Ex Parte Feldhausen et al

Patent Trial and Appeal Board

Apr 17, 2014

12035751 (P.T.A.B. Apr. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/035,751 02/22/2008 Joseph E. Feldhausen 480805.00008.20475 1588
7590 04/18/2014
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
04/18/2014 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 2012-004042
Application 12/035,751
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 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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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
subject matter.
1. A system comprising:
a welding-type power source configured to deliver
welding-type power for a variety of welding-type processes;
a gouging torch connected to the welding-type power
source to receive welding-type power during a gouging-type
process;
a wire feeder connected to the welding-type power
source to receive welding-type power during a welding-process;
and
a controller configured to coordinate operation of the
wire feeder and the gouging torch to perform only one of the
gouging-type process and the welding-type process at a given
time.

Rejections
I. Claims 1-21 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 1-21 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.
12/035,861.
III. Claims 1-21 are provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
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over claims 1-20 of copending U.S. Patent Application Serial No.
12/035,895 in view of Jones (US 6,078,023, issued Jun. 20, 2000).
IV. Claims 1-21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
V. Claims 1-3, 8-16, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Park (KR 10-2006-0010586 A,
published Feb. 2, 2006) and Fihey (US 4,959,523, issued Sep. 25, 1990).
VI. Claims 4, 5, 7, 18, and 19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Park, Fihey, and Saylor (US 2007/0296223 A1,
published Dec. 27, 2007).
VII. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Park, Fihey, and Enyedy (US 2005/0199606 A1,
published Sep. 15, 2005).
VIII. Claim 17 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Park, Fihey, and Jones.

OPINION
Rejections I-IV – Obviousness-type Double Patenting and Indefiniteness
Appellants do not list the Examiner’s provisional obviousness-type
double patenting rejections nor the Examiner’s indefiniteness rejection 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.
6-24; Reply Br. 3-4. However, since Appellants state that “[t]his appeal is
taken with respect to the [non-]finally rejected pending claims 1-21,” we
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have jurisdiction over all rejections involving any of claims 1-21.1 See App.
Br. 3. Thus, we summarily sustain the Examiner’s provisional obviousness-
type double patenting rejections and the Examiner’s indefiniteness rejection.
See In re Berger, 279 F.3d 975 (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 V - Obviousness based on Park and Fihey
At the outset, we note that Appellants separately set forth an argument
with respect to each of independent claims 1 and 11 and dependent claims 2,
10, 12, and 14-16 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, 415-421 (2007). App. Br. 8-21. More
particularly, Appellants argue that the Examiner’s rejection of each of claims
1, 2, 10-12, and 14-16 based upon the combination of Park and Fihey is
“improper because at least Finding (1) cannot be made with respect to these
prior art documents.” 2 See App. Br. 9, 12-14, and 16-20. Thus, Appellants

1 Although Appellants state that “[c]laims 1-21 stand finally rejected as set
forth in the Office Action of February 17, 2011” (App. Br. 3; Reply Br. 2),
we note that the Office Action mailed February 17, 2011 was in fact a Non-
Final Office Action. Non-Final Rej. 1.
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
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appear to presume that the Examiner’s rejection of claims 1, 2, 10-12, and
14-16 is based on exemplary rationale (A), entitled “Combining Prior Art
Elements According to Known Methods To Yield Predictable Results,”
to support the conclusion of obviousness. MPEP § 2143 I(A). However,
Appellants’ argument is unpersuasive with respect to each of claims 1, 2, 10-
12, and 14-16, 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, 2, 10-12, and 14-16 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 and
Fihey 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 neither of Park and
Fihey, taken alone or in combination, teach or suggest the subject matter of
each of claims 1, 2, 10-12, and 14-16 (see App. Br. 10, 12-14, and 16-20),
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, 2, 10-12, and 14-16
would not have been obvious. Thus, Appellants’ arguments do not
constitute separate arguments for the patentability of claims 1, 2, 10-12, and
14-16. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that
the Board had reasonable interpreted 37 C.F.R § 41.37(c)(1)(vii) as requiring

