Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardDec 14, 201612954076 (P.T.A.B. Dec. 14, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/954,076 11/24/2010 Victor Miller 072056-8061.US00 4684 91854 7590 12/16/2016 Lincoln Electric Company/Perkins COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 EXAMINER STAPLETON, ERIC S ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 12/16/2016 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 ip @ lincolnelectrie .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VICTOR MILLER and LANE LITRE Appeal 2015-001575 Application 12/954,076 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1—29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2015-001575 Application 12/954,076 THE INVENTION Appellants’ invention relates to a welding apparatus. Spec. 11. Claims 1 and 12 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A welding arc manipulation unit, comprising: a support structure which supports a magnetic coil which generates a magnetic field in response to an electrical current; a magnetic probe magnetically coupled to said magnetic coil and extending below said support structure such that said magnetic probe can extend into a welding gap to deliver a magnetic field to a welding arc created by a welding head; and a shielding gas tube coupled to and extending below said support structure, said shielding gas tube comprising a nozzle with a cross-sectional area shaped to extend into said welding gap to deliver shielding gas to said welding arc, wherein said nozzle is disposed such that said delivery of said shielding gas is done separately from said welding head. EVIDENCE RELIED UPON AND THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Tama US 3,485,983 Dec. 23, 1969 Gibbs US 3,825,712 July 23, 1974 Campello US 2006/0186110 A1 Aug. 24,2006 The following rejections are before us for review: 1. Claims 1—29 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 26 and 28 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failure to particularly point out and distinctly claim the subject matter which the inventors regard as their invention. 2 Appeal 2015-001575 Application 12/954,076 3. Claims 1—7, 9-21, and 23—29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibbs and Tama. 4. Claims 8 and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gibbs, Tama, and Campello. ANALYSIS This case comes before us primarily on a 35 U.S.C. § 112, first paragraph, rejection of all pending claims, as well as prior art rejections made by the Examiner under 35 U.S.C. § 103. However, because we find that each and every one of the claims is indefinite within the meaning of 35 U.S.C. § 112, second paragraph, we do not reach the issues of whether the claims lack written description support or are obvious over the prior art. Consequently, we enter a new ground of rejection of claims 1—29 under 35 U.S.C. § 112, second paragraph, as being indefinite, and we reverse, pro forma, the Examiner’s Section 112, first paragraph, rejection, as well as the prior art rejections of claims 1—29. Legal Principles of Indefiniteness “Because the claims perform the fundamental function of delineating the scope of the invention, the purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted). The governing section of the Patent Code provides, in pertinent part, that: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 3 Appeal 2015-001575 Application 12/954,076 35 U.S.C. § 112, second paragraph. The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). “[Djuring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (citations omitted). Section 112 places the burden of precise claim drafting on the Applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). With the foregoing legal standards in mind, we analyze Appellants’ independent claims. Claims 1 and 12 Claims 1 and 12 each contain limitations that delivery of shielding gas is “done separately from said welding head.” Claims App. Figures 5 and 7 of Appellants’ disclosure depict welding head 200 juxtaposed adjacent to arc manipulation unit 100. See Fig. 5. Figure 2 of Appellants’ disclosure depicts arc manipulation unit 100, which includes magnetic housing 101. See Fig. 2. Housing 101 includes bracket structure 113 that is used to secure unit 100 to a welding head assembly. Spec. 117. Although arc manipulation unit 100 is depicted in relatively close proximity to welding head 200 in both Figures 5 and 7, there is no depiction as to how elements 100 and 200 are secured to each other via bracket structure 113, if secured at all. Furthermore, we find no detailed explanation in the Specification regarding the manner of attachment. Claims 1 and 12 are 4 Appeal 2015-001575 Application 12/954,076 silent as to whether attachment of the arc manipulating unit to the welding head is required or optional. Claims App. Apparently, nozzle 106 of arc manipulation unit 100 should be disposed in sufficient proximity to the tip of tungsten welding electrode 205 so as to supply a localized inert atmosphere for the welding operation. Spec. 115. Appellants’ “done separately limitation is undefined, vague, and confusing because it is unclear how the delivery of the shielding gas is done separately from the welding head structure in the claimed welding system. Without further clarification, we are left to speculate regarding whether and to what extent bracket structure 113, or some analogous structure, factors into the analysis of whether the delivery of shielding gas is “done separately from a welding head. For example, a plausible interpretation of the claim could be that a physical connection between arc manipulation unit 100 and welding head 200 indicates that delivery is “done together” and not “done separately,'1'’ whereas no physical connection may indicate delivery is “done separately.” Another plausible