Ex Parte Jochman

Patent Trial and Appeal Board

Mar 21, 2016

12500032 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/500,032 0710912009 Nathan Joe Jochman
52145 7590 03/22/2016
FLETCHER YODER (ILLINOIS TOOL WORKS INC)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
22150/YOD (ITW0:0270) 1552
EXAMINER
DANG,KETD
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
03/22/2016 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 NATHAN JOE JOCHMAN
Appeal2014-003216
Application 12/500,032
Technology Center 3700
Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
ST,A,TE1\1ENT OF THE CA •. SE
Nathan Joe Jochman (Appellant) 2 seeks our review under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-14, 21, 22, and
24-27. 3 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appellant's invention is directed to welding devices, and more
particularly, to improved air flow systems for a welder-generator. Claims 1,
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
Sept. 12, 2013), Reply Brief ("Reply Br.," filed Jan. 15, 2014), and the
Examiner's Answer ("Ans.," mailed Nov. 18, 2013).
2 Appellant identifies the real party in interest as Illinois Tool Works Inc.
App. Br. 2.
3 Claims 15-20 are withdrawn from consideration. Id.
Appeal2014-003216
Application 12/500,032
8, and 21 are the independent claims on appeal. Independent claim 1 is
illustrative of the subject matter on appeal (App. Br. 17, Claims Appendix).
1. A welder-generator system comprising:
a welding device comprising:
an engine with a first side and a second side, wherein a
fan is integral with the first side;
a generator;
a muffler;
weld components; and
an airflow path established through the welder-generator
system such that when the fan generates airflow it flows from a
front of the welding device to the weld components, to the
generator, to the engine, to the muffler and out a back of the
welding device in the recited order.
REJECTIONS4
Claims 1-5, 21, 22, and 24 are rejected as unpatentable under 35
U.S.C. § 103(a) over Latvis5 and Turner. 6 Ans. 2--4.
Claims 6 and 7 are rejected as unpatentable under 35 U.S.C. § 103(a)
over Latvis, Turner, and Bender. 7 Id. at 4-5.
Claims 8-12, 14, and 25-27 are rejected as unpatentable under 35
U.S.C. § 103(a) over Latvis, Turner, and Lau. 8 Id. at 5-7.
Claim 13 is rejected as unpatentable under 35 U.S.C. § 103(a) over
Latvis, Turner, Lau, and Bender. Id. at 7.
4 The rejection under 35 U.S.C. § 112, first paragraph, is withdrawn. Ans. 8.
5 Latvis et al., US 5,624,589, issued April 29, 1997.
6 Turner et al., US 6,784,574 B2, issued August 31, 2004.
7 Bender et al., US 2006/0043083 Al, published March 2, 2006.
8 Lau et al., US 5,440,450, issued August 8, 1995.
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Appeal2014-003216
Application 12/500,032
ANALYSIS
Claims 1-14
Independent claim 1 requires, inter alia, "an engine with a first side
and a second side, wherein a fan is integral with the first side." See supra.
Appellant disputes the Examiner's finding that "a fan inside the generator
(26)" as depicted in Figure 3 of Latvis corresponds to "a fan integral with
the first side" (see Ans. 2) because "Latvis does not teach or suggest an
'airflow path' established by a 'fan' integral with an engine as called for by
independent claim l ." App. Br. 11. In particular, Appellant argues:
The path 36 of Latvis divides into sub-path 36~36a~36c and
sub-path 36~36b~36c. However, neither of these paths is
established by a ''fan [that] is integral with the first side" of the
engine, as recited by independent claim 1. Instead, the airflow
paths originating from the second path 3 6 of Latvis are
generated by a fan inside the generator. See Latvis, column 5,
lines 38-39. This fan inside the generator establishes path
36~36a~36c that flows through the front of the unit, into the
electrical compartment, and through slots in the barrel of the
generator, before joining path 36~36b~36c, flowing over the
engine, and exiting the unit. See Latvis, column 5, lines 30-52.