prior art being the lack of actual combination of the elements in a single
prior art reference.” App. Br. 9.
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“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.”).
Claims 1 and 9
Appellants argue independent claim 1 and do not separately argue
dependent claim 9. See App. Br. 9-12. We select claim 1 as the
representative claim and claim 9 falls 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, including a wire feeder 20 discloses “that includes [a]
welding selection switch controller for selecting welding and non-welding
process,” and a controller 10 “configured to coordinate operation of the wire
feeder (20) and the torch (100) to perform only one of the process and the
welding-type process at a given time.” Ans. 8 and 14 (citing Park, Abstr.).
The Examiner also finds that “Park fails to teach [a] gouging torch that
performs gouging-type processes.” Ans. 9. To cure the deficiency of Park,
the Examiner relies upon Fihey to disclose a “gouging torch (33 as shown in
fig. 11) that performs gouging process.” Ans. 10. More particularly, the
Examiner indicates that Fihey discloses “a welding-type power source
configured to deliver welding-type power for a welding-type process and
gouging type process” and “a gouging torch configured to receive
operational power from the welding-type power source to perform a
gouging-type process.” Ans. 14-15.
Initially, we note that at pages 9-12 of the Appeal Brief, Appellants
set forth a summary of arguments made during prosecution; however, this
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summary is historical, is not seen as setting forth current arguments that this
panel needs to consider, and will not be addressed.
However, to the extent that Appellants argue Fihey discloses an
automated system which “teaches directly away from any system that would
allow operation of a given procedure in an isolated manner, as called for in
claim 1” (App. Br. 11), we are not persuaded that Fihey teaches away. 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). Appellants have failed to explain how Fihey
criticizes, discredits, or otherwise discourages the claimed solution of
providing a system with a controller configured to coordinate operation of
the wire feeder and the gouging torch to perform only one of the gouging-
type process and the welding-type process at a given time.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claim 9 which falls therewith, under 35 U.S.C. § 103(a) as
unpatentable over Park and Fihey.
Claims 2, 3, and 8
Appellants argue claim 2 and do not separately argue claims 3 and 8
which depend therefrom. See App. Br. 12-13. We select claim 2 as the
representative claim and claims 3 and 8 fall therewith.
Claim 2 depends from claim 1 and recites “a support structure
supporting the wire feeder and having a switch configured to communicate
with the controller to switch between selection of the welding-type process
and the gouging-type process.” App. Br., Clms. App’x.
The Examiner finds that Park discloses “a support structure (the top
surface of the portable wire feeder) supporting the wire feeder (20) and
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having a switch (11 as shown in fig.[ ]5) configured to communicate with
the controller (10) to switch between selection of the welding-type process.”
Ans. 8 (citing Park, Abstr.). The Examiner also finds that Fihey discloses “a
welding-type power source configured to deliver welding-type power for a
welding-type process.” Ans. 15.
Appellants argue that “the Examiner conspicuously and improperly
omitted the claimed configuration of the switch that permits selection
between the welding-type process and the gouging-type process, and the
Examiner never asserted that the combined teachings of Park and Fihey . . .
provide the claimed switch.” App. Br. 12-13. We are not persuaded by
Appellants’ argument, because the Examiner finds that Park discloses a
support structure “having a switch (11 as shown in fig. 5) configured to
communicate with the controller (10) to switch between selection of the
welding-type process” and “a wire feeder that includes [a] welding selection
switch controller for selecting welding and non-welding process.” Ans. 8
and 15 (citing Park, Abstr.). The Examiner also finds that “the combination
of references Park with Fihey . . . fully meets all the claimed limitations,”
and more particularly, Park discloses that “the process selection switch is
further configured to communicate with the controller to disable the
welding-type process and/or other-type process upon one of a selection of an
off state and a change in the user selection during one of the welding-type
process and other-type process.” Ans. 15 (citing Park, Abstr.).3

3 All references to “Park, Abstr.” are to Derwent’s English Language
Abstract of Park (Korean reference 10-2006-0010586 A, published Feb. 2,
2006), © 2010.
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Appellants also argue that Park’s switch 11 identified by the Examiner
“is merely a tact switch (i.e., a switch that is only ‘on’ when pressed) for a
welding operation,” and “[s]uch a switch is not understood to be ‘configured
to communicate with the controller to switch between selection of the
welding-type process and the gouging-type process,’ as claimed” in claim 2.
App. Br. 13 (citing Park 3).4 We are not persuaded by Appellants’ argument
because Appellants fail to explain why the combination of Park and Fihey
does not disclose the switch as recited in claim 2. More particularly,
Appellants’ characterization of Park’s switch 11 being “a switch that is only
‘on’ when pressed,” does not account for the three different switch states
depicted in Park’s Figure 4. Id.5
Accordingly, we sustain the Examiner’s rejection of claim 2, and
claims 3 and 8 which fall therewith, under 35 U.S.C. § 103(a) as
unpatentable over Park and Fihey.
Claim 10
Claim 10 depends from claim 9 and recites, inter alia, that “the
controller is arranged in the wire feeder.” App. Br., Clms. App’x.
The Examiner finds that Park discloses “controller (10) being
arranged in the wire feeder (20) and being configured to receive selected
operational parameters and control the welding-type power source to deliver
welding-type power based on the selected operational parameters for the

4 All references to “Park” are to 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.
5 Although the Examiner actually refers to switch 11 in Park’s “fig. 5,” we
note that due to improper pagination associated with the English language
machine translation of Park, the drawing figure found on page 9 of the
document is actually “fig. 4,” not “fig. 5.”
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welding-type process (10 as shown in fig. 4).” Ans. 9. The Examiner also
finds that the controller “is arranged within . . . [the] portable wire feeder,”
and “the controller (element 10 as shown in fig. 4) is integrated into [the]
wire feeder as shown in figures 2 and 3 as Park discloses in abstract.” Id. at
16-17; see also Spec. 15, para. [00051].
Appellants argue that “[a]s clearly shown in Fig. [3]6 of Park, the
controller (10) is disposed to a side of the wire feeder (20) and, as such, the
Examiner cannot reasonably argue that the controller (10) is arranged in the
wire feeder (20) as claimed.” App. Br. 13.
We are persuaded by Appellants’ argument because the Examiner’s
finding that the controller 10 is arranged within and integrated into the wire
feeder 20 is not supported by a preponderance of the evidence since Figure 3
on page 8 of the English language machine translation of Park shows control
box 10 and wire feeder 20 being side-by-side.
Accordingly, we do not sustain the Examiner’s rejection of claim 10
under 35 U.S.C. § 103(a) as unpatentable over Park and Fihey.
Claim 15
Claim 15 depends from claim 1 and recites, inter alia, that “the wire
feeder includes a user interface device configured to automatically select
operational voltage and wire feed speed upon selecting a welding wire
diameter.” App. Br., Clms. App’x.

6 As noted previously in Footnote 5 supra, the figure numbers of Park are
incorrect due to improper pagination associated with the English language
machine translation. Thus, although Appellants actually referred to Figure 4
of Park, it appears from the context of the sentence that Appellants meant to
refer to Figure 3.
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The Examiner finds Park discloses that “the wire feeder (20) includes
a device configured to automatically select operational voltage and wire feed
speed upon selecting a welding wire diameter.” Ans. 9 (citing Park, Fig. 5).
The Examiner also finds that
Fihey discloses the user interface (elements 50 and 56 as shown
in fig. 11) that is configured to receive a user-selected welding
wire diameter and the controller (element 52 as shown in fig.
11) is configured to receive the user-selected welding wire
diameter or electrode from the user interface (elements 50 and
56 as shown in fig. 11) and automatically select an operational
voltage for the welding-type process based on the user-selected
welding wire diameter or electrode as Fihey states in column 8,
lines 20-45 because Fihey’[s] user interface monitor the
condition of the electrode and the speed of feed rate in order to
adjust of the parameters settings on the welding power supply.
Ans. 21.
Appellants argue that while Park does disclose a wire feeder, “the Examiner
provides no basis for asserting that the wire feeder is ‘configured to
automatically select operational voltage and wire feed speed upon selecting
a welding wire diameter,’ as claimed.” App. Br. 20. In support of the
argument, Appellants note that Park discloses speed and voltage control
dials 14 and 24, which indicates that “Park seems to advocate manual
intervention and lacks any teaching or suggestion that the apparatus
automatically selects operational voltage and wire feed speed as claimed.”
Id.
We are not persuaded by Appellants’ arguments because Appellants
have failed to address the Examiner’s findings based on Fihey. See In re
Merck & 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
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references individually where the rejections are based on a combination of
references).
Accordingly, we sustain the Examiner’s rejection of claim 15 under
35 U.S.C. § 103(a) as unpatentable over Park and Fihey.
Claims 11, 20, and 21
Appellants argue independent claim 11 and do not separately argue
dependent claims 20 and 21. App . Br. 14-16. We select claim 11 as the
representative claim and claims 20 and 21 fall with claim 11.
Claim 11 is directed to “[a] system,” which includes, inter alia,
“a controller configured to coordinate operation of the welding-type
power source to provide only one of the gouging power and the
welding-type power at a given time.” App. Br., Clms. App’x.
The Examiner finds that Park substantially discloses the subject
matter of claim 11, including a welding-type power source (fig. 4) and a
controller 10, which is “configured to coordinate operation of the welding-
type power source to provide only one of the power and the welding-type
power at a given time.” Ans. 8-9 (citing Park, Abstr.). The Examiner also
finds that “Park fails to teach [a] gouging torch that performs gouging-type
processes,” and turns to Fihey to cure the deficiency of Park by disclosing
“[a] gouging torch (33 as shown in fig. 11) that performs gouging process”.
Ans. 9-10. The Examiner finds that Fihey discloses “a welding-type power
source configured to deliver welding-type power for a welding-type process
and gouging type process” and “a gouging torch configured to receive
operational power from the welding-type power source to perform a
gouging-type process.” Ans. 18.
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We note that at pages 14-16 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.
However, to the extent that Appellants set forth arguments that Fihey
teaches away similar to those discussed supra with respect to the rejection of
claim 1, we are not persuaded by Appellants’ arguments for similar reasons
to those discussed supra with respect to the rejection of claim 1. See App.
Br. 15-16.
Accordingly, we sustain the Examiner’s rejection of independent
claim 11, and claims 20 and 21 which fall therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Park and Fihey.
Claims 12 and 13
Appellants argue claim 12 and do not separately argue claim 13 which
depends therefrom. See App. Br. 12-13. We select claim 12 as the
representative claim and claim 13 falls therewith.
Claim 12 depends from claim 11 and recites, inter alia, that “the
welding-type power source is substantially free of user-interface components
configured to select operational power characteristics.” App. Br., Clms.
App’x.
The Examiner finds that Park discloses a welding-type power source
which is “is free of user-interface devices (12, 13, 14, and 15).” Ans. 8-9
(citing Park, Fig. 4).
We note that at pages 17-18 of the Appeal Brief, Appellants set forth a
summary of arguments made during prosecution; however, this summary is
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historical, is not seen as setting forth current arguments that this panel needs
to consider and will not be addressed.
However, to the extent that Appellants do set forth a current argument
that “Park’s control box 10 is part of the ‘the welding-type power source’
shown in Fig. 4 and includes the alleged ‘user interface devices’ 12, 13, 14,
and 15,” and “[a]s such, the ‘welding-type power source’ shown in Fig. 4
includes and is not free of user interface devices as claimed” (App. Br. 18),
we are not persuaded by Appellants’ arguments because they do not address
the Examiner’s finding that Fihey discloses a welding-type power source 51
which “is free of user interface devices (elements 50 and 56 as shown in fig.
11) configured to select operational parameters.” Ans. 19; see also Merck,
800 F.2d at 1097 and Keller, 642 F.2d at 426 (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 12, and
claim 13 which falls therewith, under 35 U.S.C. § 103(a) as unpatentable
over Park and Fihey.
Claim 14
Claim 14 depends from claim 11 and recites, inter alia, that “the
controller is located remotely from the welding-type power source” and “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 the controller 10 of Park is not “located
remotely from the welding-type power source.” Ans. 9. To cure the
deficiency of Park, the Examiner turns to Fihey to disclose a “controller (52
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as shown in fig. 11) being located remotely from the welding-type power
source (51 as shown in fig. 11).” Ans. 10 and 20.
Appellants argue that the controller 52 in Fihey “is shown as part of
the welding power source 51” and thus, “cannot be considered remote from
the welding power source.” App. Br. 19.
We are persuaded by Appellants’ argument. Fihey’s Figure 11 “is a
block diagram illustrating the entire control system associated with . . .
robotic member 20.” Fihey, col. 8, ll. 21-22. Fihey’s reference numeral 51
depicts a “welding power supply” and reference numeral 52 depicts “a
master/slave arrangement of circuits.” Fihey, col. 8, ll. 32 and 36-37. Since
Fihey’s Figure 11 appears to depict that welding power source 51 has an
associated slave circuit 52, a person of ordinary skill in the art would find it
unreasonable to equate the depiction of the controller (slave circuit 52) in
Figure 11 of Fihey, as relied upon by the Examiner, with the “located
remotely” requirement of claim 14.
Accordingly, we do not sustain the Examiner’s rejection of claim 14
under 35 U.S.C. § 103(a) as unpatentable over Park and Fihey.
Claim 16
Claim 16 depends from claim 11 and recites “a support structure
supporting the wire feeder and having a switch configured to communicate
with the controller switch between the delivery of welding-type power and
the delivery of gouging power.” App. Br., Clms. App’x.
The Examiner finds that Park discloses a support structure “having a
switch (11 as shown in fig. 5) configured to communicate with the controller
(10) to switch between the delivery of welding-type power and the delivery
of power.” Ans. 9 (citing Park, Abstr.). The Examiner also finds that Fihey
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discloses “a welding-type power source configured to deliver welding-type
power for a welding-type process.” Ans. 23.
Appellants present the same arguments as discussed supra with
respect to the rejection of claim 2, and for the same reasons as discussed
supra with respect to the rejection of claim 2, we sustain the Examiner’s
rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over Park
and Fihey.

Rejection VI - Obviousness based on Park, Fihey, and Saylor
For the rejection of claims 4, 5, 7, 18, and 19, Appellants rely on the
arguments previously advanced with respect to claims 1 and 11. App. Br.
21-22. Since we were not persuaded by Appellants’ arguments for the
reasons discussed supra with respect to the rejections of claims 1 and 11, we
sustain the Examiner’s rejection of claims 4, 5, 7, 18, and 19 under
35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Saylor.

Rejection VII - Obviousness based on Park, Fihey, and Enyedy
For claim 6, Appellants rely on the arguments previously advanced
with respect to claim 1 on which claim 6 indirectly depends. App. Br. 22.
Since we were not persuaded by Appellants’ arguments for the reasons
discussed supra with respect to the rejection of claim 1, we sustain the
Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Park, Fihey, and Enyedy.

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Rejection VIII - Obviousness based on Park, Fihey, and Jones
Claim 17 depends from claim 11 and recites, inter alia, “a welding
cable . . . ; at least one of a wheeled cart and a rotatable bar mounting
supporting the wire feeder; and as strain protection system extending from
the at least one of the wheeled cart and the rotatable bar mounting.” App.
Br., Clms. App’x.
The Examiner finds that Park discloses a wheeled cart 300 and a
rotatable bar 200C, but does not disclose either a welding cable or a strain
protection system. Ans. 12. To cure the deficiencies of Park, the Examiner
relies upon Jones to disclose a “welding cable (col. 5, lines 55-60), [and] a
strain protection system (122 as shown in fig. 9B).” Id. (citing Jones, col. 2,
ll. 35-42).
Appellants argue that the strain relief 122 of Jones “simply connects
to a welding torch supply cable adapter 74 (Fig. 9A) and surrounds a
welding cable assembly 120 (Fig. 9B, column 7, lines 11-12).” App. Br. 24.
Thus, according to Appellants, “[t]he strain relief 122 [of Jones] is not
described as connecting to a wire feeder in a way that would protect the wire
feeder against forces applied to the cable as claimed.” Id.
We are not persuaded by Appellants’ argument because it is not
commensurate with the scope of claim 17. Claim 17 does not require that
the strain protection system “connect[] to a wire feeder in a way that would
protect the wire feeder against forces applied to the cable as claimed,” as
asserted by Appellants. Id.; see In re Self, 671 F.2d 1344, 1349 (CCPA
1982) (It is well established that limitations not appearing in the claims
cannot be relied upon for patentability). Furthermore, we are also not
persuaded by Appellants’ argument that “the other references of record
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cannot be combined with Jones . . . in any meaningful manner to serve as a
basis for rejecting claim 17,” because Appellants do not cogently explain
why Park and Fihey cannot be combined with Jones. App. Br. 24.
Appellants also argue that the Examiner’s rejection of claim 17 based
upon the combination of Park, Fihey, and Jones is improper “because at least
Finding (1) cannot be made with respect to” these prior art documents. See
App. Br. 23. Thus, Appellants appear to presume that the Examiner’s
rejection of claim 17 is based on exemplary rationale (A), entitled
“Combining Prior Art Elements According to Known Methods To Yield
Predictable Results,” to support the conclusion of obviousness. However,
Appellants’ argument is unpersuasive with respect to claim 17, 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 claim 17 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 Jones 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 none of Park,
Fihey, and Jones, taken alone or in combination, teach or suggest the subject
matter of claim 17 (see App. Br. 23), 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
claim 17 would not have been obvious. Thus, Appellants’ arguments do not
Appeal 2012-004042
Application 12/035,751

19
constitute a separate argument for the patentability of claim 17. See Lovin,
652 F.3d at 1357.
Accordingly, we sustain the Examiner’s rejection of claim 17 under
35 U.S.C. § 103(a) as unpatentable over Park, Fihey, and Jones.

DECISION
We summarily affirm the Examiner’s rejections of claims 1-21 on the
grounds of the judicially created doctrine of obviousness-type double
patenting.
We affirm the Examiner’s rejections, under 35 U.S.C. § 103(a), of:
claims 1-3, 8, 9, 11-13, 15, 16, 20, and 21 as unpatentable over Park and
Fihey; claims 4, 5, 7, 18, and 19 as unpatentable over Park, Fihey, and
Saylor; claim 6 as unpatentable over Park, Fihey, and Enyedy; and claim 17
as unpatentable over Park, Fihey, and Jones.
We reverse the Examiner’s rejection of claims 10 and 14 under 35
U.S.C. § 103(a) as unpatentable over Park and Fihey.
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

rvb