Ex Parte Fisher et al

Patent Trial and Appeal Board

Feb 8, 2017

13943468 (P.T.A.B. Feb. 8, 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.
13/943,468 07/16/2013 Kenneth Allen Fisher 61298-A (ITWO:0603-1) 4812
52145 7590 02/10/2017
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
MAYE, AYUB A
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
docket@fyiplaw.com
sinclair@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH ALLEN FISHER, MARIO ANTHONY AMATA,
STEVEN EDWARD BARHORST, and JOSEPH C. BUNDY
Appeal 2015-0051751
Application 13/943,4682
Technology Center 3700
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 from the rejection of claims
1—13 and 21—23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Oct.
16, 2014) and Reply Brief (“Reply Br.,” filed Apr. 10, 2015), and the
Examiner’s Answer (“Ans.,” mailed Feb. 11, 2015) and Final Office Action
(“Final Act.,” mailed May 21, 2014).
2 According to Appellants, the real party in interest is Illinois Tool Works
Inc. Appeal Br. 2.
Appeal 2015-005175
Application 13/943,468
BACKGROUND
According to Appellants, the Specification “relates generally to
welding, and more specifically, to submerged arc welding (SAW).”
Spec. 12.
CLAIMS
Claims 1—13 and 21—23 are on appeal. Claim 1 is illustrative of the
appealed claims and recites:
1. A welding system, comprising:
a gas supply system configured to provide a gas flow;
a wire supply system configured to provide welding wire;
a flux supply system configured to provide flux near a
welding arc during submerged arc welding (SAW); and
a welding torch assembly configured to receive the gas
flow and the welding wire and to deliver the gas flow and the
welding wire near the welding arc during the SAW.
Appeal Br. 24.
REJECTIONS
1. The Examiner rejects claims 1—13 and 21—23 provisionally under
35 U.S.C. § 101 as claiming the same invention as claims 1—9 and
16—20 ofU.S. Application No. 13/943,505.
2. The Examiner rejects claims 1—13 provisionally under 35 U.S.C.
§ 101 as claiming the same invention as claims 1—20 ofU.S.
Application No. 13/431,863.
3. The Examiner rejects claims 1—8 under 35 U.S.C. § 102(b) as
anticipated by Wilson.3
3 Wilson et al., US 2,948,803, iss. Aug. 9, 1960.
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Application 13/943,468
4. The Examiner rejects claims 9—13 and 21—23 under 35 U.S.C.
§ 103(a) as unpatentable over Wilson in view of Hammen.4
DISCUSSION
Double Patenting
In rejecting the claims under 35 U.S.C. § 101, the Examiner states that
the rejected claims are directed to the same invention as certain claims in
two co-pending applications without further explanation. Final Act. 2.
According to the MPEP:
Where the claims of an application are the same as those of a
first patent, they are barred under 35 U.S.C. 101 - the statutory
basis for a double patenting rejection. A rejection based on
double patenting of the “same invention” finds its support in the
language of 35 U.S.C. 101 which states that “whoever invents
or discovers any new and useful process . . . may obtain a
patent therefor . . .” (emphasis added). Thus, the term “same
invention,” in this context, means an invention drawn to
identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186
(1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA
1957).
MPEP 804(11).
Without further explanation from the Examiner, we agree with
Appellants that the Examiner has not established that the claims in the
present application and the co-pending applications are drawn to identical
subject matter. Specifically, Appellants have identified differences in the
claims that indicate the claims do not cover identical subject matter. See
Appeal Br. 19-22. Accordingly, we do not sustain the double patenting
rejections of claims 1—13 and 21—23.
4 Hammen, US 2007/0056945 Al, pub. Mar. 15, 2007.
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Application 13/943,468
Anticipation
With respect to claim 1, the Examiner finds that Wilson discloses a
welding system as claimed including, inter alia, a flux supply system as
claimed. Final Act. 3, 7 (citing Wilson col. 1,11. 25—68; col. 2,11. 1—68).
More particularly with respect to the flux supply system, the Examiner finds:
Wilson discloses that magnetic material is incorporated in a
flux mixture which is fed to and attracted by a continuous
consumable electrode, and in this practice although the flux and
alloy addition mixture may be partially aided in the protection
of the weld metal by a shielding gas, the flux additions impose
the same general limitations as when similar mixtures are used
for coated electrode or submerged melt welding, as Wilson
disclose in column 2.
Final Act. 7; see also Ans. 7 (further relying on Wilson col. 4). Further, in
response to Appellants’ arguments, the Examiner finds that the terminology
“configured to” in the claim is functional language and indicates that Wilson
“has the structure and the controllability to perform the operation” claimed.
Ans. 7.
We are persuaded by Appellants’ argument that the Examiner has
failed to show that Wilson discloses a flux supply system as claimed. See
Appeal Br. 6—7. Although, the Examiner appears to indicate that Wilson is
capable of meeting the functional language of the claim, the Examiner does
not provide any evidence or an adequate explanation to support such a
finding. As noted by Appellants, Wilson specifically indicates that “[i]t is a
requisite of the process of the present invention that the powdered alloying
mixture is free of substantial amounts of fluxing agents.” Wilson col. 3,11.
34—36. Further, we agree with Appellants that the Examiner cites
background portions of Wilson discussing the use of flux or fluxing agents
as support for the Examiner findings. See Appeal Br. 8—9. We agree with
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Application 13/943,468
Appellants that those portions of Wilson teach “the deficiencies of other
welding methods to aid the reader in understanding why Wilson’s disclosed
method does not include or utilize flux.” Id. at 8. Wilson discusses several
known methods using flux or fluxing agents and explains the disadvantages
of such methods, and thus we find that Wilson repeatedly disparages the use
of methods requiring flux or fluxing agents. See Wilson col. 1,1. 45 — col. 2,
1. 15.
Based on the foregoing, we do not sustain the rejection of independent
claim 1 as anticipated by Wilson. For the same reasons, we do not sustain
the rejection of dependent claims 28.
Obviousness
With respect to independent claim 9, the Examiner finds that Wilson
discloses all the limitations of the claim except that Wilson does not disclose
a plurality of gas conduits, for which the Examiner relies on Hammen. Final
Act. 5—6. Claim 9 recites, inter alia, “a flux delivery component configured
to deliver granular flux near the welding arc.” Appeal Br. 25. We agree
with Appellants that the Examiner has failed to show that the art of record
discloses or otherwise renders obvious the flux delivery component. See
Appeal Br. 16. As discussed above, the Examiner has not established that
Wilson discloses a flux supply system, and for the same reasons, we find
that the Examiner has not established that Wilson discloses a flux delivery
component. Further, the Examiner does not rely on Hammen to cure this
deficiency.
For these reasons, we do not sustain the rejection of claim 9 as
obvious. For the same reasons, we do not sustain the rejection of dependent
claims 10—13 and 21—23.
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Application 13/943,468
CONCLUSION
For the reasons discussed above, we find as follows.
We reverse the provisional rejection of claims 1—13 and 21—23 under
35 U.S.C. § 101 as claiming the same invention as claims 1—9 and 16—20 of
U.S. Application No. 13/943,505.
We reverse the provisional rejection of claims 1—13 under 35 U.S.C. §
101 as claiming the same invention as claims 1—20 of U.S. Application No.
13/431,863.
We reverse the rejection of claims 1—8 under 35 U.S.C. § 102(b) as
anticipated by Wilson.
We reverse the rejection of claims 9-13 and 21—23 under 35 U.S.C. §
103(a) as unpatentable over Wilson in view of Hammen.
REVERSED
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