Ex Parte Speilman et al

Patent Trial and Appeal Board

Jan 17, 2017

13005393 (P.T.A.B. Jan. 17, 2017)

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.
13/005,393 01/12/2011 Brandon John Speilman 23154/YOD (ITWO:0459) 2394
52145 7590 01/19/2017
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
01/19/2017 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 BRANDON JOHN SPEILMAN and
PETER DONALD MEHN
Appeal 2014-009623
Application 13/005,393
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brandon John Speilman and Peter Donald Mehn (Appellants)1 appeal
under 35U.S.C. § 134 from the Examiner’s final decision rejecting claims
1—20, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Illinois Tool Works Inc.
Appeal Br. 2.
Appeal 2014-009623
Application 13/005,393
THE CLAIMED SUBJECT MATTER
Claims 1, 9, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A welding wire feeder system comprising:
a wire drive configured to contact a welding wire and to
drive the welding wire towards a welding application;
an electric motor assembly coupled to the wire drive and
configured to force rotation of the wire drive during operation,
the electric motor assembly being selected from a plurality
o’ ‘Z i- o’
of electric motor assemblies useable on the wire feeder;
drive circuitry coupled to the electric motor assembly and
configured to apply drive signals to the electric motor assembly
in operation; and
control circuitry coupled to the drive circuitry and
configured to apply control signals to the dri ve circuitry based
upon which electric motor assembly is selected, wherein the
control circuitry is field configurable to drive each of the
plurality of electric motor assemblies based upon configuration
parameters stored in the control circuitry.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
West US 5,260,545 Nov. 9, 1993
Flattinger US 2007/0119840 A1 May 31, 2007
REJECTIONS
I. Claims 1—4 and 6—20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Flattinger. Final Act. 2-4.
II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Flattinger and West. Id. at 4—5.
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Application 13/005,393
OPINION
Rejection I
Claims 1, 3, 4, 9, 10, 15, 16, and 18—20
Appellants argue claims 1, 3, 4, 9, 10, 15, 16, and 18—20 as a group.
Appeal Br. 5—11. We select claim 1 as the representative claim, and claims
3, 4, 9, 10, 15, 16, and 18—20 stand or fall with claim 1. 37 C.F.R.
§41.37(c)(l)(iv)(2014).
The Examiner finds that Flattinger discloses all of the limitations of
independent 1, including, inter alia, “control circuitry . . . configured to
apply control signals to the drive circuitry based upon which electric motor
assembly is selected, wherein the control circuitry is field configurable to
drive each of the plurality of electric motor assemblies based upon
configuration parameters stored in the control circuitry.” Final Act. 2 (citing
Flattinger, || 66, 80).
The dispute does not hinge on what is disclosed by Flattinger, but
rather whether Flattinger’s disclosure is sufficient to anticipate the claimed
invention. More particularly, the Examiner takes the position that
Flattinger’s disclosure of “several types / configurations” of motors, as well
as “exchang[a]ble” “control circuitry configured to supply signals to the
motor based upon which electronic motor assembly is selected” is sufficient
for the control circuitry to be “field configurable” as claimed. Adv. Act.
(Dec. 11, 2013), 2; see also Ans. 9 (reiterating the same).
On the other hand, Appellants argue that because Flattinger teaches
that control electronics part 39 is removed and replaced for different drive
motors 33, Flattinger cannot disclose that “control electronics part 39 is
configured to apply control signals to drive circuitry based upon which
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Application 13/005,393
electric motor assembly is selected” or “is field configurable to drive each of
a plurality of electric motor assemblies” as recited in claim 1. Appeal Br. 7—
8.
We appreciate that the Specification “teaches control circuitry that is
integrated with a welding wire feeder and is configured to apply control
signals to drive circuity of the wire feeder based upon a selection of an
electric motor assembly from a plurality of available electric motor
assemblies.” Appeal Br. 8—9 (citing Spec. H 21, 22, 24) (emphasis added).
We further appreciate that the Specification cites the advantage that “various
electric motor assemblies may be used with a single welding wire feeder 14
without the need for upgrading or replacing the control circuitry 70 and
software of the welding wire feeder 14.” Id. f 26 (emphasis added). We are
not persuaded, however, that the claim itself requires such integration and/or
excludes such exchangeable circuitry. See, e.g., In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims
from the specification.”) (citations omitted); SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[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 short,
Appellants have not provided a definition for the term “field-configurable”
that excludes Flattinger’s disclosed control circuitry, nor otherwise
sufficiently explained how the claim term “field configurable” is required to
be read so as to exclude Flattinger’s disclosed control circuitry.
