Ex Parte 7049546 et alDownload PDFBoard of Patent Appeals and InterferencesFeb 28, 201295000205 (B.P.A.I. Feb. 28, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,205 02/02/2007 7049546 ITW 7188.64R 2817 23721 7590 02/29/2012 GEORGE R. CORRIGAN CORRIGAN LAW OFFICE 2168 COLLADAY POINT DRIVE STOUGHTON, WI 53589 EXAMINER DEB, ANJAN K ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ THE LINCOLN ELECTRIC COMPANY Requester and Appellant v. Patent of ILLINOIS TOOL WORKS, INC. Patent Owner and Respondent ____________________ Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 B2 Technology Center 3999 ____________ Before RICHARD TORCZON, HOWARD B. BLANKENSHIP, ALLEN R. MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 2 STATEMENT OF THE CASE The Third Party Requester appeals under 35 U.S.C. § 134(c) from a final decision of the Examiner favorable to the patentability of claims 1-47. We have jurisdiction under 35 U.S.C. § 315(b). The Chief Judge expanded the panel subsequent to an oral hearing February 16, 2011 before Judges Torczon, MacDonald, and Boalick. We affirm-in-part and enter new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). Invention Figure 1 of the '546 patent is reproduced below. Figure 1 depicts a welding power source 100. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 3 The welding power source 100 includes an input rectifier 101, a boost circuit 102, a pulse-width modulator 103, a controller 104, an auxiliary power controller 105, and an output transformer T3. Col. 4, ll. 19-29. Power source 100 receives a three-phase line voltage on input lines 107. Input rectifier 101 rectifies the three-phase input to provide a generally dc signal, which has a magnitude of approximately 1.35 times the magnitude of the three-phase input. Boost circuit 102 processes the dc bus provided by input rectifier 101 to provide a dc output voltage having a controllable magnitude of approximately 800 volts in the preferred embodiment. Col. 4, ll. 30-43. The output of boost circuit 102 is provided to pulse-width modulator 103, where the dc bus is inverted and pulse-width modulated to provide a controllable signal to the output transformer T3, which transforms the signal to provide a voltage and current suitable for welding. Col. 4, ll. 44-57. Representative Claims Claim 1: A welding, cutting or heating system capable of receiving a range of input voltages spanning at least two input utility voltages having a ratio of at least 1.5, comprising: an input circuit configured to receive any input voltage within the range of input voltages, and configured to provide a first dc signal having a magnitude greater than a rectified magnitude of the highest voltage in the range of input voltages that is maintained while an output current is being provided; Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 4 a converter configured to receive the first dc signal and to provide a converter output, and configured to receive at least one control input; an output circuit configured to receive the converter output and to provide a welding, heating or cutting signal; a controller, including a power factor correction circuit disposed to receive feedback indicative of the input and, configured to provide at least one control signal to the converter; and an auxiliary power source configured to receive the any input voltage within the range of input voltages and configured to provide a control power signal to the controller, regardless of the magnitude of input. Claim 19: A power source for welding, cutting or heating current, comprising: means for receiving and converting an input voltage from a range of input voltages spanning at least two input utility voltages to a first dc bus having a voltage magnitude higher than the input voltage; means for controlling the means for receiving and converting, including means for power factor correcting by controlling a switch, connected to the means for receiving and converting; means for receiving the dc bus and providing in response thereto an output current having an output magnitude suitable for a welding, heating or cutting; and Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 5 means for deriving auxiliary power from the input voltage and providing the derived power as a power signal to the means for controlling. Requester’s Contentions Requester contends that the Examiner erred in making a final decision favorable to the patentability to claims 1-47 because the Examiner refused to adopt any of: (1) Numerous proposed rejections under 35 U.S.C. § 103(a) (App. Br. 4-6); (2) the proposed rejection of claims 1-18 and 23-47 under 35 U.S.C. § 112, second paragraph, because “rectified magnitude” as recited in independent claims 1, 6, 14, 23, 26, 30, 32, 34, and 36-39 is indefinite (id. at 6);1 (3) the proposed rejection of claims 6-13 and 26-29 under 35 U.S.C. § 112, first paragraph, because “feedback indicative of the input current” in the context of “power factor correcting” lacks written description support (id.); and (4) the proposed rejection of claims 6-13 and 26-29 under 35 U.S.C. § 112, second paragraph, because “the input current” has “no antecedent basis” in independent claims 6 and 26 (id.). 