Ex Parte Matiash et alDownload PDFPatent Trials and Appeals BoardMay 30, 201914535575 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/535,575 11/07/2014 23721 7590 06/03/2019 GEORGE R. CORRIGAN CORRIGAN LAW OFFICE 2168 COLLADAY POINT DRIVE STOUGHTON, WI 53589 FIRST NAMED INVENTOR Nicholas A. Matiash 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. ITW65815 7473 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 06/03/2019 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): george.corrigan@corrigan.pro gcorrigan@new.rr.com kari.brekke@corrigan.pro PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteNICHOLAS A. MATIASH, BRIAN A. SCHWARTZ, and KENNETH C. AL TEKRUSE Appeal2018-008816 Application 14/535,575 Technology Center 3700 Before MICHAEL L. HOELTER, JAMES P. CAL VE, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-008816 Application 14/535,575 STATEMENT OF CASE Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants' claims are directed "to transformers for use in creating control power and auxiliary power." Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A welding type power supply, comprising: a power circuit, disposed to receive input power and provide welding type power to a welding output, control power to a control power output and auxiliary power to an auxiliary power output; and a control circuit connected to control the power circuit and connected to receive the control power output; wherein the power circuit includes a transformer, and the transformer has a primary winding, a control power secondary winding in electrical communication with the control power output, and an auxiliary power secondary winding in electrical communication with the auxiliary power output, and further wherein the transformer includes a secondary bobbin having the control power secondary winding and the auxiliary power secondary winding wound thereon, wherein a winding separator is disposed over a first one of the control power secondary winding and the auxiliary power secondary winding, and the wherein the winding separator is disposed under a second one of the control power secondary winding and the auxiliary power secondary winding. 1 The real party in interest is Illinois Tool Works Inc. App. Br. 3. 2 Appeal2018-008816 Application 14/535,575 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Eng Murai Sigl Wolfgram Luo us 4,857,878 us 6,154,113 US 6,864,777 B2 US 2009/0261934 Al US 2011/0049115 Al REJECTIONS The Examiner made the following rejections: Aug. 15, 1989 Nov. 28, 2000 Mar. 8, 2005 Oct. 22, 2009 Mar. 3, 2011 Claims 1, 2, and 4 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Luo and Sigl. Ans. 2. Claims 5-10 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Luo, Sigl, and Murai. Ans. 4. Claims 11-17 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Luo, Sigl, Murai, and Eng. Ans. 6. Claim 3 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Luo, Sigl, and Wolfgram. Ans. 9. Claim 18 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Luo, Sigl, Murai, Eng, and Wolfgram. Ans. 10. ANALYSIS The Examiner rejects claim 1 over Luo and Sigl, with the pertinent issue before us being the proper interpretation of the claim term "winding separator." Ans. 2. The Examiner asserts that Sigl's insulating shroud 205 meets the claimed winding separator. Ans. 3. There does not appear to be a dispute as to the function of shroud 205 in Sigl, which acts as an insulator 3 Appeal2018-008816 Application 14/535,575 between windings, but is not itself structure about which a winding may be wound. The Examiner interprets "winding separator" based only upon the claim term itself and appears to give no weight to definitional language contained in Appellants' Specification. According to the Examiner, "it is the language of the claims [t]hat defines the patentable subject matter, not the detailed description of the invention or the drawings." Ans. 11. Although the claims define the scope of the invention, they must be interpreted in light of the specification. Appellant's may be their own lexicographers and define terms in the Specification in a manner that must be given credence by the Examiner. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe an invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning) (quotingintellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, (Fed. Cir. 1992)). As Appellants correctly point out, the term "winding separator" is explicitly defined in the Specification as "a part that is formed or shaped to separate windings, and that provides structure about which a winding may be wound." See, e.g., Reply Br. 2 (citing Spec. ,r 38) ( emphasis omitted). There can be little doubt that Appellants laid out a deliberate and clear definition as this definition is preceded by "[ w ]inding separator, as used herein is .... " Spec. ,r 38. As such the Examiner cannot ignore this definitional language in interpreting the claims. Given that there is no disagreement that shroud 205 does not perform the winding structure laid out in the definition, we do not sustain the 4 Appeal2018-008816 Application 14/535,575 Examiner's rejection. Accordingly, we reverse the Examiner's rejections of claims 1-10 as relying on this improper claim interpretation. Likewise, claim 12, which depends from independent claim 11 also contains this "winding separator" limitation and all claims after claim 12 depend from claim 12, so we do not sustain the rejections of claims 12-18 for the same reasons as stated above. 2 Independent claim 11, however, does not recite "winding separator" and so we must address the rejection of claim 11 separately. The dispositive issue with regard to claim 11 is whether the prior art teaches the claimed air vents recited in claim 11. According to the Examiner, Murai's ribs 7 create a gap, which can be considered a vent as it would allow air into that gap. See Ans. 14. Specifically regarding claim 11, Appellants argue that the Examiner "held that flanges 306 of Figure 3 in US 4,857,878 (Eng Jr et al) teach air gaps." App. Br. 13. This, however, is an inaccurate characterization of the Examiner's rejection because, as noted above, the Examiner utilizes Murai's ribs for the structure of this feature. Although not actually argued for claim 11, we give Appellants the benefit of the doubt in that they did present arguments for this teaching in Murai in regards to the rejection of claims 6- 10. See App. Br. 12. Appellants argue that "the purpose of the ribs of [Murai] is to locate the secondary bobbin/winding with respect to the primary bobbin" and that "[n]othing suggests providing ribs to create air flow for venting between secondary windings." Id. Appellants go on to 2 We note that claim 1 7 depends from claim 11 and recites "the winding separator," which is not recited in claim 11, therefore lacking proper antecedent basis. We assume claim 1 7 was intended to depend from claim 12, which Appellants can correct when this case returns to the Examiner. 5 Appeal2018-008816 Application 14/535,575 argue that "Murai shows a structure with the secondary winding largely exposed (Fig. 1 ), and as such has no need for vents for air flow between the windings." Id. First, we disagree with Appellants as to what the ribs do in Murai. Regardless of Murai' s purpose for the ribs, the Examiner is correct that the ribs create an air gap and that air is capable of going through that gap, thus providing venting as claimed. As for Murai' s specific structure not needing venting due to the largely exposed secondary winding, this is inapposite as the Examiner's rejection is a combination of Luo, Sigl, Murai, and Eng and the ribs of Murai are just part of the combination set forth by the Examiner. The Examiner does not suggest using the configuration in Murai, just the ribs for the venting, so the configuration of the secondary winding in Murai is essentially irrelevant. Regardless, even if Murai would benefit less from air vents due to other structural features, Murai still teaches air vents between windings, thus meeting the claim language at issue. Additionally, as to Eng closing off the gap, Appellants argue Eng individually without taking into account that the rejection is based upon the combination of all of the references. See App. Br. 13-15. The Examiner utilizes Murai for the structure that creates the gaps and only uses Eng "to modify the secondary bobbin 5 of Murai with the inner modular transformer bobbin 202 as taught by Eng." Ans. 9. While it may be true that Eng's gaps would be closed off, thus preventing venting in Eng itself, we disagree that such would be the case in the Examiner's proposed modification. Eng is only being used for the inner bobbin and not for the external bobbin into which the inner bobbin is inserted. Accordingly, the structure that would close off the gap in Eng is not present in the Examiner's combination. 6 Appeal2018-008816 Application 14/535,575 Further, Appellants' arguments regarding the drawings are also unpersuasive. Appellants assert that the prior art is silent as to whether the gap is filled, but that which is depicted in Murai is clearly illustrated as a gap. Contrary to Appellants' argument, without a specific disclosure that the gap is filled, we can only interpret the drawings as presented, and Murai' s drawings show an unfilled gap. Accordingly, we sustain the Examiner's rejection of claim 11. DECISION For the above reasons, we REVERSE the Examiner's rejection of claims 1-10 and 12-18 and AFFIRM the Examiner's decision to reject claim 11. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation