ILLINOIS TOOL WORKS INC.

Patent Trials and Appeals Board

Oct 29, 2020

2020001819 (P.T.A.B. Oct. 29, 2020)

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.
14/576,875 12/19/2014 Michael D. Madsen ITW 62131 1957
23721 7590 10/29/2020
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
EXAMINER
MILLS JR., JOE E
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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 MICHAEL D. MADSEN

Appeal 2020-001819
Application 14/576,875
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
CARL M. DEFRANCO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20, which are the only claims
pending in this application.1 See Appeal Br. 5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Illinois
Tool Works Inc.” Appeal Br. 3.
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Application 14/576,875

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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to the art of welding
type power supplies that include a welding type power circuit and an
auxiliary power circuit.” Spec. ¶ 1. Apparatus claim 1, method claim 9, and
system claim 17 are independent. Claim 1 is illustrative of the claims on
appeal and is reproduced below.
1. A welding-type power supply, comprising:
an input circuit, disposed to receive input power and
provide a rectified input;
a dual boost preregulator disposed to receive the rectified
input and to provide bus power to a positive bus and a negative
bus;
a welding-type output power circuit disposed to receive
power from positive bus and the negative bus and provide
welding-type output power; and
a controller connected to control the dual boost
preregulator and the welding-type output power circuit.
EVIDENCE
Name Reference Date
Welches et al. (“Welches”) US 6,879,053 B1 Apr. 12, 2005
Koehl US 2012/0126623 A1 May 24, 2012
Kooken et al. (“Kooken”) US 8,829,869 B2 Sept. 9, 2014
Rozmarynowski et al.
(“Rozmarynowski)
US 2015/0273608 A1 Oct. 1, 2015
Yao et al. “A ZVT PWM Three Level Boost Converter for Power Factor
Preregulator” Power Electronics Specialists Conference, 2006.
PESC ‘06. 37th IEEE. (“Yao”)
REJECTIONS
Claims 1–3, 9, 10, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Kooken and Yao.
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Application 14/576,875

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Claims 4, 12, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Kooken, Yao, and Rozmarynowski.
Claims 5–7, 11, 13–15, 19, and 20 are rejected under 35 U.S.C. § 103
as unpatentable over Kooken, Yao, Rozmarynowski, and Welches.
Claims 8 and 16 are rejected under 35 U.S.C. § 103 as unpatentable
over Kooken, Yao, Rozmarynowski, and Koehl.
ANALYSIS
Appellant addresses only the Examiner’s combination of Kooken and
Yao, and, in doing so, argues all the claims together. See Appeal Br. 12–16.
We select claim 1 for review, with the remaining claims standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites a “dual” boost preregulator to provide “a positive bus
and a negative bus.” The Examiner relies on Kooken for nearly all the
limitations of claim 1, but acknowledges that “Kooken does not disclose the
boost preregulator being a dual boost preregulator” that provides the recited
positive and negative bus. The Examiner notes where Kooken expressly
states that “other types of circuits, such as buck circuits, boost circuits or
buck-boost circuits can be utilized.” Final Act. 6 (referencing Kooken 3:7–
11). As thus encouraged by Kooken, the Examiner replaces this circuit with
Yao’s “dual boost preregulator” explaining, the “Examiner read[s] the
passage to mean that a dual boost circuit could also be utilized.” Ans. 18.
The Examiner further provides a reason for the combination and notes,
“[r]eplacing the buck-boost circuit of Kooken with the three-level boost
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Application 14/576,875

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converter of Yao only requires ordinary skill in the art.” Final Act. 6.2 The
Examiner reiterates this assessment stating “[o]ne of ordinary skill in the art
would be able to insert the dual boost circuit of Yao into the welding power
supply of Kooken.” Ans. 18. To emphasize this ability to exchange the one
for the other, the Examiner provides an annotation of both Figure 1 of
Kooken and Figure 2 of Yao stating, “[t]he figure below shows how the
boost converter of Yao would be combined into the circuit disclosed by
Kooken after the buck-boost circuit of Kooken is removed.” Final Act. 6–7.
Appellant disagrees with the Examiner’s findings stating, “[t]here is
no suggestion to modify the prior [art] to have such an arrangement. There
is no teaching on how the prior art could be modified to have the claimed
arrangement.” Appeal Br. 12. Despite the aforesaid annotated illustration
provided by the Examiner showing how Yao’s circuit can replace Kooken’s
circuit (and further in light of Kooken itself expressly teaching that other
circuits may be utilized), the Examiner provides yet another annotation of
Figure 2 of Yao identifying the positive and negative outputs as well as the
neutral or ground bus to further emphasize the point. See Ans. 19.
Regardless, Appellant still contends that “nothing in any prior art
teaches how or if such a combination could be made.” Appeal Br. 13; see
also id. at 14 (“there is no way to simply plug the circuit of Yao” into
Kooken). Thus, “Applicants respectfully submit that [Yao’s] insertion
would not function, and its failure to function is evidence that [] one of
ordinary skill in the art would not make the substitution.” Appeal Br. 13;