1 Claims 19 through 22 are original patent claims that do not contain the phrase “rectified magnitude.” Amendments to independent claim 26 do contain the phrase “rectified magnitude.” Accordingly, we have corrected the claim numbers in Requester’s statement of the issues. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 6 ANALYSIS I. 35 U.S.C. § 112, Second Paragraph I.A. “Rectified magnitude” The Examiner refers to text in the '546 patent at column 4, lines 30 through 36 for explanation of the term “rectified magnitude.” Ans. 37-38. The section discloses that that input rectifier 101 (Fig. 1) rectifies the three- phase input to provide a generally dc signal, which has a magnitude of approximately 1.35 times the magnitude of the three-phase input. Id. at 38. The Examiner submits that because the '546 patent disclosed that the dc bus voltage magnitude is maintained constant at 800 Volts dc, which is higher than a rectified magnitude of a highest disclosed (“peak”) input voltage (1.35 x 575 V ≈ 776 V), the “rectified magnitude” in the claims does not render the claims indefinite under § 112, second paragraph. Id. Requester submits that a “rectified magnitude” as claimed refers to an “instantaneous” magnitude of the rectified voltage waveform that changes over time, but acknowledges that the “average” rectified magnitude for a 575 Volt (RMS) input may be 776 Volts. App. Br. 29. Requester refers to paragraph 27 of the Higman declaration (Exhibit C of Requester’s Evidence Appendix) as support for the position.2 Professor Higman testifies that the formula of 1.35 times the three-phase input voltage represents the “average magnitude” of the instantaneous voltage waveform after the full-bridge 2 Requester also refers, apparently, to a publication that is not contained in the Evidence Appendix and which has not been applied in the proposed rejections over the prior art. We have not considered “Mohan2.” App. Br. 29. See 37 C.F.R. § 41.67(c)(1)(ix). Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 7 rectifier, but the magnitude of the instantaneous waveform is not a constant value and will vary. Higman Dec. ¶ 27. Owner does not allege that the phrase “rectified magnitude” has a recognized meaning in the art. Owner does not address or contest Requester’s calculations with respect to the relevant signal magnitudes. However, Owner contends that Requester has incorrectly stated that Owner and the Examiner have defined “rectified magnitude” as a “constant value.” Resp. Br. 30. We are persuaded that the term “rectified magnitude” in the claims may cover an average magnitude of the instantaneous waveform after the input rectifier 101 ('546 patent Fig. 1). However, the claims are ambiguous in using the unmodified phrase “rectified magnitude,” which includes a signal in which the magnitude varies from moment to moment and in which the instantaneous magnitude may be at times greater than the 800 Volt dc bus at the output of Boost Circuit 102 ('546 patent Fig. 1). See Hig. Dec. ¶ 27 (uncontroverted testimony that for a three-phase input, the magnitude of the rectified voltage signal will vary to a maximum of 1.414 * Vin).3 Because Owner has the right to amend the instant claims in this proceeding in response to the § 112, second paragraph, rejection, we decline to read words (narrowing modifications) into the claims in an effort to preserve validity. “An essential purpose of patent examination is to fashion 3 575V x 1.414 is approximately 813 Volts. Owner contends that the boosted dc bus is 800 Volts regardless of the input voltage. See, e.g., Patent Owner Comments after ACP (Nov. 28, 2008) at 12 (Support For Claim Amendments). Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 8 claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).4 We therefore conclude that the claims reciting “rectified magnitude” do not pass muster under 35 U.S.C. § 112, second paragraph. We thus do not sustain the Examiner’s refusal to adopt the § 112, second paragraph, rejection proposed against claims 1-18 and 23-47. We also note that instant claim 1 (with claims 2-5 being dependent) is additionally indefinite for a reason not shared by claims 6-18 and 23-47. Claim 1 recites “an input circuit [101; Fig. 1] configured to receive any input voltage within the range of input voltages, and configured to provide a first dc signal having a magnitude greater than a rectified magnitude of the highest voltage in the range of input voltages that is maintained while an output current is being provided.” The claim continues with “a converter [102] configured to receive the first dc signal and to provide a converter output.” Because the “rectified magnitude” is defined in terms of the magnitude of the voltage output by rectifier 101, the magnitude of the “first dc signal” cannot have a “magnitude greater than a rectified magnitude of the highest voltage in the range of input voltages” because the dc signal cannot have a magnitude greater than its own magnitude. Compare claim 1, 4 Moreover, Owner is in a position to amend the claims to exclude inoperative subject matter covered by the interpretation of “rectified magnitude” as including instantaneous magnitude. See In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (during the prosecution of patent applications an applicant is still in a position to amend the claims to exclude inoperative subject matter). Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 9 for example, with claim 6, which recites “receiving an input voltage from within the range and converting it to a first dc bus . . . having a voltage magnitude higher than a magnitude equal to a rectified magnitude of a greater of the at least two input voltages” -- combining, in effect, the operation of input rectifier 101 and boost circuit (converter) 102 such that the “first dc bus” is consistent with the output of boost circuit 102. Compare claim 1 with claim 32, which recites: wherein the input circuit is configured to receive at least one input voltage, and provide a converter input signal to the converter; wherein the converter includes a boost circuit and is configured to receive and boost the converter input signal and to provide a dc bus output having a magnitude greater than a rectified magnitude of the highest voltage in the range of input voltages. . . . -- setting forth the “dc bus output” as converter output. I.B. “Feedback indicative of the input” Although Requester proposes rejections of claims 6-13 and 26-29 under 35 U.S.C. § 112, first and second paragraphs, because of the recitations of (1) “feedback indicative of the input current” in the context of power factor correcting and (2) “the input current,” the latter phrase is contained in the former. We will first consider the claim recitations in view of the requirements of 35 U.S.C. § 112, second paragraph. Moreover, we are required to interpret the claim terms in dispute prior to consideration of the prior art and evaluation of the parties’ arguments Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 10 related to patentability under § 103(a). See, e.g., In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1997) (to properly compare the prior art reference with the claims at issue, the court must construe the disputed term to ascertain its scope and meaning). Instant claim 1, not proposed by Requester to be rejected under § 112 in relation to “feedback,” recites “a controller, including a power factor correction circuit disposed to receive feedback indicative of the input and, configured to provide at least one control signal to the converter.” The “power factor correction” is a limitation in dispute as it relates to the prior art. The '546 patent describes a “power factor correction chip” in text at column 7 (referring to Figure 3 of the patent). Figure 3 of the '546 patent is reproduced below. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 11 Figure 3 is said to be a detailed diagram of the boost circuit of Figure 1. '546 patent col. 4, ll. 7-8. The patent further teaches: Boost circuit 102 includes an IGBT driver 301 [Fig. 3] that controls the duty cycle of switch IGBT1. Driver 301 receives feedback signals indicative of the output voltage and the input current, and utilizes this information to drive switch IGBT1 at a duty cycle sufficient to produce the desired output voltage. In one embodiment, boost circuit 102 includes a shunt S1 (shown on FIG. 1). Shunt S1 provides a feedback signal that is the current flowing in the positive and negative buses. A Unitrode power factor correction chip is used to implement boost circuit 102 in the preferred embodiment and requires average current flow as an input. In response to this information and the dc link voltage, driver 301 turns switch IGBT1 on and off. Id. at col. 6, l. 65 - col. 7, l. 11 (emphasis added). The only occurrence of “power factor correction” in the written description of the '546 patent appears in the single sentence emphasized above. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The declaration of Mr. Mammano, Appendix B of Requester’s Evidence Appendix (“Mammano I”), provides evidence of how the “Unitrode power factor correction chip” in the context of the '546 patent would be interpreted by one of ordinary skill in the art. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 12 Mr. Mammano sets forth averments that qualify him as an expert on Unitrode IC’s prior to the date of invention. He testifies with regard to Unitrode power factor correction chips that existed at the time of invention: Those available Unitrode PFC controllers were designed to perform power factor correction on an input AC source using a boost switching regulator circuit configured to force the input AC current to follow the same shape as the input voltage, while simultaneously regulating an output DC voltage. . . . By forcing the input current waveform to be the same shape as the input voltage, the higher harmonics are removed and the apparent power more nearly equals the real power with the power factor approaching unity. In order for the input current to be shaped to match the input voltage, the power factor correction chip needs an AC reference signal. At that time, the most obvious method of producing the reference signal was to use the actual input voltage waveform. Since it is not easy to apply a negative voltage to a ground-referenced integrated circuit, those available Unitrode PFC chips were designed to accept the input voltage signal after the rectifier where all voltages are positive. Mammano I Dec. ¶ 6. While the declaration is entitled to less weight because it fails to address any corroborating evidence in support of the opinion,5 the operation of Unitrode power factor correction (PFC) chips at the time of invention with respect to input and output are not contradicted by the Examiner or Owner. The only express description of an input for the Unitrode PFC chip in the '546 patent is that the chip “requires average current flow as an input” 5 According to page 2 of the '546 patent, a number of publications relating to power factor correction and Unitrode chips were cited during prosecution. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 13 (col. 7, ll. 8-9). In the sentence before, shunt S1 (Fig. 1) is said to provide a “feedback signal” that is the current flowing in the positive and negative buses,” but does not specify to what the “feedback signal” is provided. The paragraph before disclosure of the PFC chip states that “[d]river 301 receives feedback signals indicative of the output voltage and the input current, and utilizes this information to drive switch IGBT1 at a duty cycle sufficient to produce the desired output voltage.” We find that the '546 patent teaches, in literal language, that driver 301 receives feedback signals indicative of “input current,” and uses those signals and output voltage feedback signals to drive switch IGBT1 at a duty cycle sufficient to produce the desired output voltage. There is little or no connection in the disclosure between the “feedback signals” to driver 301 and power factor correction. The single sentence that expresses “power factor correction” says that the chip is “used to implement boost circuit 102,” but does not specify that the chip is to be a complete replacement for driver 301, or to receive any or all of the “feedback signals indicative of” output voltage and input current. Moreover, Figure 3 depicts driver 301 as connecting to the “DC Voltage Link,” which could represent an output voltage feedback signal. The Figure also shows driver 301 as receiving information from a “current sensor.” However, there is no indication that driver 301 receives the input voltage waveform (from input rectifier 101). We find the '546 patent disclosure to be ambiguous with respect to how the Unitrode PFC chip may be deemed to “implement” boost circuit 102 in the preferred embodiment. Absent further evidence directed to how one of ordinary skill in the art would have interpreted the disclosure that Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 14 relates to implementation of the Unitrode PFC chip, we find that driver 301 is said to receive feedback signals indicative of the input current,6 but the power factor correction chip does not receive such signals. Each of independent claims 1, 6, 23, 26, 34, 36, and 38 relates power factor correction with feedback indicative of input or input current. In light of the disclosure, the claims are ambiguous with respect to how feedback indicative of input or input current may be used for power factor correction, and what element or elements may provide the respective “feedback” signal. We therefore add this additional basis for rejecting claims 1-13, 23-29, 34-36, and 38, in view of the dependent claims, under 35 U.S.C. § 112, second paragraph.7 I.C. Dependent Claims 8 and 28 Each of dependent claims 8 and 28 sets forth a step of “deriving auxiliary power” that is additional to the step of “deriving auxiliary power” in respective base claims 6 and 26. The extent to which the separate steps may or may not be related, at the least, renders claims 8 and 28 indefinite under § 112, second paragraph. 6 “Feedback” is normally considered a return of a portion of an output signal, such as output voltage fed back into a circuit. See, e.g., McGraw-Hill Dictionary of Scientific and Technical Terms, Fifth Ed. 1994 at 738 (“[ELECTR] The return of a portion of the output of a circuit or device to its input.”). 7 Requester proposes a rejection of claims 6-13 and 26-29 under 35 U.S.C. § 112, second paragraph, because “the input current” has no antecedent basis in independent claims 6 and 26. In our view, the claims are indefinite for reasons beyond a lack of proper antecedent basis. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 15 Owner contends that an amendment was filed canceling claims 4, 5, 8, and 28 to “further clarify the claim language.” Resp. Br. 3. However, the amendment has not been entered (Ans. 4), even though all claims are deemed to be patentable (id. at 61). II. 35 U.S.C. § 112, First Paragraph To the extent that claims 6-13 and 26-29 might be considered to set forth subject matter not indefinite under 35 U.S.C. § 112, second paragraph, in the alternative we agree with Requester that the claims at least lack written description support for the relation of “feedback indicative of the input current” to power factor correcting. In view of our findings supra in regard to the '546 patent disclosure, we do not sustain the Examiner’s refusal to adopt the proposed rejection of claims 6-13 and 26-29 under 35 U.S.C. § 112, first paragraph. Each of independent claims 14, 30, 32, 37, and 39 recites limitations relating to power factor correction, but do not require that the “feedback” be used for the power factor correction. However, each of those independent claims recites reception of feedback indicative of the “input,” while the '546 patent describes driver 301 receiving feedback signals indicative of the input current. Col. 6, l. 66 - col. 7, l. 3. When a claimed limitation is not present in the written description, it must be shown that a person of ordinary skill would have understood, at the time the application was filed, that the description requires that limitation. See Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998) (“[W]hen an explicit limitation in an interference count is not present in the written Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 16 description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.”). Further, deletion of limitations (broadening) may not be supported by the written description. See, e.g., In re Wilder, 736 F.2d 1516, 1520-21 (Fed. Cir. 1984) (inadequate description to support generic claims not requiring “synchronous scanning”). One shows “possession” by descriptive means such as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is not sufficient for purposes of the written description requirement that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose. Id. Because we find no adequate description of receiving feedback signals indicative of some generic “input” as recited in each of independent claims 14, 30, 32, 37, and 39, we reject claims 14-18, 30-33, 37, and 39-47 (in view of the dependent claims) under 35 U.S.C. § 112, first paragraph, for lack of written description as an alternative rejection to that under § 112, second paragraph. III. Prior Art Rejections We do not reach the rejections of claims 1-18 and 23-47 over the prior art because we have concluded that the claims are indefinite under 35 U.S.C. § 112, second paragraph. Rejections of claims over prior art should not be based on speculation and assumptions as to the scope of the claims. See In Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 17 re Steele, 305 F.2d 859, 862 (CCPA 1962). Moreover, predicting how the claims might be amended would also be based on speculation. Claim 19 is an original patent claim, with claims 20-22 dependent. Base claim 19 sets forth various “means” and associated functions. Use of the word “means” in a claim creates a presumption that § 112, paragraph six applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). The presumption that the various “means” of claim 19 must be interpreted under § 112, paragraph six has not been rebutted. The scope of the “means-plus-function” language is limited to cover the corresponding structure, material, or acts described in the Specification and equivalents thereof. See Valmont Indus. Inc. v. Reinke Mfg. Co. Inc., 983 F.2d 1039, 1042 (Fed. Cir.1993). Owner submits that Requester has disregarded the corresponding structures in the '546 patent. Requester for the first time in this appeal (at pages 2 and 3 of the Rebuttal Brief) refers to structures in the '546 patent when addressing the applied prior art, and then only with respect to JP '778 (Japanese Patent Publication H2-41778, with English translation). Requester argues in the Appeal Brief that Owner contends that the claimed “means for deriving auxiliary power” is not inherent in JP '778 because other options were available to supply control power, but Owner “has not provided any evidence that such options are compatible with the JP '778 welder or, more importantly, any analysis that such other options would not fall under the scope of the claimed means for deriving auxiliary power.” App. Br. 24. We identify two errors in Requester’s attempt at allocating burdens. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 18 First, the party that wishes to show inherency must demonstrate that the thing not described by the reference is necessarily present. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” “Inherency, however, 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.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). Requester admits that JP '778 does not explicitly disclose an auxiliary power source, but alleges that it would have been inherent to derive auxiliary power from the input voltages. App. Br. 24. We agree with Requester to the extent that power for the controller of an inverter power supply is necessary and thus inherent. Id. However, Requester has not established that such power for the controller is necessarily derived from the input voltages. Consistent with Owner’s position, Requester has not shown that sources which do not derive power from the input voltages (e.g., a battery) could not serve as an auxiliary power source. Second, Owner has no burden to show that different power options would not fall under the scope of the claimed means for deriving auxiliary power. For means-plus-function claims, the initial burden of showing unpatentability over the prior art requires consideration of the disclosed structure that corresponds to claimed function. [D]uring prosecution, “the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.” In Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 19 Donaldson, this court explained that “the [Office] may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Aoyama, 656 F.3d 1293, 1297 (Fed Cir. 2011) (internal citations to In re Donaldson Co., 16 F.3d 1189 (Fed.Cir.1994) (en banc) omitted). A prima facie case of equivalence is made (MPEP § 2183 (8th ed., Rev. 8, July 2010)) before any burden of proving nonequivalence (id., § 2184). Moreover, the party challenging patentability must prove that the corresponding structure or an equivalent was present in the prior art. Just as a patentee who seeks to prove infringement must provide a structural analysis by demonstrating that the accused device has the identified corresponding structure or an equivalent structure, a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure -or an equivalent- was present in the prior art. . . . Here, [the challenger] neither identified the structure in the specification that corresponds to the means for delivering dialysate nor compared it to the structures present in the prior art. Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). At least for the reasons that Requester has not: (1) shown that the allegedly inherent power source in the single reference discussed with respect to corresponding structure in the '546 patent would be recognized by one of ordinary skill in the art as identical or equivalent to auxiliary power controller 105 in the '546 patent; or (2) demonstrated after an equivalents analysis that structures including non-equivalent structures in the prior art Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 20 would have rendered obvious the subject matter as a whole of claim 19, we sustain the Examiner’s refusal to enter the proposed rejections (App. Br. 4-6) under 35 U.S.C. § 103(a) against claims 19 through 22. IV. New Grounds of Rejection 37 C.F.R. § 41.77(a) provides that “[t]he reversal of the examiner’s determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Board of Patent Appeals and Interferences as a new ground of rejection . . . .” We have added new grounds of rejection to claims involved in this appeal, and the Examiner did not adopt any of the § 112 rejections proposed by Requester. Accordingly, the following grounds of rejection are designated new grounds of rejection in accordance with to 37 C.F.R. § 41.77(b): I. Claims 1-18 and 23-47 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. II. Claims 6-18, 26-33, 37, and 39-47 stand rejected, in the alternative, under 35 U.S.C. § 112, first paragraph, for lacking adequate written description. Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 21 New Ground of Rejection This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.77(b). 37 C.F.R. § 41.77(b) provides “a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.77(b) also provides that the owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner of the patent may file a response requesting reopening of prosecution before the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.79 by the Board upon the same record. . . . DECISION The Examiner’s final decision favorable to the patentability of claims 1-47 is affirmed with respect to claims 19-22 but reversed with respect to claims 1-18 and 23-47. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). AFFIRMED-IN-PART -- 37 C.F.R. § 41.77(b) ack Appeal 2011-002955 Reexamination Control 95/000,205 Patent US 7,049,546 22 cc: Patent Owner: GEORGE R. CORRIGAN CORRIGAN LAW OFFICE 2168 COLLADAY POINT DRIVE STOUGHTON, WI 53589 Third Party Requester: TERRANCE J. WIKBERG LINCOLN ELECTRIC COMPANY/PERKINS COIE LLP 607 14TH STREET, NW WASHINGTON, DC 20005-2003 Copy with citationCopy as parenthetical citation