Ex Parte Diekmann et al

Patent Trial and Appeal Board

Sep 25, 2012

11010850 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CRAIG L. DIEKMANN, DAVID W. PERRIN, and
LAWRENCE A. BOEHNLEIN
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Appeal 2010-005325
Application 11/010,850
Technology Center 3700
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Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and
REMY J. VANOPHEM, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005325
Application 11/010,850
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
19, 21-25, and 34-52. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

The claims are directed to a power module cartridge. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 A power module cartridge for a welder comprising:
a lower chassis tray dimensioned to fit inside an external
case of a welder, the lower chassis tray including a fan
mounting receptacle, a capacitor mounting receptacle, a first
rectifier mounting slot, and a transformer mounting receptacle;
a fan snugly received in the fan mounting receptacle;
a capacitor snugly received in the capacitor mounting
receptacle;
a rectifier including a first plate received in the first
rectifier mounting slot;
a transformer received in the transformer mounting
receptacle; and
adjustable inserts for retaining the transformer.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wong
Katooka
Rancourt
US 4,296,454
US 5,831,240
US 6,147,581
Oct. 20, 1981
Nov. 3, 1998
Nov. 14, 2000
Appeal 2010-005325
Application 11/010,850
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REJECTION1
Claims 1-19, 21-25, and 34-52 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Katooka, Wong, and Rancourt. Ans. 5.

OPINION
The Examiner correctly found, and Appellants do not dispute, that
Katooka discloses a basic power module for a welder having the
components, but not the mounting arrangements, as claimed. Ans. 5.
Katooka does not discuss any specific structure used to mount the
transformer 8. Rather, Katooka suggests mounting “by appropriate means.”
Col. 7, ll. 27-28. It is undisputed that Wong demonstrates that the technique
of providing receptacles for welder power components was known in the art.
Ans. 5. In Wong, the transformer 10 is received in a rectangular enclosure
107 defined by ribs 103. See Fig. 7. Wong’s transformer is additionally held
in place by clamping nodules 123 on its opposite end. Col. 4, ll. 14-17, fig.
4. Appellants do not dispute the Examiner’s conclusion that it would have
been obvious to use Wong’s mounting arrangement in Katooka’s power
module. The Examiner found that Katooka device, using Wong’s mounting
arrangement would still lack an “adjustable insert” for retaining the
transformer as required by independent claim 1. The Examiner correctly
determined that Rancourt demonstrates that adjustable transformer clamping
assemblies were known in the art. The benefit of Rancourt’s adjustable
transformer clamping assembly 20 is that the same tank can be used to

1 We note that the rejection labeled as a “new grounds” is just the correction
of an omission by the Examiner of certain claims in the statement of
rejection. Appellants appeared to have understood that the Examiner
intended to include those claims in that rejection. Reply Br. 7
(“Appellant[s’] argument remains the same”).
Appeal 2010-005325
Application 11/010,850
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accommodate transformer coil and core assemblies of various configurations
and sizes. Col. 1, ll. 6-10, 36-38, and 55-64. Based on these findings, the
Examiner correctly concluded that when incorporating Wong’s mounting
receptacle into Katooka, it would have also been obvious to insert the
adjustable transformer clamping assembly of Rancourt to predictably
provide the aforementioned benefit. Ans. 6. This modification would
predictably enable Katooka’s chassis 300, including Wong’s receptacles, to
accommodate transformer coil and core assemblies of various configurations
and sizes. Ans. 6.
Appellants contend that Rancourt is non-analogous art because
Rancourt relates to large power distribution transformers as opposed to
welders. App. Br. 8-10. Two criteria have evolved for determining whether
prior art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Appellants repeatedly point out
that the structure and function of Rancourt’s transformer tank differs from
Appellants’ transformer receptacle because Rancourt’s transformer is larger
and more powerful and is used for power distribution over utility grids
whereas Appellants’ transformer is used to power a welder. App. Br. 10;
Reply Br. 6. The structure and function of the claimed device are important
guideposts for determining the field of endeavor. In re Bigio, 381 F.3d 1320,
1326-27 (Fed. Cir. 2004). However, whether Rancourt falls within
Appellants’ field of endeavor does not appear to be disputed. App. Br. 9;
Ans. 9. Rather, the Examiner contends that Rancourt is reasonably pertinent
to the problem of retaining a transformer within an enclosure. Ans. 9. A
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Application 11/010,850
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reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem. Clay supra.
Appellants’ characterize the problem to be solved as finding a way to
reduce the development time for a welder while meeting the design
requirements. Spec. 1, para. [0002]. This is a fairly general characterization
of the problem. A more “particular” characterization of the problem might
be how to configure a single chassis to snuggly receive transformers having
different sized cores2. Spec. 7, para. [0032]. In any case, references dealing
with how to mount and retain the various components of a welder during the
assembly process, or transformers in particular, logically would have
commended themselves to an inventors attention in considering these
problems. While “the purposes of both the invention and the prior art are
important in determining whether the reference is reasonably pertinent to the
problem the invention attempts to solve” (Clay supra), it must be
remembered that “familiar items may have obvious uses beyond their

