Ex Parte Diedrick et al

Patent Trial and Appeal Board

Nov 6, 2017

11524865 (P.T.A.B. Nov. 6, 2017)

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.
11/524,865 09/21/2006 Michael G. Diedrick 20153/YOD (ITWO:0130) 9354
7590 11/06/2017
Patrick YnHer
EXAMINER
FLETCHER YODER MAYE, AYUB A
P.O. Box 692289
Houston, TX 77269-2289 ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
11/06/2017 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 MICHAEL G. DIEDRICK, ADAM P. LAABS,
GREGORY C. BAETEN, and MARK E. PETERS
Appeal 2016-002777
Application 11/524,865
Technology Center 3700
Before MICHAEL L. HOELTER, MITCHELL G. WEATHERLY, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1—23 and 25. Claims 24 and 26—28
have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 This Application has previously been the subject of Appeal No. 2011-
011942 mailed October 21, 2013 wherein the Examiner’s rejection of claims
1—28 was affirmed.
Appeal 2016-002777
Application 11/524,865
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to the field of welding
systems, and particularly to a portable, engine driven welding system
including a generator and power supply as well as a wire feeder for
performing various types of welding operations.” Spec. 11. Apparatus
claim 1 and system claims 12, 16, 19, and 21 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A welding system comprising:
a housing;
an engine disposed in the housing;
a generator disposed in the housing and coupled to the
engine for generating a first electrical power output;
a control circuit and a converter disposed in the housing
and coupled to the generator for receiving the first electrical
power, wherein the converter is configured to convert the first
electrical power output to a welding power output; and
a wire feeder disposed in the housing and coupled to the
converter for receiving power for driving a wire electrode
through a supply cable to a welding torch, wherein the engine,
the generator, the control circuit and the wire feeder are
commonly mounted on a common support with the housing.
REFERENCES RELIED ON BY THE EXAMINER
Stava US 6,924,460 B1 Aug. 2,2005
Leisner et al. US 7,211,764 B2 May 1, 2007
Silvestro US 7,642,487 B2 Jan. 5,2010
THE REJECTION ON APPEAL
Claims 1—23 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leisner, Stava, and Silvestro.
2
Appeal 2016-002777
Application 11/524,865
ANALYSIS
Each independent claim on appeal includes the limitation, “a wire
feeder disposed in the housing.”2 Emphasis added. The Examiner relies on
Stava for such teachings. Final Act. 7. Appellants disagree because Stava
does not disclose a wire feeder “disposed in the housing” but instead
teaches, “[t]he front panel of the housing also includes electrical connectors
that are used to connect a welding gun, wire feeder and/or other electrical
equipment to the engine welder.” App. Br. 10-12; Stava 8:29-32; see also
Reply Br. 3. Hence, according to Appellants, this is indicative “that the wire
feeder is outside of the housing.” App. Br. 12, 10; see also Reply Br. 3.
Appellants further contend, “if Stava intended or contemplated the
wire feeder in the housing, Stava knew how to express such a placement and
chose to describe the wire feeder outside of the housing.” App. Br. 12.
Stava, indeed, expressly states that the engine, air compressor, fuel tank,
generator, electrical circuity, exhaust gas separation system, and gas
compressor are each located “in” or “within” the housing. Stava 8:9-10:31.
However, the only mention in Stava of the wire feeder is that it can be
connected to “[t]he front panel of the housing.” Stava 8:29-32; see also
Stava Figs. 1 and 3 (illustrating wire feeder 70 connected to electric arc
welder 10 via control line 72.). In short, Appellants contend, “Stava
2 Appellants do not provide a definition of the claim term “disposed in,” but
“disposed” is commonly defined as “arranged” or “to put in place.” See
https://www.merriam-webster.com/dictionary/disposed (last visited
November 1, 2017). Likewise, “in” is described as “used as a function word
to indicate inclusion, location, or position within limits.” See
https://www.merriam-webster.com/dictionary/in (last visited November 1,
2017). We, thus, understand “disposed in” to mean “arranged within” or
“placed within” the limits of the recited housing.
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Appeal 2016-002777
Application 11/524,865
indicates that some components are intended “to connect” to the housing,
while other components are actually “in the housing.” App. Br. 12; see also
Reply Br. 3.
The Examiner acknowledges that Stava teaches a front panel to which
a wire feeder can be connected. See Ans. 3—4, 5, 7, 8, 10. However, the
Examiner states that the independent claims on appeal (i.e., claims 1, 12, 16,
19, and 21) require the recited components (i.e., engine, generator, control
circuit, and wire feeder) to each be “mounted on a common support with
[the] housing not within the housing” and, therefore, “the wire feeder [is] not
required to be within the housing.” Ans. 4, 6, 8—9, 10-11.
Appellants disagree stating that the claims on appeal require “a wire
feeder disposed in a housing, and not with a housing.” Reply Br. 2. In
other words, “the examiner is clearly in error in determining that the claims
do not recite that these components are all within the housing.” Reply Br. 3.
Further, Appellants contend, “[t]here is no discussion in Silvestro of a wire
feeder disposed in a housing” that might cure the defect of Stava. App.
Br. 13; see also Reply Br. 3 (“none of the other references cited by the
examiner teach or suggest a wire feeder disposed in a housing along with an
engine and a generator”).
Based on the record presented, we agree with Appellants. As
expressed supra, we understand the claim phrase, “disposed in the housing”
to mean (as expressed by Appellants) “within the housing” and not simply
alongside or “with housing” as expressed by the Examiner. The Examiner
has not properly interpreted the claim language and does not indicate where
any of the references cited disclose a wire feeder “disposed in the housing”
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Appeal 2016-002777
Application 11/524,865
as recited. We reverse the Examiner’s rejection of claims 1—23 and 25 as
being obvious over Leisner, Stava, and Silvestro.
DECISION
The Examiner’s rejection of claims 1—23 and 25 is reversed.
REVERSED
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