Ex Parte Feldhausen et alDownload PDFPatent Trial and Appeal BoardOct 28, 201312035830 (P.T.A.B. Oct. 28, 2013) 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. 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. Appeal 2011-009678 Application 12/035,830 3 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 Appeal 2011-009678 Application 12/035,830 4 “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. Appeal 2011-009678 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. Appeal 2011-009678 Application 12/035,830 6 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; Appeal 2011-009678 Application 12/035,830 7 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 rvb Copy with citationCopy as parenthetical citation