Ex Parte Morrow et al

Patent Trial and Appeal Board

Feb 14, 2018

14026492 (P.T.A.B. Feb. 14, 2018)

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.
14/026,492 09/13/2013 Bob Morrow 1887-001 2639
1009 7590 02/16/2018
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
LAFLAME JR, MICHAEL A
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/16/2018 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):
u spto @ iplaw 1. net
laura @ iplaw 1. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOB MORROW and GEORGE KURZ
Appeal 2017-005570
Application 14/026,492
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bob Morrow and George Kurz (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—3, 5—12, 14, and
15.1 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 4 and 13 are cancelled, and claims 16—20 are withdrawn. Appeal
Br. 15—18 (Claims App’x.).
Appeal 2017-005570
Application 14/026,492
THE CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A sensing system for intended use with a resistance welding
apparatus having a pair of welding electrodes configured to come
into electrical contact to effect a weld, a weld controller and a
controller rectifier, comprising:
a voltmeter for measuring a voltage between the pair of
welding electrodes; and
a sensor for sending a signal to initiate welding to the weld
controller based on the measured voltage between the pair of
welding electrodes, wherein the measured voltage is a resting
bleedthrough voltage from the controller rectifier.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Wristen US 4,103,141 July 25, 1978
Hu US 2004/0099648 A1 May 27,2004
Hirsch US 2008/0302766 A1 Dec. 11,2008
REJECTIONS
I. Claims 1, 7, 8, 10-12, and 15 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Hirsch. Final Act. 2—3.
II. Claims 2, 3, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hirsch. Id. at 3^4.
III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hirsch and Hu. Id. at 4—5.
IV. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hirsch and Wristen. Id. at 5.
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Application 14/026,492
OPINION
lants
Rejection I
Claims 1, 7, 8, 11, 12, and 15
arguments for the patentability oi
claims 1 and 12 together as a group, and do not separately argue dependent
claims 7, 8, 11, and 15. Appeal Br. 9 12; Reply Br, 14. We select claim 1
as the representative claim, and claims 7, 8, 11, 12, and 15 stand or fall
therewith. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Schultz discloses all of the limitations of
independent claim 1. Final Act. 2. In particular, the Examiner finds:
Hirsch discloses a voltage measuring element (20, Fig. 5) [that]
measures the voltage between electrodes [0014], and a
comparator (22) that[,] in the event of a low voltage[,] signals a
controller (25) that there is continuity between the electrodes
[0040]. Comparator (22) is in electrical contact with SCR
[(silicon-controlled rectifier)] contactor (Fig. 5). The power
comes from AC power line through SCR contactor to be
measured by voltage measuring element (20) (Fig. 5) [0037]
(MPEP 2114).
Id.
Appellants argue that Hirsch does not disclose “a sensor for sending a
signal to initiate welding to the weld controller based on the measured
voltage between the pair of welding electrodes,” as recited in claim 1.
Appeal Br. 9—11. In particular, Appellants assert that “Hirsch discloses
initiating the welding process before any measurements are taken,” whereas
“the claimed invention measures the voltage between the electrodes before
initiating the welding.” Id. at 10. According to Appellants, Hirsch
“expressly requires measuring continuity (not voltage) between the welding
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electrodes after the welding machine has been initiated.” Id. at 11. We do
not find this argument persuasive.
Hirsch discloses that, during a welding sequence, welding controller
25 actuates low pressure solenoid valve 27 to bring electrodes 18 together
under low force. Hirsch 139. If electrodes 18 contact metal material to be
welded, impedance of welder secondary 17 lowers {id.), which greatly
reduces voltage on the transformer primary 16 and secondary 17 (id. 140).
The lowered voltage is input to continuity sensor 20, which conditions the
voltage level and feeds it into comparator 22. Id. 140. If the input voltage
level is below a reference voltage, comparator 22 signals welding controller
25 that continuity between electrodes 18 has been detected. Id. “At this
time, logic in welding controller 25 energizes solenoid valve 26 to put full
welding force between welding electrodes 18.” Id. 141; see also id. 149
(“The control then goes through the weld sequence and finally turns off both
solenoid valves 26 and 27 to release the electrodes 18.”).
In this regard, the Examiner explains that, although “Hirsch measures
continuity between the electrodes after the machine has been initiated,” the
system “does not initiate welding (applying appropriate pressure to the
electrodes) until the continuity is high enough.” Ans. 4 (emphasis added)
(citing Hirsch 114). We agree with the Examiner that “welding (i[.]e. [,]
application of high electrode force) is not started until the continuity/voltage
is of a sufficient value [0014].” Id. In other words, Hirsch initiates the
welding machine such that electrodes 18 come together under low force, but
the system does not initiate welding (i.e., applying full force to the electrodes
and actually welding the material) until a voltage level from continuity
sensor 20 is determined to be below a reference value. In this regard,
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Hirsch’s disclosure is consistent with Appellants’ Specification, which
describes that, if “the cylinder is coming down in low pressure mode and the
operator’s hand is not in the way, the voltage dissipates when the welding
electrodes come into contact and the cylinder switches to high pressure
mode and the weld start signal is initiated by the weld controller.” Spec. 7,
11. 22—25. Thus, Appellants do not apprise us of error in the Examiner’s
finding that Hirsch discloses the disputed limitation, which is supported by a
preponderance of the evidence.
Appellants also argue that “the claimed invention relies solely on
measuring the resting bleedthrough voltage (which is used as a control
voltage that naturally exists) from the controller rectifier, rather than
requiring an induced voltage and comparing the induced voltage to a
reference voltage[,] as in Hirsch.” Appeal Br. 11 (citing Spec. 7,11. 5—9).
More particularly, Appellants argue that “Hirsch relies upon measuring
continuity based on an inputted signal from an externally derived source, not
the voltage between the electrodes,” and assert that the “[Specification
expressly notes that ‘contact between top and bottom electrodes is
determined by using the SCR bleedthrough or leakage voltage instead of
utilizing a comparator circuit that induces a low control voltage into the
secondary wiring of the weld transformer.’” Id. (quoting Spec. 6,11. 25—27).
According to Appellants, the Specification “further notes the advantage of
such an arrangement[,] as it eliminates the need for a comparator circuit
(which Hirsch requires) and a number of other components, such as circuitry
components (also required by Hirsch), which add expense and complexity to
the welding system.” Id. (citing Spec. 6,1. 28—7,1. 4). These arguments are
unpersuasive for the following reasons.
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First, as to whether Hirsch teaches a resting bleedthrough voltage
from the controller rectifier, the Examiner responds, in the Answer, that
“Hirsch discloses a low voltage leakage (a bleedthrough voltage) when the
welding electrodes are not in contact (resting before welding) [0037] that
goes though electrodes to complete the circuit and across resistor/capacitor
(14) and SCR contactor (15, controller rectifier) as described [0037] and
shown in Fig. 5.” Ans. 5. According to the Examiner, “[t]his low voltage
leakage is developed by the resistor/capacitor and therefore would exist even
if a standard welding power supply were not on (resting).” Id. Appellants
do not specifically address or identify error in the Examiner’s position,
particularly as explained in the Answer. See Ans. 5. Namely, Appellants do
not offer any evidence or persuasive technical reasoning to refute the
Examiner’s finding that “the input continuity is a voltage (for example ‘input
voltage’ that is conditioned and fed to the comparator.” Id. at 4 (emphasis
added) (citing Hirsch 144). Consequently, Appellants do not persuasively
explain why Hirsch’s low voltage leakage developed by resistor-capacitor
element 14, connected across SCR contactor 15 to put low voltage on
transformer primary 16, and transmitted inductively to transformer
secondary 17 and to welding electrodes 18 (Hirsch || 37—38) cannot
reasonably be considered a “resting bleedthrough voltage from the controller
rectifier” as claimed, in light of the Examiner’s explanation in the Answer.
Second, Appellants’ arguments are not commensurate with the scope
of claim 1. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
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claim 1 only recites, in relevant part, “sending a signal to initiate welding to
the weld controller based on the measured voltage between the pair of
welding electrodes, wherein the measured voltage is a resting bleedthrough
voltage from the controller rectifier.” Appeal Br. 15 (Claims App’x.)
(emphasis added). The claim does not recite that the signal sent by the
sensor to the controller is based solely on the measured voltage. For that
matter, neither does the claim recite any limitations that exclude the use of a
comparator. In this regard, the language of claim 1 is broader than the
particular disclosure of the Specification relied on by Appellants. See
SuperGuide Corp. v. DirecTVEnterps., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”). In other words, although the Specification describes that the
disclosed invention “eliminates the need for comparator circuit” (Spec. 6,1.
28), such disclosure in the Specification does not impart any structural
limitations to the claimed system. See In re Van Geuns, 988 F.2d 1191,
1184 (Fed. Cir. 1993) (Although the claims are interpreted in light of the
Specification, limitations from the Specification are not read into the
claims.). Thus, even though Hirsch discloses using comparator 22 to
determine if an input voltage level from continuity sensor 20 is below a
reference voltage (Hirsch 140), claim 1 does not exclude a comparator
element.
