Ex Parte Radtke

Board of Patent Appeals and Interferences

Jan 11, 2008

10249018 (B.P.A.I. Jan. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID E. RADTKE
____________

Appeal 2007-2243
Application 10/249,0181
Technology Center 1700
____________

Decided: January 11, 2008
____________

Before CAROL A. SPIEGEL, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 "The 018 Application," filed 10 March 2003. The real party in interest is
listed as Illinois Tool Works Inc. (Appeal Brief filed 9 November 2006
("App. Br.") at 4.)

Appeal 2007-2243
Application 10/249,018

A. Introduction
Applicant Radtke appeals under 35 U.S.C. § 134 from the final
rejection of claims 1–27, 29, and 30, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The subject matter on appeal relates to a hinge arrangement that
allows a side panel of an enclosure, e.g., a welding machine enclosure, to be
opened, removed, and in some embodiments held open at various angles. In
embodiments, a hinge of the side panel engages the base of the enclosure via
a slot.
Independent claims 1, 11, 20, and 29 are representative of the issues
necessary to resolve this appeal. They read as follows (App. Br. Claims
App.):
Claim 1:
A welding type machine comprising:
a base having at least one slot therein; and
an enclosure attached to the base having at least one
removable side panel,
the at least one removable side panel constructed to
removeably attach to the base for selective opening and
closing and providing access to the inside of the
enclosure,
the at least one side panel including:
first and second ends, and
at least one hinge attached to the first end,
the hinge insertable into the slot in the
base and
arranged to allow removal of the side
panel at an extraction angle and
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retain the side panel to the base at angles
other than the extraction angle.
Claim 11:
A welding apparatus comprising:
a base having a floor and first and second walls extending
upwardly therefrom,
each wall having a horizontal ledge with a plurality of
slots therethrough;
a welding power supply mounted to the base and
configured to deliver electrical power at levels sufficient
to weld metal; and
a plurality of side panels attached to the first and second
walls of the base and a top cover coupled to the plurality
of side panels to form an enclosure,
at least two of the plurality of side panels selectively
removable from the base, each of the at least two side
panels including:
first and second ends; and
at least one hinge tang spaced apart and integrally
attached to the first end of each removable side
panel, each hinge tang being insertable into a
respective slot.
Claim 20:
A hinge arrangement for a welding-type enclosure comprising:
a base constructed to support a welding-type power
supply;
a door panel having a hinge at one end engagable in a slot
of the base, the hinge comprising:
a hinge portion that is generally perpendicular to the
door panel;
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a doorstop engagable with at least two portions of the
base to define a maximum open position and a
maximum closed position; and
a transition portion connecting the hinge portion of
the doorstop.
Claim 29:
A welder-type enclosure comprising:
a base having a slot therein;
a movable door panel disengagable with the base; and
a means for allowing the movable door panel to open and
close through a rotation point from a maximum open
position to a maximum closed position and allowing
complete removal of the movable door panel only at a
position between the maximum open position and
maximum closed position.
The Examiner has maintained the following rejections:
Claims 1–10, 20–27, 29, and 30 have been rejected under 35 U.S.C.
§ 112(2) for indefiniteness in reciting the terms "welding-type" machine,
apparatus, or power supply, and "welder type enclosure." (Ans. at 3.)
Claims 1–27, 29, and 30 have been rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Latvis2 and Rosenthal3.

2 Steven D. Latvis and Ross C. Borchardt, U.S. Patent No. 5,734,148,
Retention Means for Side Panels for Welding Machine, issued 31 March
1998.
3 David J. Rosenthal et al., U.S. Patent No. 6,585,484 B2, Pivotal and
Removable Door for an Air Handler, issued 1 July 2003, based on
application 09/982,664, filed 18 October 2001.
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B. Findings of Fact
The following findings of fact and any set out in the Discussion are
supported by a preponderance of the evidence of record.
The 018 Specification
1. According to the specification, the invention relates generally to
welding type machines. (018 Specification at 1, ¶ 1.)
2. In the words of the specification, a
description of welding devices not only includes welders, but
also includes any system that requires such enclosures and/or
high power outputs, such as heating and cutting systems.
Therefore, the present invention is equivalently applicable with
any device requiring high power output, including welders,
plasma cutters, induction heaters, and the like. Reference to
welding power, welding-type power, or welders generally,
includes welding, cutting, or heating power.
(018 Specification at 8, ¶ 37.)
3. Prior enclosures for welders are said to have employed hinged side
panels that required "a great deal of space" between the welding-type
machine and adjacent objects or building walls. (018 Specification
at 1, ¶ 3.)
4. The invention is said to solve these problems by providing "[a]t least
one side panel [that] is removably attached to the base for selectively
opening and closing and providing access to the inside of the welding
machine." (018 Specification at 2, ¶ 6.)
5. In the described embodiments, the hinges are formed by hinge tangs
having a "generally S-shaped configuration," which are insertable into slots
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in the base of the welding-type machine, and which allow "selective
disengagement from the base." (018 Specification at 5, ¶ 8.)
6. In an embodiment illustrated in 018 Specification Figure 5, which is
shown below, the hinge tang is described in the following words:
{018 Specification Figure 5 is shown below:}4

{018 Specification Figure 5 is said to show a hinge tang.}
"Hinge tang 38 includes a hinge portion 42 that is generally perpendicular to
the door panel 12 and is arranged generally at an upper end of the hinge
tang 38." (018 Specification at 6, ¶ 28.)

4 The text in curly braces immediately preceding and following the Figures is
provided to ensure compliance with section 508 of the U.S. Rehabilitation
Act for publication of this Decision on the USPTO website pursuant to the
Freedom of Information Act. It is not part of the Decision.
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7. A "doorstop" structure is described in the following words:
A doorstop 44 is arranged at a lower end of the hinge tang 38.
The doorstop 44 includes an open stop 46 and a closed stop 48.
The open stop 46 is generally perpendicular to the door
panel 12, and the closed stop 48 is generally parallel to the door
panel 12. The open stop 46 extends perpendicularly from the
closed stop 48. The doorstop 44 is connected to the hinge
portion 42 via a transition portion 50 that is arranged generally
at a 45 degree angle to the door panel 12.
(018 Specification at 6, ¶ 28.)
8. The doorstop 44 is said to be connected to the hinge portion 42 via a
transition portion 50 that is arranged generally at a 45 degree angle to the
door panel 12. (018 Specification at 6, ¶ 28.)
9. According to the 018 Specification, the doorstop 44 is engagable with
two different portions of the base 14 to define the maximum open position
and the maximum closed position. (018 Specification at 6, ¶ 29.)
Latvis
10. Latvis describes welding machine enclosures intended to overcome
the requirement of prior art enclosures for "a great deal of space between the
welding machine and any adjacent objects or building walls." (Latvis
at 1:28-30.)
11. To remedy this deficiency, Latvis provides self-contained welding
machines having removably closable vibration proof side panels "that
require minimal space for installation and removal." (Latvis at 2:65–3:1.)
12. Latvis describes a welding machine with respect to Figure 3, which
we do not find necessary to reproduce here, having a base 3, side walls 31
and 33, the tops of which are bent to form horizontal ledges 39 and 43,
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respectively, which terminate in short vertical lips 41 and 45. (Latvis
at 3:6-10.)
13. On horizontal ledges 39 and 43, at the base of vertical lips 41 and 45,
are multiple slots, 47 and 49, and 43 and 44, respectively. (Latvis
at 3:11-15.)
14. According to Latvis, side panels 23 are provided with clips 69 that
register with slots 44 in base 3 (Latvis at 3:36–38) and fasteners (Latvis at
3:58-60) provide restoring forces to keep the side panels in place (Latvis
at 3:15-62).
15. Latvis describes the installation and removal of side panels 23 as an
essentially vertical motion. (Latvis at 3:64–67.)
Rosenthal
16. Rosenthal describes an air-handler enclosure 10 that has an
opening 12 that is closed by a removable pivotal door panel 14.
17. According to Rosenthal, the pivotal and removable door has "an
intermediate open position where the panel can be completely disengaged
from the enclosure." (Rosenthal at 1:43–45; see also Rosenthal Figure 4.)
18. Pivotal door panel 14 releasably engages a pivoting and securing
structure in the enclosure 10 via a four-fold alternatingly bent flange
(arbitrarily labeled (+) and (-) in the following description).
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19. The pivoting and securing structure is illustrated in Rosenthal
Figures 3 and 4, shown below:
{Rosenthal Figures 3 and 4 are shown below:}

{Rosenthal Figures 3 and 4 are said to show the pivoting door of an air
handler}
20. Starting from the main panel 14, the first (+) 90° bend provides a
surface parallel to the flange 32 of the lower peripheral edge of opening 12
when the door is fully open.
21. The second (-) 90° bend provides a surface parallel to the main
panel 14.
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22. The third (+) 90° and fourth (-) 90° bends provides a surface 46 that
engages a catch 48, which extends upwards from a bottom surface 50 of
enclosure 10, when the panel is fully open, as shown in Figure 3.
The Examiner's Rejections5
23. The Examiner rejected claims 1–10, 20–27, 29, and 30 as indefinite
under 35 U.S.C. § 112(2), holding that the terms "welding type machine"
(claims 1–10), "welding-type enclosure" (claims 20 [to 27]), "welding-type
power supply" (claims 20 [to 27]), "welder-type enclosure" (claims 29
and 30), and "welding-type" power (claim 30) are indefinite on the grounds
that the term "type" is not defined in the specification and that the claim
scope is therefore unascertainable. (Ans. at 3, bracketed text added.)
24. The Examiner rejected claims 1–27, 29, and 30 under 35 U.S.C.
§ 103(a) in view of the combined teachings of Latvis and Rosenthal. (Ans.
at 4.)
25. The Examiner found that Latvis disclosed a welding cabinet meeting
all the limitations of the claimed subject matter but for the substructures of
the hinge arrangements. (Ans. at 5.)
26. The Examiner found that Rosenthal disclosed a pivotal door assembly
for an air handler or similar device that was removable at some angles
between a fully open or fully closed position and that met all the structural
and functional properties required by the claimed subject matter. (Ans. at 5.)

5 See the Examiner's Answer mailed 18 January 2007 ("Ans.").
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27. The Examiner held that one of ordinary skill in the art would have
modified the enclosure and access panels taught by Latvis to take advantage
of the hinge arrangement taught by Rosenthal. (Ans. at 5–6.)
Radtke's Rebuttal6
28. Radtke argues that the Examiner has applied a per se rule of
indefiniteness to the use of the term "type" as it occurs in the claims, and
that the description in the specification at ¶ 37 (quoted supra at FF 2)
provides adequate guidance to those of ordinary skill in the art. (App. Br.
at 6-7.)
29. With regards to the rejections for obviousness, Radtke argues that the
Examiner erred first by failing to establish a motivation to combine the
references, which, Radtke maintains, are not in the same art. (App. Br. at 8.)
30. Moreover, according to Radtke, the combination is improper because
the teachings of Rosenthal are contrary to the teachings of Latvis. (App. Br.
at 8.)
31. Along the same lines, Radtke urges that there is no reasonable
expectation of successfully combining the air handler door taught by
Rosenthal with the welding enclosure assembly taught by Latvis because the
combination would be unsuited for the purpose intended by Latvis. (App.
Br. at 10-12.)
32. Finally, Radtke finds that the references do not describe all of the
elements recited in the claims. (App. Br. at 12–14.)
33. Radtke directs these arguments solely at the independent claims.

6 Appeal Brief filed 9 November 2006 ("App. Br.").
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34. With regard to claims 1 and 29, Radtke urges that Latvis does not
provide for side panels that can be "selectively opened or closed" because
the Latvis panels can only be removed. (App. Br. at 12 and at 14.)
35. Radtke argues further that because the combination with Rosenthal is
improper, the subject matter of claim 1 and its dependent claims are
distinguished over the prior art. (App. Br. at 12–13 and at 14.)
36. With regard to claim 11, Radtke argues that claim 11 requires that
"the side panels include a first end with at least one generally S-shaped
hinge tang that is insertable into the slot of a base." (App. Br. at 13.)
37. Radtke finds that Rosenthal does not disclose an S-shaped tang, and
argues that the Examiner's rejection must therefore be reversed. (App. Br.
at 13.)
38. With regard to claim 20, Radtke argues that the Examiner's rejection
must be reversed because Rosenthal fails to disclose "a hinge having a
transition portion connecting a perpendicular hinge portion to a doorstop, as
called for in claim 20." (App. Br. at 13.)
39. According to Radtke, in Rosenthal's hinge, "the peripheral edge 34 is
connected directly to lip 30, without the presence of a transition portion."
(App. Br. at 13–14.)
40. Radtke does not direct our attention to a definition of a "transition
portion" in this context in the specification or within the general knowledge
of those of ordinary skill in the art.

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C. Discussion
On appeal, the initial procedural burden is on the Applicant to
demonstrate reversible error in the Examiner's rejections. Arguments which
Applicant could have made but chose not to make in the principal brief are
deemed to have been waived. 37 C.F.R. § 41.37(c)(1)(vii).
Indefiniteness
The Examiner has rejected claims 1–10, 20-27, 29, and 30 as
indefinite in the term "type," on the grounds that the scope of the claims
cannot be ascertained. (Ans. at 3.)
The Federal Circuit has explained that "[i]f [a] claim is subject to
construction, i.e., it is not insolubly ambiguous, it is not invalid for
indefiniteness." Bancorp Services, L.L.C. v. Hartford Life Insurance Co.,
359 F.3d 1367, 1371 (Fed. Cir. 2005) (citations omitted.) The court has
explained further that "[d]etermining whether a claim is definite requires an
analysis of ‘whether one skilled in the art would understand the bounds of
the claim when read in light of the specification. If the claims read in light
of the specification reasonably apprise those skilled in the art of the scope of
the invention, § 112 demands no more.’" Personalized Media
Communications, LLC v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (internal
quotation marks and citations omitted).
We begin by considering the claims themselves. The terms "welding-
type machine" (claim 1), "welding-type enclosure," and "welder-type
enclosure" (claims 29, 30) occur in the preambles of the claims. A preamble
is not accorded significant weight in the definition of claimed subject matter
to the extent that it is merely a nametag or label for the subject matter
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defined by the limitations recited in the body of the claims. It is only when
terms in the preamble "give life and meaning to the claim" that they are
given patentable weight. Bristol-Myers Squibb Co. v. Ben Venue Labs. Inc.,
246 F.3d 1368, 1373–74 (Fed. Cir. 2001) ("If the body of the claim sets out
the complete invention, and the preamble is not necessary to give 'life,
meaning and vitality' to the claim, 'then the preamble is of no significance to
claim construction because it cannot be said to constitute or explain a claim
limitation.' Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)."). In the present case, the Examiner has not directed our
attention to any limitations recited in the body of the claims that refer back
to the preamble or rely on the preamble in such a way that the preamble
terms constitute or explain any of the subsequent limitations.
Nor has the Examiner explained how the term "welding-type power
supply," which occurs in the body of claim 20 as a limitation on the base of
the enclosure, or how the term "welding-type power," which occurs in the
body of claim 30 as a limitation on the "welding-type enclosure," are
"insolubly indefinite."
It is hornbook patent law that breadth is not indefiniteness. In re
Gardner, 427 F.2d 786, 788 (CCPA 1970). It is also hornbook patent law
that during patent examination “the PTO applies to the verbiage of the
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Considering the plain language of claim 20, we conclude, on the
present record, that the recited base, which is part of the claimed "hinge
arrangement," must be substantial enough to support a power supply capable
of "welding." Claim 20, unlike claim 11, does not specify what sorts of
materials are to be welded. We shall not read limitations from the
specifications into the claims. Johnson Worldwide Assoc., Inc. v. Zebco
Corp., 175 F.3d 985, 992 (Fed. Cir. 1999) (“mere inferences drawn from the
description of an embodiment of the invention cannot serve to limit claim
terms”). Similarly, claims 29 and 30 do not specify any sort of material that
must be welded. Accordingly, we conclude that as long as a given power
supply can provide enough power to weld any sort of material, the "welding-
type power" and "welding-type power supply" limitations are met.
The Examiner's rejections of claims 1–10, 20-27, 29, and 30 as
indefinite are REVERSED.
Obviousness
The Examiner found that Latvis describes a welding enclosure
meeting all the limitations of the claimed subject matter but for the
substructures of the hinge arrangements. The Examiner found further that
Rosenthal teaches structures of the hinge units meeting those limitations in
Radtke's claims. The Examiner then held claims 1–27, 29, and 30
unpatentable under 35 U.S.C. § 103(a) in view of the combined teachings of
Latvis and Rosenthal. (Ans. at 4.)
Radtke's argument that the Examiner failed to establish motivation to
combine the references because the references are not both in the same art
(welding) is misplaced. The relevant art relates to enclosures for machinery,
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the enclosures having panels that can be opened and removed. Moreover, as
we held supra, the nature of the machinery is not narrowly specified. But air
handlers can contain motors of significant power, so even if such limitations
were significant in these claims, we have no doubt that the ordinarily skilled
mechanic concerned particularly with enclosures for welding machinery
would look to a wide variety of enclosures, including enclosures for air
handlers such as those described by Rosenthal.
Radtke's argument that the Examiner's rejection fails for lack of a
reasonable expectation of success is based on a similar failure to appreciate
the scope of the claimed subject matter. Latvis is concerned to an extent
with problems of access panels for machinery situated in tight quarters.
(See, e.g., Latvis at 1:28–30; FF 10.) One of ordinary skill in the relevant art
would have considered Rosenthal's teachings of pivoting panels that can be
removed at fairly steep angles (see, e.g., Figure 4, shown supra at FF 19) to
provide a reasonable expectation of successfully modifying the panels and
enclosures taught by Latvis and obtaining panels selectively removable in
tight quarters.
Except for arguing that Latvis does not teach the "selectively opened
or closed" requirement, Radtke does not contest the Examiner's findings that
Latvis teaches all claim limitations but for the hinge structures. In
particular, Radtke argues that because the panels of Latvis can only be
removed, they cannot be "selectively opened or closed." (FF 34; App. Br.
at 12–13 and at 14.) This argument is misplaced because Rosenthal teaches
panels that can be opened and closed, and we have determined that Radtke
has failed to show that the teachings of Latvis and Rosenthal have been
combined improperly. Attacks on a conclusion of obviousness cannot be
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sustained by attacks on the references individually. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
Radtke urges that claim 11 requires an S-shaped hinge tang, and that
because the hinge tangs taught by Rosenthal are not S-shaped, the
Examiner's rejection fails. (App. Br. at 13.) A review of the plain language
of claim 11, which is reproduced supra, shows it contains no express
"S-shaped" limitation on the hinge tangs. Radtke has not explained, nor is it
apparent, that such a limitation is required by the claim language. Although
arguably S-shaped hinge tangs may be described in the specification, we
shall not read limitations from the specification into the claims. Johnson,
175 F.3d at 992.
Finally, Radtke argues that Rosenthal does not disclose a "hinge
having a transition portion connecting a perpendicular hinge portion to a
doorstop, as called for in claim 20." (App. Br. at 13.) Instead, according to
Radtke, Rosenthal teaches a hinge in which "the peripheral edge 34 is
connected directly to lip 30, without the presence of a transition portion."
(App. Br. at 13-14.) This argument is not persuasive because claim 20
requires only the presence of "a transition portion connecting the hinge
portion of the doorstop." The claim does not recite what the hinge portion
must be connected to via the transition portion. Moreover, Radtke has not
directed our attention to any definition of the term "transition portion" in the
specification. We have noted the description of a transition portion 50 in
Figure 6 of Radtke's specification (FF 7), but, as our reviewing court has
instructed, “mere inferences drawn from the description of an embodiment
of the invention cannot serve to limit claim terms.” Johnson, 175 F.3d
at 992. Moreover, read broadly, any two distinct structures are connected by
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a "transition portion," even if that portion is a mere connection or weld. In
any event, the "doorstop" appears to be met by the structure labeled 46 in
Rosenthal Figure 3 (FF 19). The Rosenthal hinge portion that is "generally
perpendicular to the panel" and thus corresponds structurally and
functionally to Radtke structure 42 (Radtke Figure 5) is connected to
doorstop 46 by the segment labeled 38 in Rosenthal Figure 5 (not shown
here). Thus, that segment 38 is a "transition portion" within the meaning of
claim 20.
We have found none of Radtke's assessments of Examiner error
persuasive. Accordingly, we AFFIRM the Examiner's rejections of
claims 1–27, 29, and 30 as obvious in view of the combined teachings of
Latvis and Rosenthal.
E. Summary
In view of the foregoing considerations, it is
ORDERED that the rejection of claims 1–10, 20–27, 29, and 30
under 35 U.S.C. § 112(2) is REVERSED;
FURTHER ORDERED that the rejection of claims 1–27, 29,
and 30 under 35 U.S.C. § 103(a) in view of the combined teachings of Latvis
and Rosenthal is AFFIRMED.
FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal may be extended under 37
C.F.R. § 1.136(a).
AFFIRMED

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