The Examiner has adequately explained that Flattinger’s control
circuitry is configured to apply control signals based upon which electric
motor assembly is selected because the control circuitry may be exchanged
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Application 13/005,393
for circuitry appropriate for the electric motor assembly that is selected.
Ans. 9. Moreover, the Examiner has adequately explained that Flattinger’s
control circuity is field configurable to drive each of the plurality of electric
motor assemblies based upon configuration parameters stored in the control
circuitry in that there is a suitable control circuitry having appropriate
parameters that may be utilized to drive each of the electric motor
assemblies that may be selected. Id. In other words, we are not persuaded
that the claim, as written, requires the same single, integrated control
circuitry to drive various electric motor assemblies, or that the claim
excludes exchangeable control circuitry that, in the aggregate, can drive each
of the electric motor assemblies that may be selected.
For the foregoing reasons, we are not persuaded that the Examiner
erred in finding that Flattinger discloses all of the limitations of independent
claim 1, and we sustain the rejection of independent claim 1 as anticipated
by Flattinger under 35 U.S.C. § 102(b). We also sustain the rejection of
claims 3, 4, 9, 10, 15, 16, and 18—20 which fall with independent claim 1.
Claim 2
Claim 2 recites that “the electric motor assembly comprises an electric
motor and a gear reducer, and wherein at least one of the parameters
comprises a speed conversion based upon the gear reducer.” Appeal Br. 18
(Claims App.). Appellants argue that “at most, Flattinger discloses that
gears are present in the welding apparatus 1” (id. at 12 (citing Flattinger
176) (emphasis omitted)), not “that control circuitry stores a speed
conversion based upon a gear reducer of a selected electric motor assembly”
(id. (emphasis omitted)).
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The Examiner points to paragraph 66 of Flattinger, which discloses
that welding parameters, operating modes, and welding programs are
transmitted to control device 4 for controlling the welding system and/or
predetermining the respective set values for controlling. Ans. 11. The
Examiner also points to paragraph 80 of Flattinger as disclosing a “memory
module for automatic recognition of characteristics of individual parts of the
drive motor.” Id. In this way, “the individual parts of the drive unit. . .
[are] enable[d] [for] automatic recognition such that the respective program
and/or data for the drive unit 30 employed can be loaded or applied by the
welding apparatus 1 or by the control electronics.” Flattinger | 80
(emphasis omitted). The Examiner finds that “the gear reducer [of claim 2]
is a conventional type of gear, and the reference concerns speed and torque
control for several motors.” Ans. 11.
Although we appreciate that Flattinger generally teaches the concept
of parameters for controlling the welding system that can be automatically
recognized by individual components of the welding system, we are not
persuaded that this general disclosure is sufficient to disclose the specific
claimed configuration parameter of a speed conversion based on a gear
reducer. “A claim is anticipated only if each and every element as set forth
in the claim is found, either expressly or inherently described, in a single
prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Flattinger lacks an express disclosure that a
parameter stored in the control circuitry includes a speed conversion based
on a gear reducer included in the electric motor assembly. Moreover, the
Examiner has not adequately explained how Flattinger necessarily teaches a
configuration parameter that comprises a speed conversion based upon a
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Application 13/005,393
gear reducer in order to support an inherent disclosure. Even if it is probable
that a speed conversion based on a gear reducer is one configuration
parameter stored in the control circuitry, this is insufficient to establish an
inherent disclosure. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations omitted) (“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”).
For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Flattinger discloses the limitations of dependent claim 2, and
we do not sustain the rejection of dependent claim 2 as anticipated by
Flattinger under 35 U.S.C. § 102(b).
Claims 6, 11, and 17
Claims 6 and 11 each recite “a user interface coupled to the control
circuitry and configured to allow for user selection of an electric motor
assembly from the plurality of electric motor assemblies.” Appeal Br. 19, 20
(Claims App.). Claim 17 recites substantially similar language. Id. at 21
(Claims App.). Appellants argue that “[a]t most, [Flattinger] discloses an
‘input and/or output device 22, via which most different welding parameters,
operating modes, or welding programs of the welding apparatus 1 can be set
and called’” {id. at 13 (quoting Flattinger | 66 (emphasis omitted)), but fails
to disclose that “the input and/or output device 22 or any other component
allows for user selection of an electric motor assembly from a plurality of
electric motor assemblies” {id. (emphasis omitted)).
The Examiner responds that “Flattinger teaches use of several motors
with parameters stored in memory” and “control device 4 and input/output
device 22 conventionally include an interface.” Ans. 11 (citing Flattinger
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66, 80). We are not persuaded, however, that Flattinger expressly
discloses a user interface configured to allow for user selection of an electric
motor assembly from a plurality of electric motor assemblies. Moreover, we
are not persuaded that the Examiner has adequately explained how Flattinger
necessarily teaches a user interface configured to allow for user selection of
an electric motor assembly from a plurality of electric motor assemblies in
order to support an inherent disclosure. Even if it is probable that a user
interface coupled to the control circuitry provides for user selection of
motors, this is insufficient to establish inherent disclosure. In re Robertson,
169 F.3d at 745.
To the extent the Examiner’s position is that it is enough if the prior
art is capable of allowing for user selection of an electric motor assembly
from a plurality of electric motor assemblies,2 we do not agree with such a
position. In order for the user interface coupled to the control circuitry to be
capable of performing this function, the interface must possess the necessary
structure, e.g., programming, to function as claimed. The Examiner has not
adequately shown that Flattinger’s user interface coupled to control circuitry
is programmed to allow for user selection of an electric motor assembly
from a plurality of electric motor assemblies. As such, Flattinger does not
anticipate dependent claims 6, 11, and 17.
2 See Ans. 7 (emphasis omitted) (“The independent system claim recites the
phrase ‘configured to’ relative to the wire drive, electric motor assembly,
drive circuitry and control circuitry. These recitations encompass all such
structures which make them indefinite in scope and broader than the
description in the specification. . . . None the less the art teaches such
minimal structure and is capable of such broad function.”).
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For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Flattinger discloses the limitations of dependent claims 6, 11,
and 17, and we do not sustain the rejection of dependent claims 6, 11, and 17
as anticipated by Flattinger under 35 U.S.C. § 102(b).
Claims 7, 8, 12, and 13
Claims 7 and 8 depend directly from claim 6, and claims 12 and 13
depend directly from claim 11. The Examiner’s rejection of these claims
relies on the same erroneous findings that Flattinger discloses the limitations
set forth in claims 6 and 11. Accordingly, we also do not sustain the
rejection of dependent claims 7, 8, 12, and 13 as anticipated by Flattinger
under 35 U.S.C. § 102(b).
Claim 14
Claim 14 recites that “at least one electric motor assembly of the
plurality of electric motor assemblies comprises an electric motor and a
speed sensor.” Appeal Br. 20 (Claims App.). Appellants argue that “[a]t
most,. . . Flattinger discloses a sensor (not shown) that ‘can be used in the
torch housing 28,’” rather than a speed sensor used in an electric motor
assembly. Id. at 15—16 (citing Flattinger 179) (emphasis omitted). The
Examiner responds that Flattinger’s “paragraph] 79 teaches a speed sensor
or control electronics 39.” Ans. 12.
The speed sensor described in the Specification is used to “measure
and provide the user with the rotational speed of the electric motor 56.”
Spec. 119. Flattinger discloses that “[t]o control the driver motor 33 in
terms of speed, output and/or torque, a sensor or control electronics (not
illustrated) can be used in the torch housing 28 to control the drive motor
33.” Flattinger 179. Because Flattinger’s sensor is disclosed as able to
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control the drive motor 33 in terms of speed, we are persuaded that it is
sufficiently related to speed so as to be a “speed sensor” as claimed.
Because Flattinger’s sensor relates to motor 33, we are also persuaded that it
is sufficiently related so as to be part of at least one electric motor assembly
as claimed. That is, Flattinger’s disclosure of a sensor to control the drive
motor 33 in terms of speed is sufficient to meet the language of the claim.
For the foregoing reasons, we are not persuaded that the Examiner
erred in finding that Flattinger discloses the limitations of dependent claim
14, and we sustain the rejection of dependent claim 14 as anticipated by
Flattinger under 35 U.S.C. § 102(b).
Rejection II
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Flattinger and West. Final Act. 4—5. Appellants’ arguments in support of
the patentability of claim 5 relate to its dependence from claim 1 and the
perceived deficiencies in Flattinger discussed above. Appeal Br. 16.
Because we have found no such deficiencies in Flattinger, we are not
persuaded of error in the Examiner’s rejection of claim 5. Accordingly, we
sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Flattinger and West.
DECISION
The Examiner’s decision to reject claims 1—4, 9, 10, 14—16, and 18—
20 under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s decision to reject claims 2, 6—8, 11—13, and 17
35 U.S.C. § 102(b) is reversed.
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The Examiner’s decision to reject claim 5 under 35 U.S.C. § 103(a) is
affirmed.
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
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