Ex Parte Feldhausen et alDownload PDFPatent Trial and Appeal BoardApr 17, 201412035861 (P.T.A.B. Apr. 17, 2014) 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. 12/035,861 02/22/2008 Joseph E. Feldhausen 480805.00037.02475B 1800 7590 04/17/2014 Jack M. Cook Quarles & Brady, LLP 411 E. Wisconsin Ave. Milwaukee, WI 53202-4497 EXAMINER MAYE, AYUB A ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 04/17/2014 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 JOSEPH E. FELDHAUSEN, JEFFREY W. RAPPOLD, GARY A. THYSSEN, CRAIG S. KNOENER, CHRISTOPHER D. McINNIS, BRIAN A. SCHWARTZ, MICHAEL W. HOGAN, and JEFFREY P. LENZ ____________ Appeal 2012-002891 Application 12/035,861 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and MICHELLE R. OSINSKI, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-002891 Application 12/035,861 2 Claimed Subject Matter The claimed subject matter relates to a system for performing a variety of tasks associated with structural welding processes. See Spec. 1, para. [0002]. Claim 1, reproduced below, is illustrative of the appealed claims. 1. A multi-operational welding-type system comprising: a wire feeder connected to a remotely located welding- type power source to receive welding-type power to perform a welding-type process; a gouging torch connected to the remotely located welding-type power source to receive welding-type power to perform another welding-type process; a support structure supporting the wire feeder and including a process selection switch configured to allow selection of only one of the welding-type process and the another welding-type process at a given time. Rejections I. Claims 1-20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of copending U.S. Patent Application Serial No. 12/035,809. II. Claims 1-20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-21 of copending U.S. Patent Application Serial No. 12/035,751. III. Claims 1-20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable Appeal 2012-002891 Application 12/035,861 3 over claims 1-20 of copending U.S. Patent Application Serial No. 12/035,895. IV. Claims 1-5, 10-16, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Park (KR 10-2006-0010586 A, published Feb. 2, 2006)1, Fihey (US 4,959,523, issued Sep. 25, 1990), and Fosbinder (US 7,411,154 B2, issued Aug. 12, 2008). V. Claims 6-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, Fosbinder, and Saylor (US 2007/0296223 A1, published Dec. 27, 2007). VI. Claims 9, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, Fosbinder, Saylor, and Nakagiri (US 7,202,442 B2, issued Apr. 10, 2007). OPINION Rejections I-III – Obviousness-type Double Patenting Appellants do not list the Examiner’s provisional obviousness-type double patenting rejections in the grounds of rejection to be reviewed on appeal section of the Appeal Brief and present no arguments of error regarding these rejections. See App. Br. 7-29; Reply Br. 3-6. However, since Appellants state that “[t]his appeal is taken with respect to the finally rejected pending claims 1-20,” we have jurisdiction over all rejections 1 The Examiner refers to this reference as “LEE Y D,” “Lee Y D,” and “Park.” See Ans. 4-24. Appellants refer to this reference as “Lee Y D.” See App. Br. 7-28. Emphasis omitted. We will refer to the reference by the inventor’s last name of “Park” as noted in the English language machine translation provided by the Examiner with the Office Action mailed October 7, 2009 and located in the electronic file of the application underlying this appeal. Appeal 2012-002891 Application 12/035,861 4 involving any of claims 1-20. See App. Br. 3. Thus, we summarily sustain the Examiner’s provisional obviousness-type double patenting rejections. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Rejection IV - Obviousness based on Park, Fihey, and Fosbinder At the outset, we note that Appellants separately set forth an argument with respect to each of independent claims 1 and 14 and dependent claims 2, 3, 13, 16, and 19 based upon exemplary rationale (A) as set forth in the Manual of Patent Examining Procedure (MPEP) § 2143 (8th ed., rev. 9, Aug. 2012), entitled “Examples of Basic Requirements of a Prima Facie Case of Obviousness,” and identified by the Supreme Court in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 415-21 (2007). App. Br. 9-25. More particularly, Appellants argue that the Examiner’s rejection of each of claims 1-3, 13, 14, 16, and 19 based upon the combination of Park, Fihey, and Fosbinder is “improper since at least Finding (1) cannot be made with respect to these prior art documents.”2 See App. Br. 10, 14, 15, 17, 20, 23, and 24. Thus, Appellants appear to presume that the Examiner’s rejection of claims 1-3, 13, 14, 16, and 19 is based on exemplary rationale (A), entitled “Combining Prior Art Elements According to Known Methods To Yield 2 Appellants identify “Finding (1)” by quoting the first finding of exemplary rationale (A) of MPEP § 2143 I, namely, “(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.” App. Br. 9. Appeal 2012-002891 Application 12/035,861 5 Predictable Results,” to support the conclusion of obviousness. However, Appellants’ argument is unpersuasive with respect to each of claims 1-3, 13, 14, 16, and 19, because the Examiner’s rejection is not necessarily based upon KSR’s exemplary rationale (A). In other words, it appears just as likely that the Examiner’s rejection of each of claims 1-3, 13, 14, 16, and 19 is based on KSR’s exemplary rationale (G), i.e., teaching, suggestion, motivation or TSM. Thus, even if “Finding (1)” of KSR’s exemplary rationale (A) cannot be made with respect to the combination of Park, Fihey, and Fosbinder as argued by Appellants, this argument is without merit because the Examiner’s rejection does not rely on exemplary rationale (A). In addition, to the extent that Appellants argue that the none of Park, Fihey, and Fosbinder, taken alone or in combination, teach or suggest the subject matter of each of claims 1-3, 13, 14, 16, and 19 (see App. Br. 10, 14, 15, 17, 20, 23, and 24), these arguments are unpersuasive because they do not point out any errors in the Examiner’s findings or reasoning, nor do they explain with any specificity why the Examiner’s findings and reasoning are insufficient to establish that the subject matter of each of claims 1-3, 13, 14, 16, and 19 would not have been obvious. Thus, Appellants’ arguments do not constitute separate arguments for the patentability of claims 1-3, 13, 14, 16, and 19. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R § 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Appeal 2012-002891 Application 12/035,861 6 Claims 1 and 10-12 Appellants argue independent claim 1 and do not separately argue claims 10-12 which depend from claim 1. See App. Br. 10-14. We select claim 1 as the representative claim and claims 10-12 fall with claim 1. See 37 C.F.R § 41.37(c)(1)(iv) (2011). The Examiner finds that Park substantially discloses the subject matter of claim 1, but fails to teach both “[a] gouging torch that performs [a] gouging process,” and “a switch configured to allow selection of only one of [the] welding[-]type process and [the] another welding[-]type process at a given time.” Ans. 6-7. To cure the deficiencies of Park, the Examiner relies upon Fihey to disclose a “gouging torch (33 as shown in fig. 11) that performs [a] gouging process,” and Fosbinder to disclose “a switch (34 as shown in fig. 1) configured to allow selection of only one of [the] welding[- ]type process and [the] another welding[-]type process at a given time.” Ans. 8. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to modify Park with [the] gouging torch and user interface as taught by Fihey in order to reduce hazards and flying particles of metal during grinding and to limit access to [the] damaged area,” and “to modify Park with switch selection as taught by Fosbinder in order to implement different types of welding process[es].” See Ans. 9 (citing Fihey, col. 1, ll. 33-36, and Fosbinder, col. 3, ll. 5-10). Initially, we note that at pages 10-12 of the Appeal Brief, Appellants set forth a summary of arguments made during prosecution; however, this summary is historical, is not seen as setting forth current arguments that this panel needs to consider, and will not be addressed. Appeal 2012-002891 Application 12/035,861 7 Appellants argue that “the teachings of Fihey . . . and Fosbinder . . . are not compatible and one skilled in the art would not seek to combine the references.” App. Br. 12. Emphasis omitted. More particularly, Appellants argue that combining the manual switch of Fosbinder with the automated gouging torch of Fihey “would introduce functionality that is diametrically opposed to the automatic nature of Fihey[’s] . . . system.” See App. Br. 12- 13. Emphasis omitted. We are not persuaded by Appellants’ argument because the Examiner’s rejection modifies Park to include a gouging torch as taught by Fihey and a switch as taught by Fosbinder. See Ans. 9. The Examiner’s rejection does not modify the Fihey welding-type system with respect to adding a process selection switch thereto by the teachings of Fosbinder. Id. Appellants also argue that Fihey “teaches away” from the welding- type system of claim 1, “because of the continuous and independent nature of the welding and gouging processes performed by Fihey[’s] . . . system” (emphasis omitted) and “[t]his is expressly contrary to the claimed switch that is ‘configured to allow selection of only one of the welding-type process and the another welding-type process at a given time.’” App. Br. 13. However, in order to “teach[] away,” a reference must “criticize, discredit, or otherwise discourage the solution claimed . . . .” See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Because Appellants have not pointed out how Fihey criticizes, discredits, or otherwise discourages the claimed solution of providing a welding-type system with a gouging torch and a process selection switch configured to allow selection of only one of the welding-type process and the another welding-type process at a given time, we are not persuaded that Fihey teaches away. Appeal 2012-002891 Application 12/035,861 8 Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 10-12 which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Claims 2, 4, and 5 Appellants argue claim 2 and do not separately argue claims 4 and 5 which each depend directly from claim 1. See App. Br. 14-15; see also App. Br., Clms. App’x. We select claim 2 as the representative claim and claims 4 and 5 fall therewith. Claim 2 depends from claim 1 and recites: a controller configured to receive a selection indication from the process selection switch and coordinate operation of the wire feeder and the gouging torch to preclude the wire feeder and the gouging torch from simultaneously performing the welding-type process and the another welding-type process. App. Br., Clms. App’x. Appellants argue that “the Examiner did not cite any specific portions of . . . [Park] that describe . . . operation of the controller (10), the wire feeder (20), and the torch (100)” as recited in claim 2. App. Br. 14. Appellants also argue that: (1) they “do not find teachings or suggestions in . . . [Park] to conclude that the system of . . . [Park] operates contrary to many typical welding devices and; thus, the wire feeder and the torch could be used simultaneously to perform a single welding operation”; (2) “[n]one of . . . [Park’s] description of the torch seems to suggest that it would be used independently from the wire feeder as asserted by the Examiner”; and (3) neither Fihey nor Fosbinder cure the deficiencies of Park in this regard. See App. Br. 14-15. We are not persuaded by Appellants’ argument because it fails to include any explanation as to why the combination of Park, Fihey, and Fosbinder does not disclose the controller of claim 2. See In re Merck & Appeal 2012-002891 Application 12/035,861 9 Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references). Accordingly, we sustain the Examiner’s rejection of claim 2, and claims 4 and 5 which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Claim 3 Claim 3 depends from claim 2 and recites that “the process selection switch is further configured to communicate with the controller to disable the welding-type process and the gouging-type process upon one of a selection of an off state and a change in selection during one of the welding- type process and the gouging-type process.” App. Br., Clms. App’x. Appellants argue that while Fosbinder teaches a switch 34 and a controller 26, Fosbinder does not teach the specific configuration recited in claim 3. App. Br. 16. In particular, Appellants argue that the description in Fosbinder at column 3, lines 8-10, indicates that switch 34 operates to select the type of weld output, which is determined by the type of welding process. Id. Appellants also argue that Fosbinder “does not teach or suggest the specifically-claimed system that includes a process selection switch.” App. Br. 16-17. However, we are not persuaded of Examiner error, because Appellants’ arguments fail to explain why the combination of Park, Fihey, and Fosbinder do not disclose the switch configuration recited in claim 3 as suggested by the Examiner. See Ans. 17; see also Merck, 800 F.2d at 1097 and Keller, 642 F.2d at 426. Appeal 2012-002891 Application 12/035,861 10 Accordingly, we sustain the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Claim 13 Claim 13 depends from claim 12 and recites that “the welding-type power source is free of user interface devices configured to select operational parameters.” App. Br., Clms. App’x. The Examiner finds that Park generally discloses a power source, but fails to teach that the power source “is free of user interface devices configured to select operational parameters.” Ans. 6 and 8 (citing Park, Fig. 4). The Examiner relies upon Fihey to disclose a welding-type power source 51, “wherein the welding-type power source is free of user interface devices configured to select operational parameters.” Ans. 8 (citing Fihey, Fig. 11, reference numerals 50 and 56). Appellants argue that Figure 11 of Fihey does not teach or suggest “a welding-type power source [that] is free of user interface devices configured to select operational parameters,” because Figure 11 “is clearly a schematic illustration that one of ordinary skill in the art [would understand] lacks any details about the claimed subject matter,” and “[t]he text of Fihey . . . adds no relevant information.” App. Br. 17-18 (quoting Fihey, col. 8, ll. 28-47). We are not persuaded by Appellants’ argument. The textual disclosure of Fihey, at column 8 , lines 28-47, does not support Appellants’ argument that Figure 11 of Fihey fails to teach or suggest the subject matter of claim 13. Specifically, Fihey indicates that “[c]ommunication to the BITBUS network 50 is handled in a master/slave arrangement of circuits 52 associated with the support equipment.” Fihey, col. 8, ll. 35-38. A person of ordinary skill in the art would reasonably understand Fihey’s disclosure to Appeal 2012-002891 Application 12/035,861 11 teach that the slave circuits 52 are under control of the master circuit 50, which in turn “is a microcontroller with its own operating system to accomplish a precise task.” Fihey, col. 8, ll. 28-29. The characterization of circuits 52 as “slave” circuits would indicate that the control signals used for operating the support equipment are actually produced at the master circuit 50, and then relayed to the slave circuits to effect the desired control of the equipment. Claim 13’s recitation “free of user interface devices configured to select operational parameters” is not distinguishable because the slave circuits 52 of Fihey receive control signals rather than produce the control signals, and Appellants do not provide an adequately supported explanation as to why the welding-type power source feature of claim 13 is not disclosed in Fihey. Accordingly, we sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Claims 14, 15, and 20 Appellants argue independent claim 14 and do not separately argue dependent claims 15 and 20. See App. Br. 19-23. We select claim 14 as the representative claim and claims 15 and 20 fall therewith. Claim 14 is directed to “[a] multi-operational welding-type system,” and includes, inter alia, “a gouging torch connected to the welding-type power source to receive the gouging power to perform a gouging process” and “a user interface arranged remotely from the welding-type power source and configured to select between the welding-type power source delivering the welding-type power and the gouging power and isolate operation of the welding-type process and the gouging process.” App. Br., Clms. App’x. Appeal 2012-002891 Application 12/035,861 12 At pages 20-21 of the Appeal Brief, Appellants set forth a summary of arguments made during prosecution; however, this summary is historical, is not seen as setting forth current arguments that this panel needs to consider, and will not be addressed. Appellants set forth similar arguments to those discussed with respect to the rejection of claim 1 supra. App. Br. 21-22. For the same reasons as discussed supra with respect to the rejection of claim 1, we sustain the Examiner’s rejection of independent claim 14, and claims 15 and 20 fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Claim 16 Claim 16 depends from claim 15 and recites, inter alia, that “the user interface is integrated within the portable support structure.” App. Br., Clms. App’x. Appellants note that “the word ‘integrated’ does not appear within” the Examiner’s statement of the rejection, and argue that they do not find teachings or suggestions within the art of record that teaches or suggests the claimed user interface integrated within a portable support structure that is, as called for in claim 14, “configured to select between the welding-type power source delivering the welding-type power and the gouging power and isolate operation of the welding-type process and the gouging process,” particularly, when considered with the claimed controller is arranged within the wire feeder. App. Br. 23-24. We are not persuaded by Appellants’ argument, because the Examiner explains that the “user interface (element 10 as shown in fig.[ ]4) [is] integrated into support structure as shown in fig[.] as . . . [Park] discloses in abstract.” Ans. 21. Appeal 2012-002891 Application 12/035,861 13 Accordingly, we sustain the Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Claim 19 Claim 19 depends from claim 14 and recites that “the user interface is further configured to communicate with the controller to disable the supply of welding-type power and the gouging power upon one of a selection of an off state and a change in selection during one of the welding-type process and the gouging-type process.” App. Br., Clms. App’x. The Examiner finds that “Fosbinder teach[es] . . . [a] switch that [is] capable of disabling welding process and also selecting different type welding process by one process at [a] time as Fosbinder discloses in figure 1, element 34 and combining prior art elements.” Ans. 22-23. Appellants provide a discussion of what Fosbinder teaches and argue Fosbinder “does not teach or suggest the specifically-claimed system that includes a user interface that is further configured” as recited in claim 19. App. Br. 25. We are not persuaded by Appellants’ argument since it fails to include an explanation as to why the combination of Park, Fihey, and Fosbinder do not disclose the user interface as configured according to claim 19. See Merck, 800 F.2d at 1097 and Keller, 642 F.2d at 426. Accordingly, we sustain the Examiner’s rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Fosbinder. Rejection V - Obviousness based on Park, Fihey, Fosbinder, and Saylor Appellants merely argue that “claims 6-8 are dependent upon claim 1 and are patentably distinguishable from . . . [the Park, Fihey, Fosbinder, and Appeal 2012-002891 Application 12/035,861 14 Saylor] references for the reasons stated above for independent claim 1.” App. Br. 26. For the same reasons discussed supra that we were not persuaded by the Appellants’ arguments with respect to the rejection of claim 1, we sustain the Examiner’s rejection of claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, Fosbinder, and Saylor. Rejection VI - Obviousness based on Park, Fihey, Fosbinder, Saylor, and Nakagiri Claim 9 Claim 9 depends from claim 1 and recites, inter alia, “a welding cable . . . ; at least one of a wheeled cart and a rotatable bar mounting forming the support structure; and a strain protection system extending from the at least one of the wheeled cart and the rotatable bar.” App. Br., Clms. App’x. Appellants note “the Examiner admitted that . . . [Park] fails to teach the claimed invention” and “[r]ather, the Examiner cited Nakagiri . . . as teaching . . . [the subject matter of claim 9], apparently via element 14 of Fig. 2A.” App. Br. 27 (emphasis omitted). While Appellants acknowledge that Nakagiri “does describe a reinforced, multi-conductor cable system that includes a welding cable,” Appellants argue that Nakagiri “does not teach or suggest the claimed system including a wheeled cart or rotatable bar integrated wit[h] the claimed strain protection system.” Id. We are not persuaded by Appellants’ argument because it is not commensurate with the scope of claim 19 which does not require “a wheeled cart or rotatable bar integrated wit[h] the claimed strain protection system.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is well established that limitations not appearing in the claims cannot be relied upon for patentability). Furthermore, the Examiner does not rely on Nakagiri, but Appeal 2012-002891 Application 12/035,861 15 rather relies on Park to disclose “at least one of a wheeled cart (300 as shown in fig.[ ]4) and a rotatable bar or T-bar handle (200C as shown in fig.[ ]11) mounting supporting the wire feeder (20 as shown in fig.[ ]4). Ans. 10. Accordingly, we sustain the Examiner’s rejection of dependent claim 9 under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, Fosbinder, Saylor, and Nakagiri. Claims 17 and 18 Appellants argue claims 17 and 18 as a group and we select claim 17 as the representative claim. App. Br. 28. Claim 18 fails with claim 17. Claim 17 depends from claim 16 and recites, inter alia, “a movable tray . . . ; a plurality of legs extending up from the movable tray . . . ; and a strain relief system mounted to one of the tray and one of the plurality of legs.” App. Br., Clms. App’x. Claim 18 depends from claim 17. Id. Appellants set forth the same argument as discussed supra with respect to the rejection of claim 9. App. Br. 28. We are not persuaded by Appellants’ argument because it is not commensurate with the scope of claim 17 which does not require “a wheeled cart or rotatable bar integrated wit[h] the claimed strain protection system.” Id.; see Self, 671 F.2d at 1348. Accordingly, we sustain the Examiner’s rejection of claim 17, and claim 18 which falls therewith, under 35 U.S.C. § 103(a) as unpatentable over Park, Fihey, Fosbinder, Saylor, and Nakagiri. DECISION We affirm the Examiner’s rejections, under 35 U.S.C. § 103(a), of claims 1-20. Appeal 2012-002891 Application 12/035,861 16 We summarily affirm the Examiner’s rejections of claims 1-20 on the grounds of the judicially created doctrine of obviousness-type double patenting. 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 hh Copy with citationCopy as parenthetical citation