Ex Parte Leisner et al

Board of Patent Appeals and Interferences

Aug 28, 2009

11511025 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN C. LEISNER and DANIEL C. FOSBINDER
____________

Appeal 2009-004729
Application 11/511,025
Technology Center 3700
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Decided: August 28, 2009
____________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004729
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STATEMENT OF THE CASE
John C. Leisner et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-3, 6-9, 11-14, and 19-21. Claims
4, 5, 10, and 15-18 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention is drawn toward a low-fuel shut-off for a diesel
engine that operates an engine-driven welder, including a controller 36 that
provides a signal to a valve 40 when the fuel supply falls below a desired
level such as to disable the engine. Spec. 1, ¶ [0001]; Spec. 4, ¶ [0015]; and
fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A portable engine-driven welder, comprising:

an electric generator;

an engine coupled to the generator to drive the generator to
produce electric power;

a fuel supply tank for storing fuel for the engine;

a fuel sensor for detecting a level of fuel in the fuel tank; and

a controller coupled to the engine for controlling operation of
the engine and to the fuel sensor, the controller receiving
signals from the sensor indicative of fuel level in the fuel tank
and disabling the engine if the fuel level drops below a desired
level; and

an audible alarm coupled to the controller for providing notice
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to a user prior to disabling the engine, the alarm configured to
alert the user welding at a location remote from the engine and
generator.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pagane US 4,292,620 Sep. 29, 1981
Havemann US 4,960,088 Oct. 2, 1990
Keller US 6,502,461 B2 Jan. 7, 2003
Stava US 6,924,460 B1 Aug. 2, 2005

The following rejections are before us for review:
The Examiner rejected claims 1-3, 6, 9, 11-12, 14, and 19 under 35
U.S.C. § 103(a) as unpatentable over Stava, Havemann, and Pagane.
The Examiner rejected claims 7, 8, 13, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Stava, Havemann, Pagane and Keller.
The Examiner rejected claims 14 and 19-21 under 35 U.S.C. § 103(a)
as unpatentable over Stava and Pagane

THE ISSUES
1. Have Appellants shown that the Examiner erred in determining that
the combined teachings of Stava, Havemann, and Pagane disclose an audible
alarm: (a) for providing notice to a user prior to disabling the engine and (b)
that notifies the user at a location remote from the engine and generator?
2. Have Appellants shown that the Examiner has not provided a
reasoning with rational underpinning for combining the teachings of Stava,
Havemann, and Pagane?
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3. Have Appellants shown that the teachings of Havemann and Pagane
constitute non-analogous art?

SUMMARY OF DECISION
We AFFIRM.

FINDINGS OF FACT

The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Stava discloses a gas-shielded welder including an electric arc
welder 10, a welding head 30, a shielding gas cylinder 90, a
consumable electrode 50, a welding nozzle 40, and a fuel
powered diesel engine 110 for powering an electric generator
100. Stava, col. 7, ll. 38-40, 49-53, 58-60, and 63-65 and fig. 1.
2. Stava does not disclose disabling the diesel engine when the
fuel level drops below a preset value, nor an audible alarm for
providing notice to a user of the low fuel level prior to disabling
the diesel engine. Ans. 4.
3. Havemann discloses a low fuel shut-off system for a diesel
engine for shutting down the engine when the fuel level drops
below a predetermined level in order to prevent air from
entering the injection system. Havemann, Abstract and col. 1,
ll. 24-29.
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4. The system of Havemann further includes a warning light 86
that informs the operator of a low fuel condition. Havemann,
col. 1, ll. 48-50 and col. 4, l. 20. When a low fuel condition is
sensed the warning light 86 is energized and 30-60 seconds
later the engine is shut down. Havemann, col. 4, ll. 34-41.
5. Stava and Havemann do not disclose an audible alarm.
6. Pagane discloses a fuel level monitoring system that shuts down
the engine of a vehicle or boiler when the fuel in the tank
reaches a predetermined low level. Pagane, col. 2, ll. 34-38.
7. When the device of Pagane senses a low fuel condition, a time
delay circuit 56 is activated and a pulsating warning signal is
provided to an audible alarm 73 and a visual indicator 72. After
the predetermined time delay has passed, the pulsating warning
signal to the audible alarm 73 and the visual indicator 72 is
changed to a constant signal, deactivates the ignition system of
the engine, and activates optional external alarms 76 to indicate
to the operator that the engine cannot be restarted without
adding more fuel. Pagane, col. 5, ll. 1-20.
8. Pagane further discloses that in devices that sense the fuel level
in a tank, it is known to provide both visual and audible
warning signals to indicate a low fuel level. Pagane, col. 1, ll.
26-32.

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PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")
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The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 417-418. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.")

OPINION
Appellants present essentially identical arguments with respect to the
rejection of claims 1, 9, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Stava, Havemann, and Pagane. See App. Br. 11-21. As such, the
following analysis applies equally to claims 1, 9, and 14 rejected over the
combined teachings of Stava, Havemann, and Pagane.
Issue (1)(a)
Appellants argue that the combined teachings of the references do not
teach all aspects of the claim. Specifically, Appellants contend that:
The cited references, taken alone or in
hypothetical combination, fail to teach or suggest
an audible alarm for providing notice to a user
prior to disabling the engine and configured to
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notify a user at a location remote from the engine
and generator.
App. Br. 11.
With respect to the teachings of Havemann, Appellants argue that the
shutdown process in the system of Havemann “begins concurrently with the
warning light 86, rather than first providing notice to the user.” Id. Pointing
to col. 8, ll. 29-41 of Havemann, the Examiner responds that although the
visual warning and shutoff procedures in Havemann are “simultaneously or
concurrently engaged,” Havemann also discloses that “there is a delay
between when the shutoff procedure is initiated and when the engine is
actually shut off.” Ans. 10. Appellants counter that the claim term
“disable” should be construed as “a reduced capacity to perform intended
functions.” Reply Br. 3. Hence, according to Appellants, the initiation of
the shutdown procedure in Havemann (when the warning light 86 is
energized) reduces the capacity of the engine and thus disables the engine
before and not after notice to the user. Id.
We disagree with Appellants’ construction of the term “disable.” As
noted above, claims are to be given their broadest reasonable interpretation
consistent with the Specification. In this case, the Specification describes
“disabling” the engine by closing a fuel supply valve. Spec. 4, ¶ [0015]. A
person of ordinary skill in the art would have readily appreciated that,
without fuel, an engine would completely stall and not merely run at a
reduced capacity, as Appellants suggest. Therefore, we agree with the
Examiner that the broadest reasonable interpretation consistent with the
Specification of the limitation “disabling the engine” is the “actual shutting
off of the engine.” Ans. 10. As such, we find that when a low fuel condition
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is sensed in the system of Havemann the warning light 86 is energized and
30-60 seconds later the engine is shut down (disabled). FF 4. Hence,
Havemann teaches providing notice to a user (energizing the warning light
86) prior to “disabling the engine” (shut down of the engine).

Issue (1)(b)
Appellants argue that the internal audible alarm 73 of Pagane is used
to notify a user in the immediate location of the alarm and is not capable of
alerting a user at a “remote” location, as required by claim 1. App. Br. 12-
13. See also Reply Br. 3. In response, the Examiner takes the position that
Appellants have not set forth any ranges or parameters that define the
boundary of the term “remote.” Ans. 15. As noted above, claims are to be
given their broadest reasonable interpretation consistent with the
Specification. In this case, the Specification states that:
…the operator is at a location remote from the unit
and is not in a position to continually monitor the
maintenance display.
Spec. 3-4, ¶ [0012]. Emphasis added.
As such, we agree with the Examiner that the term “remote”
encompasses any location outside the visual field of the Appellants’ welding
unit (limited by the length of the welding cables) and up to the immediate
vicinity of the welding unit, as long as the operator cannot “continually
monitor” the unit. Ans. 15. Furthermore, Pagane discloses internal audible
alarm 73 and also optional external alarms 76 that are activated to indicate to
the operator that the engine cannot be restarted without adding more fuel.
FF 7. We find Appellants’ contention that the internal audible alarm 73 of
Pagane is not capable of alerting a user at a “remote” location to be
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speculative. A person of ordinary skill in the art would have readily
recognized that the purpose of a device having an audible alarm is to provide
notice to a user of an emergency when the user is not in the visual field of
the device or is not monitoring the device.1 What a reference teaches a
person of ordinary skill is not limited to what a reference specifically “talks
about” or what is specifically “mentioned” or “written” in the reference.
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
In order for the audible alarms of Pagane to function as warning signals for a
unit, the audible alarms of Pagane should be capable of alerting a user at a
“remote” location, namely, any location outside the visual field of the unit
and up to the immediate vicinity of the unit, when the operator is not
monitoring the unit.
Hence, in contrast to the Appellants’ position, we find that Pagane
discloses an audible alarm that notifies the user at a location remote from the
engine.