2 We must be careful not to use hindsight to define the particular problem
facing the inventor in terms of its solution. Monarch Knitting Mach. Corp. v.
Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed. Cir. 1998). While deciding to
modify the mounting arrangement of the transformer is, in a sense, part of
the solution to this general problem, determining how to do so to reduce
development time is the particular problem solved by the adjustable inserts
of the claimed invention. See, e.g., In re Paulsen, 30 F.3d 1475, 1481 (Fed.
Cir. 1994) (characterizing the particular problem as “how to connect and
secure the computer’s display housing to the computer” where the stated
general goal was to provide an easily viewed display that did not diminish
the computers portability.) (Emphasis ours); see also In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (characterizing the
particular problem faced by looking to the problem solved by particular
elements of the claimed combination).
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Application 11/010,850
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primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420-21
(2007). Thus, the fact that a reference deals with mounting or retaining a
component of a welder for assembly in something other than a welder does
not necessarily render it outside the scope of that which logically would
have commended itself to an inventor’s attention when concerned with
welder development. See, e.g., Paulsen, 30 F.3d at 1481 (references directed
to hinges and latches as used in a desktop telephone directory, a piano lid, a
kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a
two-part housing for storing audio cassettes were reasonably pertinent to the
problem of connecting and securing a portable computer’s display housing
to the computer); See also ICON Health and Fitness, 496 F.3d at 1379-80
(reference directed to a folding bed was reasonably pertinent to the problem
of supporting the weight of, and providing a stable resting position for, a
folding treadmill). Appellants do not present any arguments to apprise us of
error in the Examiner’s characterization of Appellants’ problem. There does
not appear to be anything unique to welder housings or pole mounted tanks
insofar as transformer mounting is concerned. In both fields one must
determine how to retain transformers, which appear to take a similar form.
Indeed, Rancourt demonstrates that the skilled artisan would recognize
applicability of the adjustable mount disclosed therein beyond the specific
container Rancourt describes it in. Col. 1, ll. 10-11. Accordingly, we cannot
agree with Appellants that Rancourt is non-analogous art.
Appellants additionally contend there is no suggestion to incorporate
the teachings of Rancourt into Katooka and Wong except for using
Appellants’ disclosure as a template. App. Br. 10. This argument is premised
on the alleged difference in size and power output between the transformer
of Appellants’ welder and Rancourt’s transformer. First, we do not find the
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Application 11/010,850
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claimed welder to be restricted to any particular size. Limitations not
appearing in the claims cannot be relied upon for patentability. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Second, Appellants have not
apprised us of any significant structural differences between a large or
powerful transformer and a smaller or less powerful one. The distinction
appears to be mainly one of scale. It would be obvious to one of ordinary
skill in the art that such a distinction could easily be accommodated for in a
mounting arrangement by scaling the mounting arrangement similarly.
Accordingly, we sustain the rejection of claim 1 and those claims
depending therefrom that are not separately argued. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). To the extent Appellants repeat the above
arguments concerning claims 34 (App. Br. 13) and 46 (App. Br. 14), they
remain unpersuasive.
The Examiner found that “[Rancourt’s] transformer mounting station
(support plates 21) clearly has openings therein to receive inserts
(connecting fasteners 52) . . . the inserts (connecting fasteners 52) are
clearly received in the openings . . . for retaining the transformer in
position.” Ans. 10. The Examiner’s reasoning is valid for independent
claims 34 and 46, but not for claim 19. Claim 19 does not simply require the
openings to receive inserts as the Examiner suggests. Rather claim 19
requires “the inserts,” i.e., the adjustable inserts of claim 1, to be received in
the openings. App. Br. 11-12. In rejecting claim 1, the Examiner relied upon
Rancourt’s “adjustable clamping assembly” as teaching “adjustable inserts
for retaining the transformer.” Ans. 6. That assembly is not received in
openings and it was unreasonable for the Examiner to interpret an alternate
structure, or merely a part of the clamping assembly, connecting fasteners
52, as the inserts of claim 19 but not of claim 1. One of ordinary skill in the
Appeal 2010-005325
Application 11/010,850
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art would understand “the” to mean that the inserts of claim 19 refers to the
same structure as the inserts of claim 1. Accordingly, the rejection of claim
19 cannot be sustained.
Regarding claim 34, Appellants contend that “[Rancourt’s] opening
that receives the fasteners 52 are not configured to receive inserts to retain a
transformer, even under a broadest reasonable interpretation. Instead, these
openings receive fasteners 51 that seem to fasten the steel plate 50 to the
steel pipe.” App. Br. 12-13. What Rancourt’s openings receive and what
they are “configured to receive” are distinct inquiries. Whether Rancourt’s
openings are configured to receive inserts to retain a transformer is largely
dependent upon the structure of the inserts. However, in contrast to claim 19,
the inserts of claim 34 are not limited by the language of the claim to any
specific structure. We therefore see no reason why it was unreasonable for
the Examiner to interpret Rancourt’s openings as configured to receive
inserts of no particular structure to retain a transformer.
Regarding claim 46, Appellants contend that
[t]here is no evidence or suggestion in Rancourt et al. of a lower
chassis tray for a power module cartridge for a welder having
openings formed in the floor of a transformer mounting
receptacle and an insert received in the opening for retaining a
transformer. Rancourt et al. disclose adjustable support plates
21 and an adjustable clamping bar 30, but these are not inserts
that are received in an opening for retaining a transformer.
App. Br. 13-14. Claim 46 is similar to claim 34 except for the fact that claim
46 positively includes “an insert received in at least one of the openings.”
The only additional requirement of the insert of claim 46 is that it is “for
retaining the transformer.” Rancourt’s fasteners are clearly received in
openings and they cooperate with support plate 50 to retain the transformer
vertically. Appellants have not apprised us of any reason why it was
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Application 11/010,850
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unreasonable for the Examiner to consider one of Rancourt’s fasteners 52
“an insert” according to the broad recitation of claim 46. See Reply Br. 7-8.
Accordingly, we sustain the rejection of claims 34 and 46 and those
claims depending therefrom, which are not separately argued.

DECISION
The Examiner’s rejection of claims 1-18, 21-25, and 34-52 is
affirmed.
The Examiner’s rejection of claim 19 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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