Accordingly, the airflow path 36 is not established by a fan
integral with the first side of the engine.
Id.; see also Reply Br. 2-3.
In response to Appellant's arguments, the Examiner asserts that "the
generator (26) is located in the first half side (or the first half front side) of
the welding machine [with] a fan inside the generator (col. 5, lines 38-40).
Therefore, it fully meets claimed limitation, i.e. ' ... , wherein a fan is
integral with the first side[.]"' Ans. 10.
We are persuaded by Appellant's arguments because the Examiner's
interpretation of claim 1 is inconsistent with the plain language of the claim
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Application 12/500,032
and the Specification. "[T]he words of a claim are generally given their
ordinary and customary meaning."9 The term "integral" is defined as "of or
belonging as an essential part of the whole; necessary to completeness;
constituent: an integral part."10 Thus, "an engine with a first side ... wherein
a fan is integral with the first side" requires the fan to belong as an essential
part of the engine or a constituent part or component of the first side of the
engine. In other words, the ordinary and customary meaning of the claim
language requires a fan to serve as a part of the engine. Moreover, "the first
side" as recited in the claim, provides antecedent basis to reference "an
engine with a first side," rather than a welding device with a first side, as
interpreted by the Examiner. Therefore, the Examiner's interpretation that a
fan serving as part of and inside generator 26 located on the first half side of
the welding machine as disclosed by Latvis cannot correspond to a fan
integral with the first side of the engine.
Furthermore, Appellant cites "fan 40" as depicted in Figure 2 and
described in paragraph 18 of the Specification in support of the limitation
"an engine with a first and second side, wherein a fan is integral with the
first side." See App. Br. 3. Figure 2 shows fan 40 inside engine 34 and the
Specification discloses:
The engine 34 also includes a fan 40 that is configured to
cool the electrical components 30, the generator 32, the engine
34 and the muffler 36 in the stated order. Accordingly, the fan
40 establishes an airflow path, as represented by arrows 42,
through the internal components of the welder-generator 26.
That is, the single fan 40 located in the engine 34 cools internal
9 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane)
(internal citations omitted).
10 http://www.thefreedictionary.com/integral (last visited March 16, 2016).
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Appeal2014-003216
Application 12/500,032
components such that components with low critical operating
temperatures (e.g., weld components 30) experience the coolest
air and components with high critical operating temperatures
(e.g., the muffler 36) experience the hottest air.
Spec. iJ 18 (emphasis added). Thus, the Specification further supports
Appellant's position. We conclude that the Examiner's interpretation of this
disputed limitation is inconsistent with the language of the claim and
Appellant's disclosure. Therefore, a prima facie case of obviousness has not
been established in the first instance because Latvis fails to disclose "an
engine with a first side ... wherein a fan is integral with the first side" as
required by claim 1.
Accordingly, we do not sustain the rejection of independent claim 1,
and independent claim 8, which recites a substantially similar limitation ("an
engine with a first side and a second side, wherein a first fan is integral with
the first side") 11 and is rejected based on the same findings with respect to
Latvis as in claim 1. See Ans. 5. The Examiner does not rely on Turner,
Lau, and Bender to remedy the deficiency in Latvis. Thus, for the same
reasons, we do not sustain the rejections of dependent claims 2-7 and 9-14.
Claims 21, 22, and 24-27
Independent claim 21 recites, inter alia,
a first air circulation device configured to establish a first
airflow path to the weld components and to the engine in the
recited order; and
a second air circulation device configured to establish a
second airflow path through the generator, wherein the first
airflow path and the second airflow path combine to form a
third airflow path that flows through a mujjler and out of the
enclosure in the recited order.
11 See App. Br. 18, Claims App.
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Application 12/500,032
App. Br. 19, Claims App (emphasis added).
In rejecting claim 21, the Examiner acknowledges that Latvis does not
disclose "wherein the first airflow path and the second airflow path combine
to form a third airflow path that flows through a muffler and out of the
enclosure in the recited order" and instead relies on Turner to remedy this
deficiency. Ans. 3--4. The Examiner asserts that Turner "for example,
teaches the combined air is mixed that flows around the muffler (74).