Issue (2)
Appellants argue that the Examiner has not provided a rationale for
combining the teachings of Stava, Havemann, and Pagane. Reply Br. 5. See
also App. Br. 13. As noted above, Stava discloses a gas-shielded welder
including a fuel powered diesel engine 110 for powering an electric
generator 100. FF 1. However, Stava does not disclose disabling the diesel
engine when the fuel level drops below a preset value nor an audible alarm

1 For example, in the medical field, the devices that monitor the blood
pressure, the heart rate, the oxygen level, etc. include audible alarms to alert
the medical personnel of an immediate danger to the patients’ well-being.

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for providing notice to a user of the low fuel level prior to disabling the
diesel engine. FF 2. Havemann discloses a low fuel shut-off system for a
diesel engine for shutting down the engine when the fuel level drops below a
predetermined level such that air is prevented from entering the injection
system. FF 3. Havemann further discloses a warning light 86 that is
energized when the fuel level drops below a predetermined level and 30-60
seconds (predetermined time) before the engine is shut down. FF 4.
According to the Examiner it would have been obvious to a person of
ordinary skill in the art to provide the diesel engine of Stava with the low-
fuel shut-off system of Havemann in order to prevent air from entering the
fuel system of Stava’s diesel engine. Ans. 4-5. Accordingly, Havemann
would have prompted a person of ordinary skill in the art to provide the low-
fuel shut-off system of Havemann to the diesel engine of Stava in order to
prevent air from entering the fuel system of Stava’s diesel engine.
Furthermore, although Havemann discloses a warning light to indicate a low
fuel level, neither Stava nor Havemann discloses an audible alarm. FF 4 and
5.
Pagane discloses a fuel level monitoring system that shuts down the
engine of a unit (vehicle or boiler) when the fuel in the tank reaches a
predetermined low level. FF 6. When the device of Pagane senses a low
fuel condition a pulsating warning signal is provided to an audible alarm 73
and a visual indicator 72 (warning light) for a predetermined time. After the
predetermined time has passed, the pulsating warning signal to the audible
alarm 73 and the visual indicator 72 is changed to a constant signal, the
ignition system of the engine is deactivated (engine is disabled), and
optional external alarms 76 are activated to indicate to the operator that the
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engine cannot be restarted without adding more fuel. FF 7. Finally, Pagane
specifically discloses that in devices that sense the fuel level in a tank, it is
known to provide both visual and audible warning signals to indicate a low
fuel level. FF 8.
The Examiner concluded that it would have been obvious to a person
of ordinary skill in the art to add an audible alarm as taught by Pagane to the
welder of Stava and Havemann in order to provide an additional warning
signal to alert the operator. Ans. 6. Accordingly, we find that Pagane would
have prompted a person of ordinary skill in the art to provide the audible
alarm of Pagane to the diesel engine of Stava and Havemann in order to
provide an additional warning signal to alert the operator. Thus, we find that
the Examiner articulated a reasoning with rational underpinning to support
the conclusion that providing the low-fuel shut-off system of Havemann and
the audible alarm of Pagane to the welding diesel engine of Stava would
have been obvious.

Issue (3)
Appellants argue that Havemann and Pagane are non-analogous art
because they do not satisfy the two-step Bott test as set out by the Court in
Union Carbide Corp. v. American Can Co., 724 F.2d 1567 (Fed.Cir.1984). 2
Reply Br. 5. Appellants contend that neither Havemann nor Pagane is in the
field of Appellants’ endeavor, which is that of “monitoring the fuel level of a

2 In Union Carbide, the court found that the first determination was
whether “the reference is within the field of the inventor’s endeavor.” If it is
not, one must proceed to the second step “to determine whether the reference
is reasonably pertinent to the particular problem with which the inventor was
involved.” Reply Br. 5-6.
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welding system engine.” Reply Br. 7. According to Appellants, Havemann
relates to a fuel system for a vehicle (truck or trailer) diesel engine and
Pagane relates to a fuel level control and theft inhibiting device for a vehicle
engine. Reply Br. 6. We disagree with this description. Appellants’ general
field of endeavor is that of a fuel monitoring system that shuts down an
engine when the fuel level drops below a desired level, i.e., low-fuel shut-off
system. Havemann discloses a low fuel shut-off system for a diesel engine
for shutting down the engine when the fuel level drops below a
predetermined level in order to prevent air from entering the injection
system. FF 3. Pagane discloses a fuel level monitoring system that shuts
down the engine of a unit (vehicle or boiler) when the fuel in the tank
reaches a predetermined low level. FF 6. Therefore, both Havemann and
Pagane teach shutting down an engine when the level of fuel in the engine’s
tank reaches a predetermined low level. As such, we find that Havemann
and Pagane are analogous art under the analogous art test alluded to by
Appellants.
Moreover, “[u]nder the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). That is, both
Havemann and Pagane address a problem addressed by Appellants, namely,
shutting down a diesel engine when the level of fuel reaches a predetermined
low level and, thus, would have commended themselves to an inventor’s
attention in considering this problem. For this additional reason, both
Havemann and Pagane are analogous art to the Appellants’ invention and
can provide a reason for the combination proposed by the Examiner.
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For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claims 1, 9, and 14 over the combined
teachings of Stava, Havemann, and Pagane. Therefore, the rejection of
claims 1, 9, and 14, and their respective dependent claims 2, 3, 6, 11, 12, and
19 over the combined teachings of Stava, Havemann, and Pagane is
sustained.
With respect to the rejection of claims 7, 8, 13, and 20 over the
combined teachings of Stava, Havemann, Pagane, and Keller, Appellants
argue that Keller does not overcome the perceived deficiencies of Stava,
Havemann, and Pagane. App. Br. 21. For the reasons discussed above these
arguments are not persuasive. Accordingly, the rejection of claims 7, 8, 13,
and 20 over the combined teachings of Stava, Havemann, Pagane, and
Keller is likewise sustained.
Finally, regarding the rejection of claims 14 and 19-21 over Stava and
Pagane, Appellants reiterate the same arguments as presented with respect to
the rejection of claim 14 over the combined teachings of Stava, Havemann,
and Pagane. For the reasons discussed above these arguments are not
persuasive. Accordingly, the rejection of claims 14 and 19-21 over the
combined teachings of Stava and Pagane is also sustained.

CONCLUSIONS
1. Appellants have failed to show that the Examiner erred in determining
that the combined teachings of Stava, Havemann, and Pagane disclose an
audible alarm: (a) for providing notice to a user prior to disabling the engine,
and (b) that notifies the user at a location remote from the engine and
generator.
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2. Appellants have failed to show that the Examiner has not provided a
reasoning with rational underpinning for combining the teachings of Stava,
Havemann, and Pagane.
3. Appellants have failed to show that the teachings of Havemann and
Pagane constitute non-analogous art.

DECISION
The Examiner’s rejection of claims 1-3, 6-9, 11-14, and 19-21 is
affirmed.
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) (2007).

AFFIRMED

mls

PATRICK S. YODER
FLETCHER YODER
P.O. BOX 692289
HOUSTON, TX 77269-2289