Ex Parte Rozmarynowski et alDownload PDFPatent Trial and Appeal BoardJan 22, 201813118076 (P.T.A.B. Jan. 22, 2018) 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. 13/118,076 05/27/2011 Scott Ryan Rozmarynowski 60008/YOD (ITWO:0499) 8890 52145 7590 01/24/2018 FLETCHER YODER (ILLINOIS TOOL WORKS INC.) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): docket@fyiplaw.com sinclair@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT RYAN ROZMARYNOWSKI and DAVID L. KNOLL Appeal 2016-006100 Application 13/118,0761 Technology Center 3700 Before JENNIFER D. BAHR, WILLIAM A. CAPP, and ANTHONY KNIGHT, Administrative Patent Judges. KNIGHT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Illinois Tool Works Inc. Appeal Br. 2. Appeal 2016-006100 Application 13/118,076 CLAIMED SUBJECT MATTER The claims are directed to “welding systems, and, more particularly, to a welding power supply with a power take-off (PTO) shaft.” Spec. 12. Claims 1 and 11 are independent. Claim 1 reproduced below, is representative of the claimed subject matter: 1. A welding power supply, comprising: an engine having an output shaft; a generator coupled to the engine and driven by the output shaft to generate power for a welding application; and a power take-off shaft coupled to the generator on a side of the generator opposite the engine and driven by the output shaft, wherein the power take-off shaft is configured to drive one of a plurality of auxiliary attachments. Appeal Br. 16 (Claims App.) (emphasis added). REJECTIONS The Examiner made the following rejections: I. Claims 1—4, 9—12, and 15—17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bender (US 7,105,774 B2, issued Sept. 12, 2006) and Loeffler (US 2010/0107624 Al, published May 6, 2010). II. Claim 5—8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bender, Loeffler, and Risley (US 2,463,907, issued Mar. 8, 1949). 2 Appeal 2016-006100 Application 13/118,076 OPINION Rejection I— The rejection of claims 1—4, 9—12, and 15—17 under 35 U.S.C. § 103(a) Claim 1 The Examiner finds that Bender teaches all of the limitations of claim 1 with the exception of a power take-off shaft. Final Act. 3. The Examiner relies upon Loeffler to teach connecting a power take-off shaft to a generator. See id. (“Loeffler comprises an auxiliary hydraulic pump 62 that has a drive shaft 63 that coupled to a power take-off unit 40 (power take off shaft, Fig. 1) driven by engine (Abstract lines 3-5) through clutch 68.”). According to the Examiner, the “system of Bender [is] modified with the power take off unit of Loeffler on a side of the generator opposite the engine to provide versatile power sources for multiple parts of a welder.” Id. In responding to Appellants’ arguments, the Examiner adds that “Loeffler shows the power take off shaft 40 on the side of generator 24 opposite of prime mover 22 (engine, Fig. 1 ).” Id. at 5. Appellants contend that “Bender and Loeffler, taken alone or in hypothetical combination with one another, do not teach or suggest a welding power supply having a power take-off shaft coupled to a generator of the welding power supply and disposed on a side of the generator opposite an engine.” Appeal Br. 6 (underlining omitted). Next, Appellants argue that “reference numeral 24 of Loeffler denotes the entire vehicle drive system 24 . . . Nothing in Loeffler suggests that the vehicle drive system 24 is a generator (e.g., an electrical generator). Indeed, Loeffler does not appear to disclose any generator at all.” Appeal Br. 8 (underlining omitted). Appellants add to the argument by stating that “FIG. 3 Appeal 2016-006100 Application 13/118,076 1 of Loeffler appears to merely schematically represent the power take-off device 40 of Loeffler without any indication of a spatial relationship between the vehicle drive system 24 and the power take-off device 40.” Id. (emphasis added). The Examiner responds to Appellants’ argument by stating [w]ith regards to applicants arguments concerning “spatial relationship” . . . Appellant is reminded that it is the language of the claims [that] defines the patentable subject matter, not the detailed description of the invention or the drawings. Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is quite different from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the language of the claim. In re Prater, 162 USPQ 541 (CCPA 1969). The claim language does not require . . . extensive rework or redesign. Ans. 3^4. A review of the prior art is in order to begin the analysis. A copy of Figure 2 of Bender is reproduced below, as annotated by the Board. 4 Appeal 2016-006100 Application 13/118,076 Bender Figure 2 is a partial cut away view of the side of the engine welder showing an engine coupled to a shaft that is in turn coupled to a generator. As shown in Figure 2, electrically operated air compressor 250 is positioned behind the generator with electric contact connector/switch 300 for plug 260. See Bender 10:59-11:37. Loeffler, Figure 1, is provided below with the relevant portion of the figure annotated by the Board. Figure 1 of Loeffler illustrates “a diagrammatic illustration of an exemplary vehicle drive system including a power drive unit.” Loeffler 111. Loeffler discloses a power take off (PTO) 40 that connects to hydraulic pump 62 through clutch 68. See Loeffler 125. (“In the illustrated preferred embodiment, the PTO device 40 is coupled by a sprag (one-way) clutch 68 to the auxiliary pump drive shaft 63. The auxiliary hydraulic motor 65 likewise is coupled to the drive shaft of the pump by a sprag (one way) clutch 70.”). 5 Appeal 2016-006100 Application 13/118,076 Considering the rejection based upon the combination of Bender and Loeffler, the arguments of Appellants, and the response of the Examiner, we believe that Appellants have the better position. Loeffler does not support the Examiner’s finding that Loeffler shows a power take off shaft on the side of a generator opposite of a prime mover. According to Dictionary.com, the word “generator” has the following meaning: “a machine that converts one form of energy into another, especially mechanical energy into electrical energy, as a dynamo, or electrical energy into sound, as an acoustic generator.” Dictionary.com, http://www.dictionary.com/browse/generator (last accessed January 10, 2018). Hydraulic pump 62 does not convert energy from one form to another and thus is not a generator. It is noted that Loeffler does disclose an alternate embodiment. See Loeffler 126. (“While other arrangements are contemplated, in the illustrated embodiment the PTO device 40 is drivingly connected to the input shaft 26 through the transmission assembly 37 which may include one or more clutches for disengaging the PTO output shaft from the engine.”). Likewise, the transmission assembly 37 of Loeffler does not convert energy from one form to another and is thus not a generator. Even if the cited references include the limitations found by the Examiner, the Examiner’s analysis lacks articulated reasoning with rational underpinnings without reliance on hindsight. “[Rejections on 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 International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting with approval In re Kahn, 441 L.3d 977, 988 (Led. Cir. 2006)). The Examiner’s stated reason for 6 Appeal 2016-006100 Application 13/118,076 making the combination does not explain adequately why one of ordinary skill in the art would have desired to modify the welding engine taught by Bender with the power take off taught by Loeffler. The reason proffered by the Examiner, i.e., “to provide versatile power sources for multiple parts of a welder,” is insufficient because this function is already provided by Bender’s generator and the electric contact connector/s witch 300. Appeal Br. 10. The Examiner’s conclusory rationale does not indicate why one of ordinary skill in the art would, nonetheless, have desired to modify Bender’s welding engine, let alone specifically with Loeffler’s power take off. Lacking a sufficient supporting rationale, we agree with Appellants that the rejection appears to improperly rely on hindsight reconstruction and, thus, fails to establish obviousness of the claimed subject matter. For the reasons as stated above, we do not sustain the Examiner’s rejection of claim 1. Claims 9, and 10 Claims 2—4, 9, and 10 depend from claim 1. Appeal Br. 16 (Claims App.). The Examiner’s additional findings in the rejection of these claims does not overcome the deficiency in regard to claim 1 identified above. See Final Act. 2-4. Accordingly, for the same reasons as discussed supra, the rejection of claims 2—4, 9, and 10 is not sustained. Claims 11, 12, and 15—17 Claims 11, 12, and 15—17 are rejected over Bender and Loeffler. See id. Claim 11 is directed to a welding power supply similar to claim 1. See 7 Appeal 2016-006100 Application 13/118,076 Appeal Br. 17—18 (Claims App.). The Examiner’s rejection of claim 11 relies on the same deficient findings and reasoning as for claim 1. See Final Act. 2-4. Accordingly, we do not sustain the rejection of claim 11 or claims 12 and 15—17 depending therefrom. Rejection II— The rejection of claims 5—8, 13 and 14 under 35 U.S.C. § 103(a) Claims 5—8 depend from claim 1 and claims 13 and 14 depend from claim 11, with all of the claims rejected based upon the combination of Bender, Loeffler and Risley. See Final Act. 4—5. The Examiner’s rejection of claims 5—8 and claims 13 and 14 does not overcome the deficiency identified above for the rejection of claims 1 and 11, respectively. In this regard, the Examiner does not rely on Risley for any teaching that makes up for the deficiency in the combination of Bender and Loeffler in regard to claims 1 and 11 respectively. Accordingly, for the same reasons discussed supra, the rejection of claims 5—8 and claims 13 and 14 is not sustained. DECISION The Examiner’s decision to reject claims 1—17 under 35 U.S.C. § 103 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation