Ex Parte Casner et al

Patent Trials and Appeals Board

Jun 20, 2019

12965171 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/965,171 12/10/2010
23721 7590 06/24/2019
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
FIRST NAMED INVENTOR
Bruce A. Casner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ITW 23074 6267
EXAMINER
GAMI, TEJAL
ART UNIT PAPER NUMBER
2118
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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 BRUCE A. CASNER and L. THOMAS HA YES
Appeal 2018-0077 60
Application 12/965,171
Technology Center 2100
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
BELISLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
all pending claims, namely, claims 1-6, 9-16, and 20-23. App. Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Illinois Tool Works Inc. as the real party in interest.
App. Br. 3.
Appeal 2018-0077 60
Application 12/965,171
STATEMENT OF THE CASE
The Claimed Invention
Appellants' invention generally relates to "a welding-type power
supply with a database management system (DBMS) and/or an embedded
database," as shown, for example, in Figure 1, reproduced below. Spec. ,-J 1,
Fig. 1.
Figure 1 shows a welding-type system, including "a power supply 1
shown in a single housing, and a wire feeder 6, which cooperate to provide
power over a pair of weld cables 2 and 4 to a workpiece 7." Spec. ,-J 30.
"Feeder cable 3 and a voltage sense cable 5 are used for control/feedback."
Spec. ,-J 30. A more detailed illustration of the welding power supply 1 is
shown in Figure 2, reproduced below.
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Appeal 2018-0077 60
Application 12/965,171
202
INPUT
FIG. 2
2D4
POWER
CONTROLLER
206
OUTPUT
\
200
20B
210
Figure 2 shows a block diagram of the welding-type system.
Spec. ,i 32. This system includes "an input circuit 202, a power circuit 204,
and an output 206, as well as a controller 208." Spec. iJ32. The circuits 202,
204, and 206 and controller 208 are part of the welding power supply 1 that
is in the single housing shown in Figure 1. Spec. ,i 32.
According to the Specification, in an exemplary embodiment, the
controller 208 includes "a database module 210 [that] includes a DBMS, and
is preferably embedded into [the] welding-type system." Spec. ,i 35; see
Spec. ,i 21 ("The welding-type system includes a control module with an
embedded database."); Spec. ,i 26 ("a DBMS and/or an embedded
database").
Also, according to the Specification, the disclosed welding-type
system "performs generally as prior art welding systems, but includes an
embedded database" (Spec. ,i 31 ( emphasis added)), and "a welding-type
system that includes an effective way to store multiple variables, and to
allow access to those variable from multiple sources, is desirable"
(Spec. ,i 5).
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Appeal 2018-0077 60
Application 12/965,171
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal:
1. A welding-type system including a source of power, and a
controller connected to the source of power, wherein the source
of power and the controller are disposed within a single housing,
wherein the controller includes an embedded database within the
single housing having a database management system.
App. Br. 11 (Claims Appendix).
References
The Examiner relied on the following references as evidence of
unpatentability of the claims on appeal:
Holverson
Spear
US 6,747,247 B2
US 8,224,881 Bl
Rejections
June 8, 2004
July 17, 2012
The Examiner made the following rejections of the claims on appeal:
Claims 1 and 15 were rejected under pre-AIA 35 U.S.C. § 112, ,i 1 for
failing to comply with the written description requirement. 2 Final Act. 2-3.
Claims 1-6, 9-16, and 20-23 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Holverson and Spear. Final Act. 3-12.
ANALYSIS3
Appellants argue the Examiner erred in rejecting claims 1-6, 9-16,
and 20-23 as obvious over Holverson and Spear. See App. Br. 9-1 O; Reply
2 The Examiner subsequently withdrew the rejection under pre-AIA
35 U.S.C. § 112, ,i 1 in the Answer. See Ans. 3. Accordingly, we find this
rejection moot and do not address it herein.
3 Throughout this Decision, we have considered Appellants' Appeal Brief
filed February 28, 2018 ("App. Br."); Appellants' Reply Brief filed July 23,
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Appeal 2018-0077 60
Application 12/965,171
Br. 2. Appellants argue these pending claims as a group. See App. Br. 9-
10. Thus, for purposes of our analysis, we select independent claim 1 as the
representative claim, and any claim not argued separately will stand or fall
with our analysis of the rejection of claim 1. See 37 C.F.R. § 41.37( c )(1 )(iv)
(2017).
As described in the Specification, a database is "a structured
collection of records or data that is stored in a digital system." Spec. ,i 22.
A database management system (DBMS) incorporates a program to manage
the information stored in the database and queries made to the database.
See Spec. ,i,i 22-23. Additionally, the Specification describes that the
database, the DBMS, or both may be "embedded." Spec. ,i,i 23-24, 26, 29.
According to the Specification, a database or DBMS may be considered to
be "embedded" when it is "tightly integrated with an application software
that requires access." Spec. ,i 24.
Claim 1 recites, inter alia, "the controller includes an embedded
database within the single housing having a database management system."
Emphasis added. The Specification does not describe, nor do Appellants
persuasively explain, that a database management system that manages
information and access to an embedded database would be understood to be
an embedded database management system. Cf Spec. ,i 24. Thus, the
claimed database must be embedded, whereas the database management
system (DBMS) need not be.
2018 ("Reply Br."); the Examiner's Answer mailed May 22, 2018 ("Ans.");
the Final Office Action mailed April 12, 2017 ("Final Act."); and
Appellants' Specification filed December 10, 2010 ("Spec.").
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Appeal 2018-0077 60
Application 12/965,171
Appellants argue that the Examiner erred in rejecting claim 1, for
example, over the combined teachings and suggestions of Holverson and
Spear because "the prior art does not show a welding type power supply with
an embedded database management system (DBMS)." App. Br. 9 (emphasis
added). Appellants' argument that the prior art fails to teach an embedded
database management system is not persuasive of error at least because it is
not commensurate in scope with the claim language. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability).
Moreover, we also find Appellants do not show persuasively that the
Examiner erred in finding that Holverson and Spear at least fairly suggest a
controller including "an embedded database within the single housing
having a database management system," as recited in claim 1.
Appellants argue that "[t]he Examiner acknowledged that [Holverson]
failed to show an embedded DBMS." App. Br. 9-10 (emphasis added); see
Reply Br. 2. However, more correctly, the Examiner finds that Holverson
teaches all aspects of claim 1, including "wherein the controller includes an
embedded database within the single housing," except that Holverson "does
not specify having a database management system." Final Act. 3-4
( emphases added). Holverson generally is directed to "the control of
welding-type power supplies" (Holverson 1 :7-9), and discloses a "state-
based control module" that includes "software instructions and a digital
processor, and/or a state transition table stored in a spreadsheet data base"
(Holverson, Abstract ( emphasis added); see Holverson 3: 19-22 ("The
controller includes a state-based control module that has a state transition
table stored in a spreadsheet database, preferably in non-volatile memory."
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Appeal 2018-0077 60
Application 12/965,171
(emphasis added)), Fig. 1.). Based on the foregoing, we find Appellants do
not show persuasively that the Examiner erred in finding that Holverson
teaches an "embedded database" as recited in claim 1.
The Examiner finds that Spear teaches the remaining features of
claim 1, namely, a database management system (DBMS), and that it would
have been obvious to the skilled artisan "to have modified the welding-type
system of Holverson by incorporating the database management system as
taught by Spear .... " Final Act. 4. The Examiner also notes that
Appellants' Specification states that a DBMS "manages the queries and
information stored on the system" and is "designed to provide the ability to
store, manage and retrieve information through the use of tables" (Spec.
,-J,-J 22-23); and cites Spear's teachings that welding and customer
information "can be stored in a variety of data structures including, but not
limited to, lists, arrays and/or databases," and that a "query component ...
can be adapted to extract weld parameters," among other information.
Ans. 4-5. The Examiner concludes that "Spear teaches a DBMS as claimed
and defined by Appellant to be a database system that incorporates a
program that manages the queries and information stored on the system."
Ans. 5.
In response, Appellants argue that although Spear may teach a DBMS,
it is not an embedded DBMS. See Reply Br. 2 ("[Spear] could easily have
queries external to the database and not tightly integrated - a non-embedded
DBMS."); App. Br. 10 (same). However, contrary to Appellants'
arguments, the Examiner relies on Holverson for the embedded database
feature (not Spear), on Spear for the DBMS feature, and on the combination
for teaching "wherein the controller includes an embedded database within
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Appeal 2018-0077 60
Application 12/965,171
the single housing having a database management system." We find
Appellants improperly argue against Holverson and Spear individually,
rather than address the combined teachings of Holverson and Spear.
See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references"); In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Based on the foregoing, we find Appellants do not show persuasively
that the Examiner erred in finding that Holverson and Spear at least fairly
suggest the limitations of claim 1. Accordingly, we sustain the Examiner's
rejection of claim 1 underpre-AIA 35 U.S.C. § 103(a).
As noted above, Appellants do not separately argue patentability of
independent claim 15 and dependent claims 2-6, 9-14, 16, and 20-23, but
instead rely only on their arguments for patentability of independent claim 1.
Accordingly, for the same reasons set forth above for independent claim 1,
we sustain the Examiner's rejection under pre-AIA 35 U.S.C. § 103(a) of
claims 2-6, 9-16, and 20-23. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/965,171
DECISION
We affirm the Examiner's obviousness rejections of claims 1-6, 9-16,
and 20-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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