Ex Parte 7049546 et al

Board of Patent Appeals and Interferences

Feb 28, 2012

95000205 (B.P.A.I. Feb. 28, 2012)

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
____________________

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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
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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.
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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;

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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

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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.
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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).
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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).
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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).
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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
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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.

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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.
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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.
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(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
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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.
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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
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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
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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.
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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
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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
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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