Ex Parte Temby et al

Patent Trial and Appeal Board

Mar 12, 2018

13339288 (P.T.A.B. Mar. 12, 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.
13/339,288 12/28/2011 Timothy N. Temby ITW 60329-1 2395
23721 7590 03/14/2018
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI53589
EXAMINER
LAFLAME JR, MICHAEL A
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
george.corrigan@corrigan.pro
gcorrigan@new.rr.com
kari.brekke@corrigan.pro
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY N. TEMBY, JAMES F. RAPPL,
JOSEPH E. FELDHAUSEN, TODD E. HOLVERSON,
MICHAEL H. NOVAK, JEFFERY R. IHDE,
JOSEPH C. SCHNEIDER, BRUCE P. ALBRECHT,
THOMAS A. BUNKER, and CLAY A. BYRON
Appeal 2017-002120
Application 13/339,288
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
MATTHEW S. METERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s final rejection of claims 1—6, 8, 9, and 19-26. 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. 3.
Appeal 2017-002120
Application 13/339,288
According to Appellants, their invention “relates to a welding-type
power supply that is part of a weld cell system having the ability to
communicate outside the weld location.” Spec. 12. Claims 1 and 19 are the
only independent claims on appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. A welding-type system that can identify a weld
cable, comprising a welding power supply having a controller, a
power circuit connected to receive at least one signal from the
controller, at least one weld connection connected to a proximal
end of a weld cable and connected to receive power from the
power circuit, and a weld cable locator module having a cable
locator output connected to at least one of the controller, the
power circuit, and the weld cable connection, wherein the weld
cable has a distal end and the cable locator output is transmitted
to the distal end.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1—4, 9, 19, 21, and 23—262 under
35 U.S.C. § 102(b) as anticipated by Albrecht (US 2008/0061049 Al, pub.
Mar. 13,2008).
The Examiner rejects claims 5,8, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Albrecht.
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Albrecht and Meckler (US 2008/0296278 Al, pub.
Dec. 4, 2008).
2 Appellants canceled claim 7 during prosecution of the application.
Amendment filed Apr. 22, 2015, 4. Thus, the Examiner erroneously lists
claim 7 as rejected. See, e.g., Final Office Action mailed July 28, 2015, 2.
2
Appeal 2017-002120
Application 13/339,288
The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Albrecht and Lewis (US 2009/0088907 Al, pub. Apr. 2,
2009).
ANALYSIS
Anticipation rejection
Independent claim 1 and its dependent claims 2-4 and 9
As set forth above, independent claim 1 recites, among other
recitations, “a weld cable locator module having a cable locator output. . .,
wherein the weld cable has a distal end and the cable locator output is
transmitted to the distal end.” Appeal Br., Claims App. Appellants argue
that the Examiner errs in finding that Albrecht discloses the weld cable
locator module as claimed. See, e.g., Appeal Br. 11—12; see also Reply
Br. 2. Based on our review of the record, the Examiner does not support
adequately the finding that Albrecht teaches the claimed weld cable locator
module.
Consistent with Appellants’ Specification, and the module’s name as
recited in claim 1, the claimed “[w]eld cable locator module is a module that
allows the user to locate and identify a weld cable.” Spec. 1 58; see also,
e.g., Appeal Br. 10—11. The Examiner finds that Albrecht’s wireless
transmitter 26 “is capable of performing the function” that is performed by
the claimed weld cable locator module, as evidenced by Albrecht’s
paragraph 21. See Answer 4. Based on our review, however, the
Examiner’s finding is not supported by the cited portion of Albrecht.
Specifically, it is not clear from Albrecht’s paragraph 21 that transmitter 26
may convey information sufficient to identify a weld cable.
3
Appeal 2017-002120
Application 13/339,288
Thus, based on the foregoing, we do not sustain the Examiner’s
anticipation rejection of claim 1. We also do not sustain the Examiner’s
anticipation rejection of claims 2—A and 9 that depend from claim 1, for the
same reasons we do not sustain claim 1 ’s rejection.
Independent claim 19 and its dependent claims 21 and 23—26
Independent claim 19 recites, among other recitations,
a power supply weld cable communication module, connected to
the output connection [that is connected to a proximal end of a
weld cable]; [and]
a weld location weld cable communication module, connected to
a distal end of the weld cable and located at the weld location.
Appeal Br., Claims App. Appellants argue that the Examiner errs in finding
that Albrecht discloses the communication modules as claimed. See, e.g.,
Appeal Br. 13—14; see also Reply Br. 3. Based on our review of the record,
the Examiner does not support adequately the finding that Albrecht teaches
the claimed communication modules.
As recited in claim 19, the communication modules are connected to
different ends of a weld cable. See Appeal Br., Claims App. Conversely,
the Examiner relies on Albrecht’s wireless transmitter 26, which
communicates wirelessly with wireless monitoring device 24, to teach one of
the claimed communication modules. See Final Action 3; see also
Answer 5; see also Albrecht 121. Although the Examiner states that
“[Regarding [Appellants’] argument that the art uses wireless
communication^ it is noted that wired communication is not claimed,”
claim 19 requires that both communication modules are connected to a
cable, and the Examiner does not establish that Albrecht’s wireless
device 24 and transmitter 26 are connected to ends of the same cable.
4
Appeal 2017-002120
Application 13/339,288
Thus, based on the foregoing, we do not sustain the Examiner’s
anticipation rejection of claim 19. We also do not sustain the Examiner’s
anticipation rejection of claims 21 and 23—26 that depend from claim 19.
Obviousness rejections
Each of claims 5, 6, 8, 20, and 22 depends from independent claim 1
or 19. Inasmuch as the Examiner does not establish that any other reference
remedies the above-discussed deficiency in the rejection of claim 1 or 19, we
do not sustain the rejections of claims 5, 6, 8, 20, and 22.
DECISION
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 1—6, 8, 9, and 19-26.
REVERSED
5