do not sustain the rejection of claims 21, 22, 25—27, 29, 53, and 55 (Rejection I), we do not sustain the rejection of claims 24, 27, 30, 31, 36, 37, 39, 40, 41, 42, 44, 45, 46, 54, and 56 (Rejections II—IV). SUMMARY The rejection of claims 21, 22, 25—27, 29, 53, and 55 under 35 U.S.C. § 103(a) as unpatentable over Blankenship and Paton is reversed. The rejection of claims 24, 27, 30, and 31 as unpatentable over 7 Appeal 2015-003032 Application 12/361,928 Blankenship, Paton, and Suzuki is reversed. The rejection of claims 36, 37, 40, 41, 44, 54, and 56 as unpatentable over Blankenship and Paton is reversed. The rejection of claims 39, 42, 45, and 46 as unpatentable over Blankenship, Paton, and Suzuki is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation