Ex Parte Feldhausen et al

Patent Trial and Appeal Board

Oct 28, 2013

12035830 (P.T.A.B. Oct. 28, 2013)

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.
12/035,830 02/22/2008 Joseph E. Feldhausen 480805.00038.20475C 1742
7590 10/28/2013
Jack M. Cook, Quarles & Brady, LLP
411 E. Wisconsin Ave.
Milwaukee, WI 53202-4497
EXAMINER
MATHEW, HEMANT MATHAI
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
10/28/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH E. FELDHAUSEN, JEFFREY W. RAPPOLD,
GARY A. THYSSEN, CRAIG S. KNOENER,
CHRISTOPHER D. McINNIS, BRIAN A. SCHWARTZ, and
MICHAEL W. HOGAN
____________

Appeal 2011-009678
Application 12/035,830
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joseph E. Feldhausen et al. (“Appellants”) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-11 and 14-22. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2011-009678
Application 12/035,830

2
CLAIMED SUBJECT MATTER
Claim 1 is representative of the subject matter on appeal (see App.
Br., Claims App’x.):
1. A wire feeder system comprising:
a wire feeder configured to receive welding-type power
from a welding-type power source to perform a welding-type
process;
a support structure surrounding at least a portion of the
wire feeder and configured to facilitate movement of the wire
feeder independently from the welding-type power source; and
at least one of an auxiliary power outlet configured to
deliver transmission-type power and a compressed air outlet
configured to deliver a supply of compressed air integrated
within one of the wire feeder and the support structure.
UNCONTESTED REJECTIONS
Appellants do not contest the provisional non-statutory obviousness-
type double patenting rejections of claims 1-11 and 14-20 based upon
copending U.S. Application Nos. 12/035,895; 12/035,089; 12/035,861; and
12/035,751.1 See Ans. 5-7 (setting forth double patenting rejections); App.
Br. 8 and Reply Br. 2 (not identifying double patenting rejections as part of
the present appeal). Appellants also do not contest the indefiniteness
rejection of claims 17 and 18 under 35 U.S.C. § 112, second paragraph. See
Ans. 8 (setting forth indefiniteness rejection); App. Br. 8 and Reply Br. 2
(not identifying indefiniteness rejection as part of the present appeal). We
summarily sustain these uncontested rejections.

1 We do not include claims 12 and 13 here because those claims have been
canceled. See App. Br. 3 and A-3; Amendment dated March 1, 2010, at 4.
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Application 12/035,830

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CONTESTED REJECTIONS
Appellants request our review of the following contested rejections
(App. Br. 8):
Claims 1-4, 14, and 16-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Matiash (US 6,707,004 B2, iss. Mar. 16, 2004) in view of
Saylor (US 2007/0296223 A1, pub. Dec. 27, 2007);
Claims 5-11, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Matiash in view of Saylor, and further in view of Fihey
(US 4,959,523, iss. Sep. 25, 1990);
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Matiash in view of Saylor, and further in view of Morris (US 4,757,849, iss.
Jul. 19, 1988); and
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Matiash in view of Saylor, and further in view of Albrecht
(US 6,479,795 B1, iss. Nov. 12, 2002).
ANALYSIS OF CONTESTED REJECTIONS
Rejection of Claims 1-4, 14, and 16-18
as Unpatentable Over Matiash and Saylor
Appellants argue this rejection is improper because Matiash and
Saylor, whether taken alone or in combination, fail to disclose or suggest a
support structure “surrounding at least a portion of the wire feeder” as
required by independent claims 1 and 14. See App. Br. 11-12 and 14.
The Examiner found Matiash discloses a pull cart support structure 68
which surrounds at least a portion of a wire feeder 16. See Ans. 9; Matiash
figs. 1-2 and col. 3, ll. 32-37 and 51-56. The Examiner found the
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Application 12/035,830