2 The Examiner’s stated reason for the combination is “for the purpose of
reducing the capacitive turn-on losses.” Final Act. 6. Appellant does not
dispute this reason for combining Kooken and Yao.
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see also Reply Br. 2 (“The haphazard combination proposed by the
Examiner will not function.”). Despite such attorney arguments, Appellant
proffers no declaration or other evidence supporting these contentions and
seems, instead, to require the Board to disregard the Examiner’s more
detailed explanations and illustrations above, i.e., “[t]here is no teaching of
how this combination should be made.” Appeal Br. 14.
Rather than provide such evidence, Appellant instead argues that “[i]f
the ground of Yao et al were provided as the lower bus in [Kooken] then one
of the two boost circuits of Yao et al would be shorted out.” Appeal Br. 14.
“On the other hand, if the ground is not provided to converter 105, then there
is no teaching of how converter 105 will function.” Appeal Br. 14.
As understood, Appellant’s contention is premised on the need to
retain Kooken’s ground connections despite the Examiner replacing
Kooken’ grounded circuit with Yao’s circuit, which has its own grounding
arrangement. For example, Appellant replicates Figure 2 of Kooken and
relies on this embodiment to explain the futility of the Examiner’s
combination. See Reply Br. 2, 3. However, even after acknowledging that
the Examiner is replacing Kooken’s circuit with Yao’s circuit, Appellant still
contends that Yao’s new circuit retain Kooken’s grounding arrangement.
See Reply Br. 3. Further, Appellant addresses Kooken’s Figure 2 circuit as
being Kooken’s only possible circuit when, in fact, Kooken clearly describes
this Figure 2 circuit as merely illustrating “a diagrammatical representation
of an exemplary embodiment of an interleaved buck-boost power section.”
Kooken 2:1–3. Hence, even presuming arguendo that Appellant’s
contention has merit, this does not mean that Appellant’s argument has merit
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regarding other representations of exemplary embodiments of the circuit in
question.
Appellant also contends, “[i]f the Yao et al design of neither C1 nor
C2 being grounded was used, there is no teaching how to handle the
grounded welding output. Is it floating?” Appeal Br. 16. On this point, the
Examiner states that “[i]t is well known in the art by skilled artisans where
to ground a circuit.” Ans. 21. Appellant does not explain how this is not the
case, e.g., “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellant further acknowledges that “Yao et al describe[s] how its
circuit functions on each half cycle” but then contends that “the rejection
gives no explanation what happens on the negative half cycle in the
composite circuit.” Appeal Br. 14–15. The Examiner explains that Yao
“function[s] the same for the negative half-cycle” and that “[o]nly one half
cycle is disclosed by Yao because the same will happen for the negative half
cycle, only for the negative capacitor C2.” Ans. 20.
Appellant further contends that maintaining Kooken’s lower capacitor
connections to ground (in the circuit being replaced) would cause a short
circuit if this were to occur in Yao’s circuit. See Appeal Br. 14, 15. Again,
Appellant desires Yao’s circuit to be reconfigured to conform to Kooken’s
grounding arrangement but, as expressed above, Kooken’s circuit (and its
capacitance connections) is being replaced by Yao’s circuit, which has its
own grounding scheme. To reiterate, the Examiner explains “[t]he positive
half cycle will only affect the upper loop and the negative half cycle will
affect the lower loop. There would be no short circuit.” Ans. 21.
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Accordingly, and based on the record presented, Appellant does not
explain how the replacement of Yao’s dual boost circuit for Kooken’s buck-
boost circuit is beyond the ability of one skilled in the art. See Final Act. 6,
Ans. 18. Additionally, Appellant does not persuade us of Examiner error.
We sustain the Examiner’s rejections of claims 1–20.
CONCLUSION
In summary:

Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 9, 10,
17
103 Kooken, Yao 1–3, 9,
10, 17

4, 12, 18 103 Kooken, Yao,
Rozmarynowski
4, 12, 18
5–7, 11, 13–
15, 19, 20
103 Kooken, Yao,
Rozmarynowski,
Welches
5–7, 11,
13–15,
19, 20

8, 16 103 Kooken, Yao,
Rozmarynowski,
Koehl
8, 16
Overall
Outcome
1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED