Ex Parte Scholz

Patent Trial and Appeal Board

Aug 22, 2018

13720433 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/720,433 12/19/2012
10800 7590 08/31/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Reinhard Scholz
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.
2179-0168 7089
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
08/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINHARD SCHOLZ
Appeal 2016-007588
Application 13/720,433
Technology Center 1700
Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Dec. 19, 2012 ("Spec."); Non-Final Office Action dated Aug. 20, 2015 ("Non-
Final"); Appeal Brief filed Jan. 11, 2016 ("Br."); and Examiner's Answer dated
May 25, 2016 ("Ans.").
Appeal 2016-007588
Application 13/720,433
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision
twice rejecting claims 2, 3, 6-8, 10, 11, 13, and 16-23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a welding system, an embodiment of which is
shown in the Figure, reproduced below. Spec. 5.
"The figure shows a schematic illustration of a welding system ... based on a
cabinetless configuration." Id. The welding system may have a fastening (not
shown) for attachment to a robot installation. Id. at 4. The welding system
includes a housing comprising baseplate 102 and wall 104. Id. at 5. Plastic cap
228 is placed over the housing. Id. at 8. "The housing may be configured to be
impermeable to spray from all sides." Id. at 3. The space enclosed by the housing
2 Appellant is the applicant and the real party in interest, Robert Bosch GmbH. Br.
2.
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Application 13/720,433
contains a plurality of welding components, including main switch 210, mains
connection 212, operator control element 214, welding controller 216, printed
circuit board 218, converter 220, cooler 222, and network connection 224. Id. at 6;
see also id. at 2 ("Apart from the actual welding device, for example a pair of
welding pliers, the plurality of welding components may comprise all components
which are required for a welding system."). "[I]ndividual welding components
from the plurality of welding components may be arranged so as to be stacked
above one another." Id. at 2. The interior of the housing may be divided into a
first region for the plurality of welding components and a second region, arranged
next to the first region, for at least one further welding component, such as a
component of a drive system, a customer-specific module, or a power supply unit.
Id. at 4. The plurality of welding components further comprises a connecting
device, e.g., connecting rail 226, for connecting at least one welding component
from the plurality of welding components to the at least one further welding
component. Id. at 2, 6. In the embodiment illustrated in the Figure, connecting rail
226 is arranged on a surface of baseplate 102, and leads into the customer-specific
region of the housing. Id. at 7. As further shown in the illustrative embodiment,
"the customer-specific region is arranged on one half of baseplate 102, with the
result that the customer-specific modules can be arranged next to the other welding
components 210,212,214,216,218,220,222,224,226 at the side." Id. As an
alternative, the customer-specific region may be arranged at the top or bottom,
such that the customer-specific modules are arranged between the baseplate and
the plurality of welding components, or the plurality of welding components are
arranged between the baseplate and the customer-specific modules. Id.
Independent claims 6 and 22 are representative of the appealed claims, and
are reproduced below.
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Application 13/720,433
6. A welding system comprising:
a housing comprising a cover including a baseplate, a
circumferential wall, and a lid, the housing enclosing an interior
region which includes a first region and a second region adjacent to
the first region;
a connecting rail arranged on a surface of the baseplate;
a plurality of welding components arranged on the connecting
rail in the first region; and
at least one further welding component arranged on the
connecting rail in the second region,
wherein the connecting rail is configured to connect at least one
of the plurality of welding components to the at least one further
welding component, and
wherein the housing is impermeable to spray from all sides in
such a way that the interior region is protected from spray from all
sides.
22. A welding system comprising:
a housing comprising a cover including a baseplate, a
circumferential wall, and a lid, the housing enclosing an interior
region, which includes an entire interior volume of the housing, the
interior region including a first region defined in approximately a first
half of the interior region and a second region adjacent to the first
region and defined in approximately a second half of the interior
reg10n;
a connecting rail arranged on a surface of the baseplate,
a plurality of welding components arranged on the connecting
rail in the first region; and
at least one further welding component arranged on the
connecting rail in the second region,
wherein the connecting rail is configured to connect at least one
of the plurality of welding components to the at least one further
welding component.
Br. 21, 23 (Claims Appendix).
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Appeal 2016-007588
Application 13/720,433
The Examiner maintains the following grounds of rejection on appeal:
1. claims 2, 3, 6-8, 10, 11, 13, and 16-23 under 35 U.S.C. § 112 (pre-
AIA), first paragraph, or 35 U.S.C. § 112(a) as failing to comply with the written
description requirement;
2. claim 22 3 under 35 U.S.C. § 112 (pre-AIA), second paragraph, or 35
U.S.C. § 112(b) as indefinite;
3. claims 2, 3, 6, 8, 10, 11, 13, and 16-23 under 35 U.S.C. § I03(a) as
unpatentable over Di Novo (US 6,596,972 Bl, issued July 22, 2003) in view of
Achtner (US 6,489,591 Bl, issued Dec. 3, 2002); and
4. claim 7 under 35 U.S.C. § I03(a) as unpatentable over Di Novo and
Achtner, further in view ofBrietbach (US 2008/0011729 Al, published Jan. 17,
2008).
Rejection of claims 2, 3, 6-8, 10, 11, 13, and 16-23 under 35 US.C. § 112 (pre-
AIA),firstparagraph, or 35 US.C. § 112(a)
The Examiner finds the claim 6 recitation of "a plurality of welding
components arranged on the connecting rail in the first region" is not supported by
the written description because welding "components 210, 212, 214, 216, 218, 220,
222 are not on the connecting rail 226." Non-Final 3 (citing Spec. 6-7; Fig. 1).
The Examiner finds the written description fails to support a similar recitation in
claim 22, and further finds there is no support for the claim recitations requiring
that the first and second regions are defined in respective first and second halves of
the interior region. Id. at 3--4.
To satisfy the written description requirement, "the specification must
describe the invention in sufficient detail so 'that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing date
3 The rejection of claim 17 on this ground has been withdrawn. Ans. 10.
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Application 13/720,433
sought."' In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quoting Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
The Specification discloses that the interior of the housing may be divided
into a first region for the plurality of welding components and a second region,
arranged next to the first region, for at least one further welding component, such
as a customer-specific module. Spec. 4. The Specification describes the plurality
of welding components as including connecting rail 226, and discloses that
connecting rail 226 may be arranged on a surface of baseplate 102 and "lead[] into
a customer-specific region of the housing." Id. at 6-7. The Specification further
discloses that "individual welding components from the plurality of welding
components may be arranged so as to be stacked above one another." Id. at 2.
Given these descriptions, we are persuaded by Appellant's argument that
one of ordinary skill in the art would recognize that the invention encompasses an
embodiment as depicted in the Figure wherein a portion of connecting rail 226, as
one of the plurality of welding components, is located in the first region, arranged
on baseplate 102 with one or more of the plurality of welding components stacked
above/on connecting rail 226. See Br. 6 ("[T]he portion of the connecting rail
(226) under the welding components is largely obscured by an unnumbered plate
that is apparent in the Figure, but it can nonetheless be reasonably determined that
the connecting rail (226) continues under the welding components."). We are also
persuaded by Appellant's argument, Br. 8, that one of ordinary skill in the art
would recognize from the embodiment as depicted in the Figure that the invention
encompasses a housing wherein the first and second regions are defined in
respective first and second halves of the interior region. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (explaining that the drawings
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Application 13/720,433
alone may provide "written description" of the invention as required by the first
paragraph of§ 112).
For the above reasons, we do not sustain the rejection of claims 2, 3, 6-8,
10, 11, 13, and 16-23 under 35 U.S.C. § 112 (pre-AIA), first paragraph, or 35
U.S.C. § 112(a) as failing to comply with the written description requirement.
Rejection of claim 22 under 35 USC§ 112 (pre-AJA), second paragraph, or 35
USC§ l 12(b) as indefinite
Claim 22 recites "at least one further welding component arranged on the
connecting rail in the second region." The Examiner determines
[ c ]laim 22 is indefinite because it is unclear how the connecting rail
has a further component in a second region ( second half) of the
interior region when it appears that the connecting rail 226 is only one
small part located in one region. The connecting rail does not appear
to be in both a first half and second half of the interior region.
Non-Final 4--5.
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir.
2014). "[C]laim definiteness depends on the skill level of an ordinary artisan.
Therefore, the specification need only disclose adequate defining structure to
render the bounds of the claim understandable to an ordinary artisan." Telcordia
Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010) (internal
citations omitted).
We agree with Appellant that this rejection appears to stem from the
Examiner's finding that the written description fails to support the connecting rail
being located in two regions of the housing interior. See Br. 10; Ans. 12 ("The
connecting rail 226 is only shown in one small portion of the interior region.