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“surrounding” claim requirement is met because the Matiash wire feeder 16
“sits atop” the Matiash pull cart support structure 68, such that “the top
surface of pull cart 68 surrounds at least a portion of wire feeder 16 as
schematically shown in Fig. 2.” See Ans. 16-17 and 19. The Examiner
further noted the Matiash wire feeder 16 has rubber feet 50, which help limit
sliding of the wire feeder 16 on top of the pull cart support structure 68. Id.
We agree with Appellants’ contention that the Examiner erred when
finding the Matiash pull cart support structure 68 surrounds at least a portion
of the Matiash wire feeder 16. See App. Br. 11-12. As noted by Appellants,
an ordinary and customary meaning of the term “surround” is “to enclose on
all sides.” See Reply Br. 3. Thus, the Matiash wire feeder 16 is not
surrounded by the push cart support structure 68, but rather is disposed on
top of that structure 68. See App. Br. 11-12.
The Examiner does not rely on the Saylor disclosure as being
pertinent to the “surrounding at least a portion” claim requirement of
independent claims 1 and 14. See Ans. 11-12, 16-17, and 19. Therefore,
due to the noted deficiency of the Matiash disclosure in that regard, we do
not sustain the rejection of claims 1-4, 14, and 16-18 as unpatentable over
Matiash in view of Saylor.
Rejections of Dependent Claims 5-11, 15 and 19-21
as Unpatentable Over Matiash, Saylor, and Additional Prior Art
The Examiner does not rely on the additional prior art references cited
in these rejections — Fihey, Morris, and Albrecht — as being pertinent to
the “surrounding at least a portion” requirement discussed above. Ans. 12-
15 and 22-26. Therefore, due to the noted deficiency of the Matiash
disclosure in that regard, we do not sustain these rejections.
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Application 12/035,830

5
Rejection of Claim 22
as Unpatentable Over Matiash, Saylor, and Fihey
Appellants argue this rejection is improper because Matiash, Saylor,
and Fihey, whether taken alone or in combination, fail to disclose or suggest
“a controller configured to coordinate operation of the gouging torch and the
welding torch to perform only one of the gouging-type process and the
welding-type process at a given time” as required by the claim. See App. Br.
19-20 (emphasis added). The Examiner does not rely on Matiash in this
regard, so we consider both Saylor and Fihey as they might pertain to this
claim limitation.
The Examiner found Saylor pertinently discloses process selection
switches 45 to selectively operate electrical power and an air compressor in
a welding unit 1. See Ans. 12; Saylor, fig. 3 and para. [0028]. The three
toggle switches 45 cited by the Examiner control electromagnetic clutches to
selectively engage or disengage the mechanical output of an internal
combustion engine (ICE) to, respectively, an electric generator, an air
compressor, and a water pump. See Saylor para. [0029]. However, any one
or two or even all three of those components may be connected to the ICE at
any given time. See Saylor para. [0055]. Thus, Saylor does not disclose that
the switches 45 operate so that, in the words of claim 22, “only one of” the
electric generator, the air compressor, and the water pump is engaged to the
ICE “at a given time.”2

2 The Examiner also found Saylor discloses a pressure relief valve
operatively coupled to the switches 45, “the valve only delivering air to the
gouging torch when the process selection switch [45] enables the plasma
cutter to perform the cutting process.” Ans. 10 (citation omitted). Even if
that reading of Saylor is accurate, it fails to establish the switches 45 are
configured to perform only one process at any given time.
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Application 12/035,830

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We therefore next consider the Examiner’s analysis of the Fihey
disclosure. The Examiner pertinently cites Fihey as disclosing a controller
50 to perform several different operations (see Ans. 13 and 24-25), and finds
the Fihey controller 50 is “capable of running a task at any time making it
obvious to have the capability to perform one task at a time if necessary.”
See Ans. 25 (emphasis added). That finding is not sufficient to establish
obviousness of the claimed subject matter for at least two reasons.
First, it disregards the term “only” in claim 22. A controller
configured to “perform only one of” two processes “at a given time” (as
claimed) is very different from a controller configured to perform “one task
at a time if necessary” (as found by the Examiner). See Ans. 25. Second,
even if the Examiner meant to find that the controller 50 of Fihey is capable
of running “only one task at a time if necessary,” that alone is not sufficient
to show Fihey renders obvious a controller that is actually so configured.
Fihey must instead disclose its controller 50 is actually programmed in that
fashion, rather than the mere capability of being so programmed. The
Examiner does not cite anything in the Fihey disclosure to establish the
controller 50 is configured to perform only one of two processes at a given
time.
Accordingly, we do not sustain the Examiner’s rejection of claim 22
as unpatentable over Matiash in view of Saylor and Fihey.
DECISION
We AFFIRM the non-statutory obviousness-type provisional double
patenting rejections of claims 1-11 and 14-20;
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Application 12/035,830

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We AFFIRM the indefiniteness rejection of claims 17 and 18 under
35 U.S.C. § 112, second paragraph; and
We REVERSE the rejections under 35 U.S.C. § 103(a) of claims 1-11
and 14-22 as unpatentable over the prior art.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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