Turner [] further teaches such a configuration provides a means to cool the
exhaust of engine (col. 5, line 57)." Id. at 4. Thus, the Examiner concludes
that "[i]t would have been obvious to one of ordinary skill in the art to
modify Latvis et al. with the features above of Turner et al. in order to cool
the exhaust of engine." Id.
Appellant argues against the proposed modification because "Latvis
teaches away from combining airflow paths 33 and 36, as the segregation of
the airflow paths achieves the desired benefits in Latvis." App. Br. 9. In
particular, Appellant asserts:
Id.
Latvis explicitly teaches that though the two paths 33 and 36
cross over one another, they remain separate paths since "[t]he
two paths do not mix within the machine." See Latvis, column
2, lines 3 5-3 6 (emphasis added). Latvis further explains that the
"air flows in two discrete paths for the full length of the
welding machine." See id. at col. 2, lines 34-35 (emphasis
added). In view of these explicit teachings of Latvis and the
arguments presented above, the appellant maintains the position
that Latvis teaches away from combining air flow paths in any
manner, and the combination of Latvis and Turner is improper.
The "Examiner disagrees with the argument because the airflow paths
ofLatvis do cross over one another at some point (col. 2, lines 35-37). With
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Application 12/500,032
that being said, Latvis' s airflow paths are capable of being modified of
airflow inside the internal components of the welding machine to converge
airflow paths." Ans. 9.
Upon reviewing the record, we are persuaded by Appellant's
arguments. Importantly, the Examiner's response to Appellant's teaching
away argument fails to adequately address the excerpts cited by Appellant in
support thereof. A reference "teach[ es] away when a person of ordinary
skill, upon reading the reference, would be led in a direction divergent from
the path that was taken by the applicant."12 "'When a [reference] suggests
that the line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant, the
[reference] is said to 'teach away' from the claimed invention. "'13 A prior
art reference must be considered in its entirety, that is, as a whole, including
portions that would lead away from the claimed invention. 14
In the present case, one of ordinary skill in the art, upon reading
Latvis, would not be led to modify Latvis' s segregated cooling air flow paths
to include Turner's combined mixed air flow arrangement. Notably, as
pointed out by Appellant, the sentence the Examiner relies upon in Latvis in
support of the modification (see supra) actually states in full that "[t]he two
paths do not mix within the machine, although they do cross over one
another within the engine compartment." Latvis 2:35-37 (emphasis added).
Latvis thus explicitly specifies that "the two paths do not mix," rather than
combining a first air flow path with a second air flow path to form a third
12 In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (citation omitted).
13 Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
14 W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721F.2d1540, 1550 (Fed. Cir.
1983).
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Application 12/500,032
mixed air flow path as claimed. Latvis even touts the advantage of separated
or segregated cooling air flow, wherein "air flows in two discrete paths for
the full length of the welding machine." Id. at 2:34-35. Latvis specifically
discloses:
In accordance with the present invention, a segregated
cooling air flow is provided that effectively and quietly cools
engine driven welding machines. This is accomplished by
apparatus that directs cooling air along two separate paths with
each path flowing over both the engine and the electrical
components.
Latvis 1 :57-62.
The method and apparatus of the invention, using
segregated cooling air flows, thus cools and quiets the engine
and electrical components of an engine driven welding machine
in an efficient manner.
Latvis 2:47-50. Thus, the Examiner does not explain how one skilled in the
art, after reviewing Latvis, would not be led away from modifying Latvis, as
the proposed modification would specifically preclude segregated cooling
air flow.
For the foregoing reasons, we do not sustain the rejection of
independent claim 21 as obvious over Latvis and Taylor. For the same
reasons, we do not sustain the rejection of claims 22 and 24-27 dependent
thereon.
DECISION
The rejections of claims 1-14, 21, 22, and 24-27 under 35 U.S.C.
§ 103 are reversed.
REVERSED
8