The connecting rail does not appear to be in two different halves of the interior
region, so the connecting rail could not have a further welding component arranged
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Application 13/720,433
on the connecting rail in the second region."). As discussed above, the Examiner
erred in this finding. Accordingly, we are not persuaded that the language of claim
22 is unclear, and we do not sustain the rejection of claim 22 under 35 U.S.C. §
112 (pre-AIA), second paragraph, or 35 U.S.C. § 112(b) as indefinite.
Rejection of claims 2, 3, 6, 8, 10, 11, 13, and 16-23 under 35 USC§ 103(a) as
unpatentable over Di Novo in view of Achtner
Claim 6
The Examiner finds Di Novo discloses the invention as claimed with the
exception of a connecting rail and welding components positioned thereon. Non-
Final 5---6. The Examiner finds Achtner discloses a welding system that includes a
connector rail on which welding components are located on both halves of the
interior. Id. at 6. The Examiner finds the ordinary artisan would have used a
connecting rail, as taught by Achtner, in Di Novo's welding system "to align and
place all the components on in a housing to ensure that they are all secure and
placed in the correct location." Id. at 6.
Appellant argues the Examiner has not identified persuasive evidence to
support a finding that Di Novo explicitly or inherently discloses a "housing [that]
is impermeable to spray from all sides in such a way that the interior region is
protected from spray from all sides," as recited in claim 6. Br. 12-13. Appellant's
argument is not persuasive for the reasons explained in the Answer. See Ans. 13.
We agree with the Examiner that claim 6 does not recite explicitly the type of
spray, or that the housing is completely sealed. Id. Nor does the Specification
support a narrow interpretation of claim 6 as so limited. Rather, the Specification
broadly discloses that "[t]he housing may be configured to be impermeable to
spray from all sides . . . . The housing may be configured such that it affords
complete protection against contact and protects the plurality of welding
components against dust in a harmful quantity." Spec. 3. Given this broad
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Application 13/720,433
disclosure, it was reasonable for the Examiner to determine that claim 6 reads on a
housing that includes vents, or other openings, provided that the housing is
impermeable to spray in the form of large objects or particles. See Ans. 13.
Appellant has not refuted the Examiner's finding that Di Novo does not depict in
the Figures, or otherwise describe, any openings in the housing. See Br. 12-13.
Moreover, even if there were some vents in the housing, the Examiner's
determination that Di Novo's housing would be impermeable to a spray of large
particles is reasonable, because under the broadest reasonable interpretation of the
claim term "spray," the size of particles in the spray is not limited.
Appellant argues Achtner teaches away from using the components of the
system described therein and their associated PCB in a system in which the
housing is sealed. Br. 14. Appellant argues that "[ c ]onsequently, one of ordinary
skill in the art would not have been motivated to use Achtner' s components and
PCB in a housing that is impermeable to spray from all sides." Id. Appellant's
argument is not persuasive because it is not directed to the facts and reasons relied
on by the Examiner in rejecting the claims. More specifically, the Examiner's
rejection is not based on using all of Achtner's components in Di Novo. Rather,
the Examiner finds Di Novo itself discloses a plurality of welding components, and
relies on Achtner merely for a teaching of using a connecting rail for aligning and
securing components in a housing. See Non-Final 5---6; Ans. 14. Moreover, we do
not agree that Achtner's use of vents in the disclosed housing constitutes a teaching
away from using Achtner's components and their associated PCB in a housing that
is impermeable to spray from all sides. See Br. 14. As explained above, claim 6 is
not limited to a particular size of particles in the spray, and, therefore, claim 6
encompasses a housing having openings as long as the openings are of a size that
prevents permeation of the particles in the spray.
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Application 13/720,433
Appellant argues the structure on which Achtner's electronic components
are supported is not a "connecting rail" as claimed. Br. 15. In support of this
argument, Appellant, relying on a general dictionary definition, contends the term
"connecting rail" should be construed as "requir[ing] a bar, or multiple bars,
extending between supports so as to connect welding components." Id. at 15-16.
Appellant argues "[t]he structure of Achtner alleged to correspond to the claimed
connecting rail is merely a PCB, [and] ... has no bars, or anything that could
reasonably be considered a 'rail"' as claimed. Id. at 16.
"Absent an express definition in their specification, the fact that appellants
can point to definitions or usages that conform to their interpretation does not make
the PTO's definition unreasonable when the PTO can point to other sources that
support its interpretation." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). "It
is well established that dictionary definitions must give way to the meaning
imparted by the specification." In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir.
2006).
We agree with the Examiner that Appellant's proposed definition of
"connecting rail" as requiring a bar or bars extending between supports is
inconsistent with the description in the Specification. See Ans. 14. As noted by
the Examiner, the Figure depicts the connecting rail as a flat plate and the
Specification does not otherwise describe its shape. Id. Thus, if Appellant's
proposed definition is applied, claim 6 would not appear to encompass the
embodiment described in the Figure. Id.; see Br. 2 ( citing reference numeral 226
in the Figure as falling within the scope of "a connecting rail" as recited in claim
6). Further, Appellant's use of a general dictionary definition of "rail" in support
of its proposed construction of "connecting rail," fails to take into account the
adjective "connecting." See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885
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Application 13/720,433
(Fed. Cir. 2008) ( "[C]laims are interpreted with an eye toward giving effect to all
terms in the claim." (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006))). For example, it is unclear whether interpreting "connecting
rail" as a bar or bars extending between supports would encompass "a heel rail for
a drive system, for example Indradrive," Spec. 7, which is the sole example of a
connecting rail described in the Specification. Cf Accent Packaging, Inc. v.
Leggett & Platt, Inc. (Fed. Cir. 2013) ("[A] claim interpretation that excludes a
preferred embodiment from the scope of the claim is rarely, if ever, correct."
(quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d
1133, 1138 (Fed. Cir. 2004))). Accordingly, we are not persuaded by Appellant's
argument.
For the above reasons, we are not persuaded of error in the Examiner's
conclusion of obviousness as to claim 6, and sustain the Examiner's rejection of
this claim under 35 U.S.C. § 103. Because Appellant relies on the same arguments
in support ofpatentability for claims 2, 3, 8, 11, 13, and 16-23, see Br. 16 and 18-
19, we likewise sustain the Examiner's rejection of these claims under 35 U.S.C. §
103.
Claim 10
Claim 10 depends from claim 6, and recites "a fastening configured to attach
the welding system to a robot installation." Br. 22, Claims Appendix. The
Specification discloses that "[ fJor a robot application, for example, the welding
system can be mounted on or by a robot or can be used in conjunction with a pair
of tongs or a water/compressed air installation." Spec. 2.
The welding system may have a fastening ... arranged on an outer
side of a housing of the welding system or on the baseplate. By way
of example, the fastening may be in the form of an L-profile. The
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Application 13/720,433
fastening can be used to set up the welding system on a robot cabinet,
for example.
Spec. 4.
Appellant contends the Examiner reversibly erred in finding Di Novo's
fastening/landing 82 is capable of fastening the welding system to a robot
installation. Br. 17-18; see Non-Final 7. Appellant maintains Di Novo's landing
82 is a portion of gun holder 80, which is designed to support a portion of the
welding gun or torch head, and "is likely not even capable of supporting the entire
welding system on a robot installation." Br. 18. Appellant contends the Examiner
failed to meet the requirement to establish that the prior art apparatus was ""'made
to," "designed to," or "configured to"' be operated in the claimed configuration."
Br. 17-18 (quoting In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014)). In
Giannelli, the court found that the Board erred in determining a claim directed to a
rowing machine was obvious because a rowing exercise could be performed on the
prior art chest press. Giannelli, 739 F.3d at 1380. Rather, the court stated that the
Board should have determined "whether it was obvious to modify the chest press
machine to contain handles 'adapted to' perform the rowing motion by pulling on
them." Id.
We do not agree with Appellant that the Examiner's fact finding and
reasoning is insufficient under Giannelli. Unlike the rowing machine in Giannelli,
"[t]he robot installation is not positively required and the structure of the robot
installation is not defined." Ans. 15. "Since Di Novo discloses an apparatus used
to hold something (torch or welding gun)," it was reasonable for the Examiner to
find that "the holder can be used to hold/fasten a robot installation." Id. Further,
as explained by the Examiner, claim 10 does not require that the fastening
configuration support the welding system. Id. Accordingly, we sustain the
rejection of claim 10 under 35 U.S.C. § 103.
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Rejection of claim 7 under 35 US.C. § 103(a) as unpatentable over Di Novo and
Achtner, further in view of Brietbach
Appellant's argument in support of patentability of claim 7 is limited to a
contention that Brietbach fails to remedy the deficiencies in the rejection of claim
6. Br. 20. Because we are not convinced of reversible error in the Examiner's
rejection of claim 6, we likewise sustain the rejection of dependent claim 7.
In sum, the Examiner's rejections under 35 U.S.C. § 112 are reversed, but
the rejections under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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