interpretation could be that disposing gas shielding tube 105 and nozzle 106 in a sub-assembly, such as arc manipulation unit 100, and disposing tungsten welding electrode 205 in a distinct and separately identifiable sub-assembly, such as welding head 200, regardless of any physical connection between bracket structure 113 and welding head 200, indicates that delivery is “done separately.” During prosecution, a claim is properly rejected as indefinite if it is “amenable to two or more plausible claim constructions.” Ex parte Miyazaki, 2008 WL 5105055 at *5 (BPAI Nov. 19, 2008) (precedential). The Miyazaki standard is justified, at least in part, because the Applicant has the opportunity and the obligation to define the invention precisely during 5 Appeal 2015-001575 Application 12/954,076 prosecution before the PTO. Id. Appellants’ independent claims 1 and 12 are both indefinite under at least our Miyazaki standard. Consequently, we hereby enter a new ground of rejection under 35U.S.C. § 112, second paragraph, that claims 1 and 12 are indefinite for failure to particularly point out and distinctly claim the subject matter which Appellants regard as their invention. Claims 2—11 and 13—29 Claims 2—11 and 13—29 depend from either claim 1 or claim 12. The above-discussed indefmiteness of claims 1 and 12 similarly infects the definiteness of the claims that depend therefrom. Accordingly, we similarly enter a new ground of rejection rejecting the dependent claims as indefinite. 35 U.S.C. § 112, first paragraph Rejection of Claims 1—29 The Examiner rejected claims 1—29 under 35 U.S.C. § 112, first paragraph, based on a finding that the “done separately limitation is not adequately supported by Appellants’ Specification so as to demonstrate possession of the invention at the time the application was filed. Final Action 3. Reaching such a finding and conclusion, however, necessarily requires us to interpret the meaning of “done separately.” For the reasons previously discussed, however, we are unable to determine whether Appellants had possession of the claimed invention, because we are unable to discern the meaning of “done separately with the requisite degree of definiteness. Accordingly, in light of our new grounds of rejection of indefmiteness under 35 U.S.C. § 112, second paragraph, detailed above, we reverse, 6 Appeal 2015-001575 Application 12/954,076 pro forma, the Examiner’s Section 112, first paragraph, rejection of claims 1—29. 35 U.S.C. § 103 Unpatentability Rejections of Claims 1—29 The Examiner rejected claims 1—29 under 35 U.S.C. § 103 as unpatentable over Gibbs in combination with one or more references. Final Action 5—11. Because we have concluded that claims 1—29 are indefinite, the prior art rejections of claims 1—29 must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Accordingly, in light of our new ground of rejection of indefmiteness under 35 U.S.C. § 112, second paragraph, detailed above, we reverse, pro forma, the Examiner’s Section 103 unpatentability rejections of claims 1—29. Indefiniteness Rejection of Claims 26 and 28 Claim 26 Claim 26 depends from claim 2. Claims App. Each claim is reproduced below. 2. The welding arc manipulation unit of claim 1, wherein said magnetic probe is magnetically coupled to said shielding gas tube such that said magnetic probe and said shielding gas tube deliver said magnetic field to said welding arc. 26. The welding arc manipulation unit of claim 2, wherein said magnetic probe is secured to said shielding gas tube so as to create an integral unit. Claims App. (emphasis added). The Examiner takes the position that claim 26 is indefinite because it is unclear how the coupling of claim 2 would be further limited by the language of claim 26. Final Action 4, Ans. 11. 7 Appeal 2015-001575 Application 12/954,076 Appellants argue, in essence, that magnetic coupling does not result in an “integral” unit. Appeal Br. 13 (“not integral”). However, Appellant has not persuasively shown that magnetic coupling is not equivalent to “integral” as that term has been interpreted by our reviewing court. See Morris, 127 F.3d at 1056 (“integral” may cover more than a unitary construction). We sustain the Examiner’s Section 112, second paragraph, rejection of claim 26 as indefinite. Claim 28 Claim 28 depends from claim 16. Claims App. Each claim is reproduced below. 16. The welding system of claim 12, wherein said magnetic probe is magnetically coupled to said shielding gas tube such that said magnetic probe and said shielding gas tube deliver said magnetic field to said welding arc. 28. The welding system of claim 16, wherein said magnetic probe is secured to said shielding gas tube so as to create an integral unit. Claims App. (emphasis added). As with claim 26, the Examiner takes the position that claim 28 likewise is indefinite because it is unclear how the coupling of claim 16 would be further limited by the language of claim 28. Final Action 4, Ans. 11. Appellants raise a similar argument to that discussed above with respect to claim 26, which we find equally unpersuasive here. Morris, 127 F.3d at 1056. We sustain the Examiner’s Section 112, second paragraph, rejection of claim 28 as indefinite. 8 Appeal 2015-001575 Application 12/954,076 DECISION We reverse, pro forma, the Examiner’s prior art unpatentability rejection of claims 1—29. We reverse, pro forma, the Examiner’s 35 U.S.C. § 112, first paragraph, rejection of claim 1—29 for lack of written description support. We affirm the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claims 26 and 28. We hereby enter a NEW GROUND OF REJECTION under 35 U.S.C. §112, second paragraph, that claims 1—29 are indefinite. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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; 37 C.F.R, § 41.50(b) 9 Copy with citationCopy as parenthetical citation