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For the foregoing reasons, Appellants do not apprise us of error in the
Examiner’s finding that Hirsch discloses all of the limitations of independent
claim 1. Accordingly, we sustain the rejection of claim 1, and of claims 7, 8,
11, 12, and 15 falling therewith, under 35 U.S.C. § 102(b) as anticipated by
Hirsch.
Claim 10
In contesting the rejection of claim 10, Appellants initially rely on the
arguments and reasoning that we found unpersuasive in connection with
independent claim 1, from which this claim depends. Appeal Br. 12.
Appellants further assert that “claim 10 is also independently patentable”
because “Hirsch does not measure voltage between the electrodes, but relies
on a continuity sensor to measure continuity and utilizes a conditioned
voltage, not a measured voltage.” Id. This argument essentially rehashes
one of Appellants’ arguments set forth with respect to claim 1, which is
unpersuasive with respect to claim 10 for the same reasons. See id. at 11
(asserting that “Hirsch relies upon measuring continuity based on an
inputted signal from an externally derived source, not the voltage between
the electrodes”). Namely, Appellants’ argument does not persuasively refute
the Examiner’s finding that Hirsch’s input continuity is a voltage. Ans. 4.
For the above reasons, Appellants’ arguments do not apprise us of
error in the rejection of claim 10. Accordingly, we sustain the rejection of
claim 10 under 35 U.S.C. § 102(b) as anticipated by Hirsch.
Rejection II
In rejecting dependent claims 2, 3, 9, and 14, the Examiner finds that
“Hirsch discloses that a high electrode force is applied when a measured
continuity is below a reference level [0040] (MPEP 2114).” Final Act. 3.
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The Examiner acknowledges that “Hirsch does not state the reference
voltage where the high electrode force is applied,” but explains that
“[Appellants] do[] not state that these values are critical.” Id. The Examiner
determines that it would have been an obvious matter of design choice to use
a value of IV as the reference voltage in Hirsch. Id.
Appellants argue that “the Examiner’s position that the voltage of IV
is not critical is contradicted by Appellants’] specification.” Appeal Br. 13.
In particular, Appellants assert that the resting bleedthrough voltage is
“typically less than 30 volts and usually around 18 volts,” and, “[w]hen the
electrodes make contact, this bleedthrough voltage dissipates (typically less
than 1 volt), so the sensing system looks for a significant drop in voltage.”
Id. (citing Spec. 5,1. 25—6,1. 5). According to Appellants, “a measurement
of 1 volt or less is indicative of sufficient contact between the electrodes to
initiate welding and to avoid injury to an operator due to the high pressure
mode of welding initiating upon a reading of 1 volt or less.” Id. We are not
persuaded by these arguments.
Although the Specification describes that, “[w]hen the top and bottom
electrodes make contact, the voltage dissipates (typically less than 1 volt)”
(Spec. 6,11. 1—2 (emphasis added)), this disclosure does not indicate, much
less show, that there is any criticality to the IV measured voltage value
recited in the claims. Rather, the Specification suggests that any significant
drop in voltage, regardless of exactly what the lower value is, would be
sufficient to confirm continuity before initiating welding. See id., 11. 2—5
(describing that “the sensing system looks for a significant drop in the
voltage (confirming that the electrodes are touching and nothing, such as the
operator’s hand or fingers is in the way of the two electrodes) in order to
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begin the welding process”). Thus, based on the evidence before us, we
agree with the Examiner that the selection of 1V as the reference voltage
value is simply an obvious matter of design choice to one of ordinary skill in
the art. See Final Act. 3^4.
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner’s determination that Hirsch renders obvious the subject matter of
claims 2, 3, 9, and 14. Accordingly, we sustain the rejection of claims 2, 3,
9, and 14 under 35 U.S.C. § 103(a) as unpatentable over Hirsch.
Rejections III and IV
In contesting the rejections of claims 5 and 6, Appellants rely on the
same arguments and reasoning we found unpersuasive in connection with
independent claim 1, from which these claims depend. See Appeal Br. 12
(relying on the alleged deficiencies of Hirsch and asserting that Hu and
Wristen fail to remedy such deficiencies). Accordingly, we also sustain the
rejections, under 35 U.S.C. § 103(a), of claim 5 as unpatentable over Hirsch
and Hu, and of claim 6 as unpatentable over Hirsch and Wristen.
DECISION
The Examiner’s decision to reject claims 1, 7, 8, 10-12, and 15 under
35 U.S.C. § 102(b) as anticipated by Hirsch is affirmed.
The Examiner’s decision to reject claims 2, 3, 9, and 14 under
35 U.S.C. § 103(a) as unpatentable over Hirsch is affirmed.
The Examiner’s decision to reject claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Hirsch and Hu is affirmed.
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Hirsch and Wristen is affirmed.
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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
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