Ex Parte Matthews et al

Patent Trial and Appeal Board

Aug 21, 2018

13438703 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/438,703 04/03/2012
91854 7590 08/23/2018
Lincoln Electric Company/Perkins COIE LLP
700 Thirteenth Street, NW
Suite 600
Washington, DC 20005-3960
FIRST NAMED INVENTOR
William T. Matthews
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.
72056-8066.USOO 5953
EXAMINER
CHOU,JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
wdcle@perkinscoie.com
patentprocurement@perkinscoie.com
ip@lincolnelectric.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM T. MATTHEWS, STEVEN R. PETERS,
and STEVEN R. COLE
Appeal2017-002057
Application 13/438,703 1
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1, 3, 6-8, 10-12, 15-17, and 19. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest is Lincoln Global,
Inc. the assignee of record, which is a subsidiary of Lincoln Electric
Holdings, Inc." Appeal Br. 3.
Appeal2017-002057
Application 13/438,703
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A welding system, comprising:
a welding power supply which outputs a welding current
signal to an electrode so that a welding arc is generated between
said electrode and a workpiece, said welding current signal
comprising a plurality of welding current pulses;
a magnetic steering device positioned adjacent to said
welding arc; and
a magnetic field power supply which outputs a magnetic
field current signal to said magnetic steering device, said
magnetic field current signal comprising a plurality of magnetic
current pulses;
wherein said magnetic steering device uses said magnetic
field current signal to generate a magnetic field to move said
welding arc during welding; and
wherein said plurality of said magnetic current pulses are
synchronized with respect to at least some of said plurality of
welding current pulses of said welding signal,
wherein said electrode is a consumable, and
wherein each of said at least some of said plurality of
welding current pulses causes a molten droplet to separate from
said consumable and wherein said plurality of magnetic current
pulses are synchronized with said at least some of said plurality
of welding current pulses of said welding signal so that said
magnetic current pulses are at a peak level at least immediately
prior to each of said molten droplets separating from said
consumable.
Rejections
The Examiner sets forth four separate statements for the rejection of
claim 10 and four identical statements for the rejection of claim 19. Final
Act. 9--11, 19--22. We consolidate the statements into four grounds of
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Appeal2017-002057
Application 13/438,703
rejection, where each ground of rejection is based on the same combination
of references.
I. Claims 1, 3, 6-8, 11, 12, and 15-17 stand rejected under (pre-
AIA) 35 U.S.C. § I03(a) as unpatentable over Sulzer (GB 1,286,444, pub.
Aug. 23, 1972), Ohta (US 4,366,362, iss. Dec. 28, 1982), and Kamei
(US 2011/0174784 Al, pub. July 21, 2011).
II. Claims 10 and 19 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Sulzer, Ohta, Kamei, and Peters
(US 2013/0112675 Al, pub. May 9, 2013).
III. Claims 10 and 19 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Sulzer, Ohta, Kamei, and Daniel
(US 2010/0096375 Al, pub. Apr. 22, 2010).
IV. Claims 1, 3, 6-8, 11, 12 and 15-17 stand rejected under (pre-
AIA) 35 U.S.C. § I03(a) as unpatentable over Robertson (GB 2,154,028 A,
pub. Aug. 29, 1985), Ohta, and Kamei.
V. Claims 10 and 19 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Robertson, Ohta, Kamei, and Peters.
VI. Claims 10 and 19 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Robertson, Ohta, Kamei, and Daniel.
ANALYSIS
The Examiner's rejections of independent claims 1 and 11 under (pre-
AIA) 35 U.S.C. § I03(a) as unpatentable over Sulzer or Robertson in
combination with the teachings of Ohta and Kamei are based on the notion
that Sulzer and Robertson lack claimed subject matter taught by Ohta and
Kamei. Final Act., passim. In modifying the arc welding systems of Sulzer
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Application 13/438,703
and Robertson with the teachings of Ohta, the Examiner determines that "[i]t
would have been obvious to use power supplies to provide current pulses
synchronized with current pulses since it is conventional to use power
supplies to sync[hronize] pulse currents with each other." Id. at 4, 7, 14, 17.
The Appellants argue that the Examiner's determination "does no
more than contend that the claimed invention would have been well within
the ordinary skill of the art at the time the claimed invention was made."
Appeal Br. 17, 24. We agree. The Appellants also argue that the
Examiner's determination "does not provide an explanation as to why it
would have been obvious to modify Sulzer's [or Robertson's] system to
include welding pulses and then synchronize the welding pulses with
magnetic current pulses." Id. at 17; see id. at 23-24; Reply Br. 10-12, 19-
20. We agree.
In response, the Examiner determines that:
the purpose of utilize [sic] plurality of magnetic current pulses
are synchronized with at least some of said plurality of welding
current pulses is to provide uniform swinging motion so that [sic]
molten metal pool is also stabilized and the "arc" (Ohta, 4) can
be controlled in an optimum manner depending upon various
welding conditions ... as taught by Ohta.
Ans. 27, 32-33 (citing Ohta, col. 4, 11. 1-12, 24--25). The foregoing merely
explains what Ohta teaches and does not, standing by itself, adequately
explain why one skilled in the art would have modified the arc welding
systems of Sulzer or Robertson with the teachings pertaining to the
synchronization circuit of Ohta. See Reply Br. 11-12, 19-20. As such, we
determine that the Examiner fails to provide an adequate reason with rational
underpinning why a person of ordinary skill in the art would have combined
the references in the manner set forth by the Examiner. "[R]ejections on
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Application 13/438,703
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." KSR,
550 U.S. 398,418 (Fed. Cir. 2007) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Thus, we do not sustain the Examiner's rejections of independent
claims 1 and 11, and their dependent claims, under (pre-AIA) 35 U.S.C.
§ 103(a) as unpatentable over Sulzer or Robertson, Ohta, and Kamei
(Rejections I and IV). The remaining rejections based on Sulzer or
Robertson, Ohta, and Kamei in combination with Peters or Daniel rely on
the same inadequate reasoning discussed above and are not remedied by the
additional findings and reasoning provided by the Examiner. As such, we
do not sustain the rejections under (pre-AIA) 35 U.S.C. § 103(a) of
claims 10 and 19 as unpatentable over Sulzer or Robertson, Ohta, Kamei,
and Peters or Daniels (Rejections II, III, V, and VI).
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3, 6-8,
10-12, 15-17, and 19.
REVERSED
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