Illinois Tool Works Inc.

Patent Trials and Appeals Board

Apr 29, 2021

2020004947 (P.T.A.B. Apr. 29, 2021)

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.
14/738,454 06/12/2015 Craig S. Knoener ITW 66092 4513
23721 7590 04/29/2021
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
EXAMINER
NGUYEN, VY T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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):
gcorrigan@new.rr.com
george.corrigan@corrigan.pro
kari.brekke@corrigan.pro
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG S. KNOENER, RONALD D. WOODWARD,
ALAN A. MANTHE, and JASON A. DUNAHOO

Appeal 2020-004947
Application 14/738,454
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Illinois Tool Works Inc.,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 3.
Appeal 2020-004947
Application 14/738,454

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STATEMENT OF THE CASE
The Specification
Appellant’s disclosure “relates generally to the art of providing
welding-type power” and, “[m]ore specifically, it relates to welding-type
power supplies used with wire feeders. Spec. ¶1.
The Claims
Claims 1–20 are rejected. Final Act. 1. No other claims are pending.
Id. Independent claims 1 and 8 are illustrative and reproduced below.
1. A welding-type system comprising:
a power supply, receiving an input current and having a
power supply control input and further having a welding-type
power output for providing welding- type power to an arc;
a wire feeder, disposed to provide wire to the arc, and
having a wire feed speed control input; and
a controller, including a wire feed speed control output
connected to the wire feed speed control input, and further
having a power command output connected to the power supply
control input, and further including an input limiting module
having a feedback input indicative of the input current, and a
limiting output, and wherein the wire feed speed control output
is responsive to the limiting output, and thereby the input
current is responsive to the input limiting module.
8. A method of providing welding-type power
comprising:
receiving an input current in a power circuit;
providing a welding-type power output to an arc;
feeding wire to the arc;
controlling the speed of the wire feeding, including
feeding at a setpoint, and reducing the speed below the setpoint
in response to a function of at least one of the input current and
an output current exceeding a desired threshold.
Appeal Br. 20–22.
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Application 14/738,454

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The Examiner’s Rejection
The Examiner rejected all claims under 35 U.S.C. § 102(a)(1) as
anticipated by US 2014/0124492 A1, published May 8, 2014 (“Daniel”).
Final Act. 8.
DISCUSSION
Claims 1–7
Appellant argues that Daniel fails to disclose an “input limiting
module,” let alone one “having a feedback input indicative of the input
current,” as recited in claim 1. Appeal Br. 12.
For the “input limiting module,” the Examiner found this “disclosed
in para 0026,” where Daniel provides: “‘the controller 118 can monitor the
RMS voltage of the welding waveform 200 during welding. This monitored
RMS voltage is compared to a desired or preset RMS voltage for the welding
operation.’” Final Act. 9 (quoting Daniel ¶26). Appellant argues the
Examiner-cited provision fails to disclose an “input limiting module,” as
defined in the Specification. Appeal Br. 14 (citing Spec. ¶35). Paragraph 35
states: “Input limiting module, as used herein, is a module that acts to limit
the input to a welding-type system below that which would otherwise be
drawn, by controlling a power circuit.” Spec. ¶35. Appellant argues that
“[n]othing in the prior art limits the input,” as required by the definition.
Appeal Br. 14.
The Examiner responds that Appellant’s purported definition of “input
limiting module” does not control the scope of the term’s meaning in the
claims because Appellant’s Specification merely defines the term and does
not also expressly disavow or disclaim the full scope of the term. According
to the Examiner:
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Application 14/738,454

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Based on MPEP 2111, the Applicant acts as his/her own
lexicographer when—
(1) when the applicant acts as their own lexicographer; and
(2) when the applicant disavows or disclaims the full scope of a
claim term in the specification.
Nowhere else in the Appellant’s Specification is there a
literal/explicit statement that the full scope of the claim term
“input limiting module” is disavowed.
Ans. 8 (Examiner’s emphasis). Appellant replies that these are independent
and alternative exceptions to application of the plain and ordinary meaning.
Reply Br. 3. Appellant is correct. Indeed, the MPEP refers to them, in the
plural, as “exceptions.” See MPEP § 2111.01(IV) (“The only exceptions to
giving the words in a claim their ordinary and customary meaning in the art
are (1) when the applicant acts as their own lexicographer; and (2) when the
applicant disavows or disclaims the full scope of a claim term in the
specification.”). Binding law supports the notion that these are independent
and alternative exceptions. See, e.g., Thorner v. Sony Computer Ent. Am.
LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012) (referring to lexicography
and disavowal as “two exceptions” and applying the plain and ordinary
meaning of a dispute term because the Specification’s description of the
term “does not rise to the level of either lexicography or disavowal”
(emphasis added)).
We therefore construe “input limiting module” as Appellant defined it
in the Specification, i.e., as “a module that acts to limit the input to a
welding-type system below that which would otherwise be drawn, by
controlling a power circuit.” Spec. ¶35. Appellant argues that “[n]othing in
the prior art limits the input,” as required by the definition. Appeal Br. 14.
The Examiner provides no persuasive rebuttal to this argument. Ans. 6–7
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Application 14/738,454

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(quoting Appellant’s argument but not identifying any such limiting by
Daniel). Nor do we find such a limiting feature in paragraph 26 of Daniel,
on which the rejection relies for this limitation. See Final Act. 9 (quoting
Daniel ¶26).
Accordingly, we reverse the rejection of claim 1, as well as that of
claims 2–7, which ultimately depend from claim 1.
Claims 8–14
Appellant argues that Daniel fails to disclose “reducing the speed
below the setpoint in response to a function of at least one of the input
current and an output current exceeding a desired threshold,” as recited in
claim 8. Appeal Br. 15.
The Examiner found this limitation “disclosed in para 0042,” where
Daniel provides:
the controller 118 can control the wire feed speed of the wire
feeder 150 in addition to changing the EN [(i.e., electrode
negative)] portion of the waveform 200 to achieve the desired
RMS voltage output. In such embodiments, as the RMS voltage
drops (indicating a decrease in length of the arc) the controller
118 can also cause the wire feeder 150 to slow the wire feed
speed to aid in reaching or maintaining the desired RMS voltage
(and thus arc length). Alternatively, if the RMS voltage increases
above the setpoint (indicating an increase in arc length) the
controller 118 can cause the wire feeder to increase its wire feed
speed to aid in closing the gap between the electrode E and the
workpiece W to maintain the desired RMS voltage'').
Final Act. 13 (quoting Daniel ¶42). Appellant argues that this “merely
teaches traditional control where the output is controlled to provide a
setpoint,” and “[n]othing in the prior art limits the input below the
setpoint.” Appeal Br. 17. Thus, Appellant argues, Daniel does not disclose
“reducing the speed below the setpoint,” as recited in the claim. Id.
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Application 14/738,454

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The Examiner responds, citing additional paragraphs from Daniel:
Daniel does, in fact, suggest reducing the [wire feed] speed
below the setpoint (the controller 118 can also cause the wire
feeder 150 to slow/reduce the wire feed speed lower/below the
user preset/setpoint) in response to a function of at least one of
the input current and an output current exceeding a desired
threshold (a thermal sensor can be used to monitor heat input into
the weld and/or the current and/or voltage can be used to
determine the overall amount of heat input into the weld, as the
RMS voltage drops (indicating a decrease in length of the
arc)/heat decreases).
Ans. 10 (citing Daniel ¶¶18, 26, 36, 42, and 46). Appellant replies that
Daniel describes the speed of the wire feeder 150 as a function of voltage,
not current. Reply Br. 4.
Appellant has the better position. First, the Examiner never explains
why “voltage,” as described in Daniel, may substitute for “current” as
recited in the claim. Although voltage and current are directly proportional,
the Examiner does not mention that fact or explain why it might be sufficient
to support reading claim 8 on Daniel. Further, the claim recites “reducing
the speed” of the wire feeder when the input or output current “exceed[s] a
desired threshold.” However, Daniel teaches reducing the speed of wire
feeder 150 when the voltage—the Examiner’s apparent proxy for current—
drops, not when voltage increases. See Daniel ¶42 (“[A]s the RMS voltage
drops (indicating a decrease in length of the arc) the controller 118 can also
cause the wire feeder 150 to slow the wire feed speed to aid in reaching or
maintaining the desired RMS voltage (and thus arc length).”).
For these reasons, we reverse the Examiner’s rejection of claim 8, as
well as that of claims 9–14, which ultimately depend from claim 8.
Appeal 2020-004947
Application 14/738,454

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Claims 15–20
Independent claim 15 is a system claim that includes several “means
for” limitations. Appeal Br. 23. The Examiner construed all of these
limitations pursuant to 35 U.S.C. § 112(f). Final Act. 2–5. Appellant agrees
that § 112(f) governs the construction of these terms. Appeal Br. 9–10.
One of those limitations recites: “means for controlling the speed of
the means for wire feeding to be a set speed and for reducing the speed
below the set speed in response to a function of at least one of the input
current and an output current exceeding a desired threshold.” Id. at 23. As
with claim 8’s somewhat similar limitation, the Examiner found this
limitation of claim 15 disclosed in paragraph 42 of Daniel. Final Act. 17.
For the same reasons as with claim 8, we cannot sustain the Examiner’s
finding that Daniel discloses “reducing the speed” of the wire feeder means
when the input or output current “exceed[s] a desired threshold.” See supra.
Accordingly, we reverse the Examiner’s rejection of claim 15, as well
as that of claims 16–20, which ultimately depend from claim 15.

SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 102(a)(1) Daniel 1–20

REVERSED