Ex Parte MecklerDownload PDFPatent Trial and Appeal BoardJun 29, 201611755821 (P.T.A.B. Jun. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111755,821 05/31/2007 91854 7590 07/01/2016 Lincoln Electric Company/Perkins COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 FIRST NAMED INVENTOR Andreu P. Meckler 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. 72056-8012.USOO 9789 EXAMINER ATKISSON, JIANYING CUI ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 07/01/2016 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 desiree _ cunin @lincolnelectric.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREU P. MECKLER Appeal2013-005359 Application 11/755,821 1 Technology Center 3700 Before MICHAEL C. ASTORINO, JAMES A. WORTH, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-23. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellant, "[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. Appeal2013-005359 Application 11/755,821 Claimed Subject Matter Claims 1, 2, 6, 7, 11, 12, 16, 17, 21, and 23 are the independent claims on appeal. Claim 21, reproduced below, is illustrative of the subject matter on appeal. 21. An automatic wire feed adjuster, comprising a control circuit that decides whether to instruct a tension controller to adjust a tension between a pair of rollers in a feeding mechanism that feeds a wire therebetween, the control circuit using a comparison of a determined wire speed and a measured wire speed, the determined wire speed being obtained by feedback data, the feedback data including a measured motor speed of the feeding mechanism and a diameter of at least one of the pair of rollers. Rejections I. Claims 6, 7, 16, 17, and 23 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. II. Claims 6, 7, 16, 17, and 23 are rejected under 35 U.S.C. § 112, first paragraph; as failing to comply with the written description requirement. III. Claims 1, 6, and 21-23 are rejected under 35 U.S.C. § 102(b) as anticipated by, or alternatively, under 35 U.S.C. § 103(a) as unpatentable over Herber (US 5,255,836, iss. Oct. 26, 1993). IV. Claims 2--4, 7-9, 11-14, and 16-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Herber and Morishita (US 5,166,490, iss. Nov. 24, 1992). V. Claims 5, 10, 15, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Herber, Morishita, and Sakai (US 5,053,598, iss. Oct. 1, 1991). 2 Appeal2013-005359 Application 11/755,821 ANALYSIS Rejection I The Examiner determines that claim recitations from claims 6, 7, 16, 17, and 23, for example, "a determined speed of the wire determined from feedback data from the motor," as recited in claim 6, are not enabling because "wire speed is determined by both the motor speed and the roller diameter" and as such "[b ]oth the motor speed and the roller diameters are critical or essential to the practice of the invention, but not included in the claim(s)." Final Act. 2 (citing In re Mayhew, 527F.2d1229 (CCPA 1976)); see also Ans. 3. However, the Examiner fails to explain why the disclosure, as filed, is not sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. See United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Determining whether any necessary experimentation is undue involves considering relevant factors including, but not limited to: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Here, the Examiner's rejection does not discuss any of the factors set forth in Wands as they relate to undue experimentation. Although the Examiner is not required to provide a discussion as to every Wands factor, it is not apparent from the Final Office Action or the Answer that any of these factors have been considered. 3 Appeal2013-005359 Application 11/755,821 As discussed above, the Examiner's rejection relies on the determination that motor speed and the roller diameter are critical and essential to the practice of the invention but are not included in the claims. Final Act. 2; see Ans. 3. The Examiner's determination appears to relate to the breadth of the claims, which is only one of the eight Wands factors. Based on the foregoing, we determine that the Examiner's rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, is not sufficiently complete to establish a prima facie case. Thus, the Examiner's rejection of claims 6, 7, 16, 17, and 23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement is not sustained. Rejection II The Examiner determines that claim recitations from claims 6, 7, 16, 17, and 23, for example, "a determined speed of the wire determined from feedback data from the motor," as recited in claim 6, "are not supported by the originally filed specification." Final Act. 2-3. The Appellant contends that the Specification of the present application discloses the claim recitations as issue. See Appeal Br. 26 (citing Spec., paras. 13-19, 31, 33). The Appellant particularly points out language in paragraph 33 that supports the claim recitations in dispute. See Reply Br. 5---6. The Appellant's contention is persuasive. In this case, the Appellants' Specification reasonably conveys to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. See also Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561---64 (Fed. Cir. 1991). For example, the 4 Appeal2013-005359 Application 11/755,821 Specification at paragraph 33 describes that "control circuit 110 obtains a first wire speed of the wire 13 5 by measuring the speed of the motor 112 and taking into account the diameters of rollers 114." Thus, the Examiner's rejection of claims 6, 7, 16, 17, and 23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is not sustained. Rejection III Independent claims 1 and 6 Independent claim 1 recites "an automatic wire feed adjuster" including "a feeding mechanism comprising a motor defining a motor speed and a pair of rollers that feeds a wire there between, each roller defining a roller diameter," "a tension controller," and "a control circuit." Appeal Br., Claims App. Claim 1 also recites that the control circuit . . . decides whether to instruct [a] tension controller to adjust the tension between the pair of rollers based on a comparison of a first speed of the wire and a second speed of the wire, the first speed being calculated based upon the motor speed and the roller diameter of at least one of the rollers. Id. (emphasis added). Independent claim 6 includes similar limitations as claim 1. See id. The Examiner finds that Herber discloses "a predetermined wire feed rate ... [that] is used to control the motor speed to drive the wire feed pulley so as to drive the wire at the predetermined wire feed rate; in other words, it is determined by the rotary speed of motor 1." Final Act. 4 (citing Herber, col. 3, 1. 68 - col. 4, 1. 4). The Examiner also finds that "Herber teaches the first speed is a predetermined wire feed rate, but does not teach explicitly 5 Appeal2013-005359 Application 11/755,821 that the predetermined wire feed rate is calculated based upon the motor speed and the roller diameter of at least one of the rollers, or determined from feedback data from the motor." Id. at 5. Moreover, it is the Examiner's position that: since Herber teaches the structures (the control circuit 27 and the microprocessor system 25, etc.) of the claimed invention, as shown in Fig. 2 of Herber, the motor speed is fed back to both the microprocessor system 25 (through 24) and the control circuit 27 (through 26), thus inherently or obviously, a calculated wire speed can be obtained by microprocessor system 25, which can be used as the predetermined wire feed rate; [ f]urther the control circuit is capable of comparing the two speeds and making control instructions based on the comparison. Id. at 5---6 (emphases added); see also Ans. 6-7. The Appellant argues that Herber' s predetermined feed rate fails to expressly or inherently correspond to the automatic wire feed adjuster of claims 1 and 6, particularly, "the first speed being calculated based upon the motor speed and the roller diameter of at least one of the rollers," which further limits control circuit of claim 1 and the similar limitation of claim 6. See Appeal Br. 9-16. The Appellant points out that "Herber is silent as to how the 'predetermined wire feed rate' is determined" and that inherency "may not be established by probabilities or possibilities." Id. at 10, 15 (citing Herber, col. 3, 1. 67- col. 4, 1. 17, col. 4, 11. 20-26). We agree. Thus, the Examiner's rejection of claims 1 and 6 as anticipated by Herber is not sustained. Additionally, the Appellant argues "the Examiner has not made a sufficient showing that the claimed control circuit 'necessarily' flows from the teachings of Herber to establish the alleged inherent teaching of Herber to support the conclusion of obviousness." Appeal Br 16. We agree. Here, 6 Appeal2013-005359 Application 11/755,821 the Examiner does not adequately articulate reasoning with some rational underpinning why one of ordinary skill in the art would modify Herber' s wire feed control to correspond to the claimed invention. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Thus, the Examiner's rejection of claims 1 and 6, alternatively, as unpatentable over Herber is not sustained. Independent claims 21and23, and dependent claim 22 The Appellant relies on the same arguments for independent claims 21 and 23, and dependent claim 22, as presented in claims 1 and 6. See Appeal Br. 9-18. However, claims 21-23 recite different requirements as compared to claims 1 and 6. Although claims 1, 6, and 21-23 are all directed to an automatic wire feed adjuster, claims 1 and 6 include "a feeding mechanism comprising a motor defining a motor speed and a pair of rollers that feeds a wire therebetween, each roller defining a roller diameter" and "a feeding mechanism having a motor for feeding a wire therethrough by applying a force to the wire," respectively. As such, claims 1 and 6 each require a control circuit to use data from the claimed feeding mechanism's motor. However, such is not required by independent claims 21and23, or dependent claim 22. Independent claim 21 is directed to solely to the structure and the function of a "control circuit," including "using a comparison of a determined wire speed and a measured wire speed." Appeal Br., Claim App. 7 Appeal2013-005359 Application 11/755,821 Although claim 21 also recites "the determined wire speed being obtained by feedback data," the claim does not require the feedback data to be obtained from any particular source. In other words, "the determined wire speed being obtained by feedback data," as recited in claim 21, does not further limit the structure or the function of the claimed "control circuit." Similarly, independent claim 23 claims the structure and the function of a "tension controller" by reciting that it "adjusts a tension between a pair of rollers in a feeding mechanism that feeds a wire therebetween." Appeal Br., Claim App. Although claim 23 also recites "in view of a comparison of a driven speed of the wire with the fed speed of the wire measured on the wire, the driven speed being calculated from the pair of rollers of the feeding mechanism," the comparison and the data associated therewith, including "the driven speed being calculated from the pair of rollers of the feeding mechanism" does not further limit the structure or the function of the claimed "tension controller." Therefore, the Appellant's arguments are not persuasive because they are directed to recitations of claims 21 and 23, which do not further limit the structure or the function of the "control circuit" and "tension controller," respectively. See Appeal Br. 9-18. In other words, the errant findings and reasoning from the Examiner, as discussed above, amount to harmless error for the rejection of claims 21-23. Thus, the Examiner's rejections of independent claims 21 and 23, and dependent claim 22, as anticipated by Herber, and alternatively, as unpatentable over Herber are sustained. 8 Appeal2013-005359 Application 11/755,821 Rejections IV & V The remaining rejections based on Herber in combination with Morishita or Morishita and Sakai rely on the same or similar findings and reasoning discussed above with regard to independent claims 1 and 6. As discussed above, the Examiner's findings and reasoning are inadequately supported for the rejections of claims 1 and 6, and are likewise inadequately supported for rejections of claims 2-5 and 7-20. In other words, the errant findings and reasoning from the Examiner, as discussed above, do not amount to harmless error for the rejections of claims 2-5 and 7-20. As such, we do not sustain the Examiner's rejections under 35 U.S.C. § 103(a) of claims 2--4, 7-9, 11-14, and 16-19 as unpatentable over Herber and Morishita and claims 5, 10, 15, and 20 as unpatentable over Herber, Morishita, and Sakai. DECISION We AFFIRM the Examiner's decision rejecting claims 21-23 under 35 U.S.C. § 102(b) as anticipated by, or alternatively, under 35 U.S.C. § 103(a) as unpatentable over Herber. We REVERSE the Examiner's decision rejecting: claims 6, 7, 16, 17, and 23 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; claims 6, 7, 16, 17, and 23 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 1and6 under 35 U.S.C. § 102(b) as anticipated by, or alternatively, under 35 U.S.C. § 103(a) as unpatentable over Herber; claims 2--4, 7-9, 11-14, and 16-19 under 35 U.S.C. § 103(a) as 9 Appeal2013-005359 Application 11/755,821 unpatentable over Herber and Morishita; and claims 5, 10, 15, and 20 under 35 U.S.C. § 103(a) as unpatentable over Herber, Morishita, and Sakai. 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)(l )(iv). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation