Ex Parte Hutchison

Patent Trial and Appeal Board

Apr 16, 2013

11110216 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD M. HUTCHISON
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Appeal 2011-001620
Application 11/110,216
Technology Center 3700
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Before: JOHN C. KERINS, SCOTT A. DANIELS,
and JILL D. HILL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/110,216

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STATEMENT OF CASE
Richard M. Hutchison (Appellant) appeals under 35 U.S.C. § 134
from a rejection of claims 28-32, 36, 39-45 and 49. Claims 1-27, 33-35 and
46-48 are canceled and claims 37 and 38 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The invention is directed to a method and apparatus for short-circuit
welding utilizing cycle history. Claims 28 and 40, reproduced below, are
illustrative of the claimed subject matter:
28. A method of short circuit welding that includes
determining when a short is about to clear; the
improvement comprising calculating a value Vc
defined by Vc = d/dt(kl *dp/dt), wherein kl is a
scalar, dp/dt is the derivative of an output power,
and comparing Vc to a Vthreshold and using the
determination that the short is about to clear to
control an output current.

40. A short circuit welding power supply,
comprising a power circuit and a controller
connected to the power circuit, wherein the
controller includes means for determining when a
short is about to clear by calculating a value Vc
defined by Vc = d/dt(kl *dp/dt), wherein kl is a
scalar, dp/dt is the derivative of the output power,
and comparing Vc to a Vthreshold.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hamamoto
Hutchison
US 5,270,516
US 6,087,626
Dec. 14, 1993
Jul. 11, 2000

REJECTIONS
The Examiner made the following rejections:
Claims 40-45 and 49 stand rejected under 35 U.S.C § 112 second
paragraph as being indefinite.1 Ans. 8.
Claims 28-32, 36 and 39 stand rejected under 35 U.S.C § 101 as being
directed to non-statutory subject matter. Ans. 4.
Claims 28, 29, 32, 36, 39-41, 44, 45 and 49 stand rejected under 35
U.S.C § 102(b) as being anticipated by Hutchison. Ans. 5.
Claims 30, 31, 42 and 43 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Hutchison and Hamamoto. Ans. 6.

ANALYSIS
Claims 40-45 and 49 as indefinite.
Following the administrative remand of this Appeal, in the subsequent
Examiner’s Answer of July 27, 2010, the Examiner entered a new ground of
rejection, rejecting claims 40-45 and 49 as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant

1 The Board administratively remanded the present Appeal to the Examiner
on June 3, 2010, for consideration as to potential indefiniteness under 35
U.S.C. § 112, second paragraph, of claims 40-45 and 49. See Order
Remanding Appeal To Examiner, pgs. 2-3. These claims were then rejected
on this ground in an Examiner’s Answer mailed July 27, 2010, in response
to the remand order, as discussed in greater detail below.
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regards as the invention. Ans. 3. The Examiner’s Answer properly notified
Appellant that a new ground of rejection has been presented. The Appellant
did not respond, nor file a Reply Brief to the new ground of rejection
presented in the subsequent Examiner’s Answer. The appeal of claims 40-
45 and 49 included in the new ground of rejection is dismissed. See 37
C.F.R. § 41.39(b).
Claims 28-32, 36 and 39 as rejected under 35 U.S.C § 101 as being directed
to non-statutory subject matter.

The Examiner rejected claims 28-32, 36 and 39 as directed to non-
statutory subject matter stating that “a § 101 process must be (1) tied to
another statutory class (such as a particular apparatus) or (2) transform
underlying subject matter (such as an article or materials) to a different state
or thing,” and that in the instant case “independent claims 28, 32, [] and 36
are process/method claims reciting mental steps only.” Ans. 4.2 The
Examiner does not set forth any other factors weighing either towards or
against patent eligibility.
In the Brief, Appellant argues that the Examiner has erred because
each of the independent claims transforms the output current of welding
power supply to a different state by “requir[ing] that the output current of a
welder be controlled in response to determining that the short is about to
clear.” Br. 10. Appellant asserts that the claims are drawn not merely to
mental steps but in fact control the output current of the welding power

2 The Examiner’s Answer (Ans.) referred to throughout our opinion, unless
otherwise indicated, is the Subsequent Examiner’s Answer of July 27, 2010
following remand of the present Appeal based on the original Examiner’s
Answer of November 20, 2009.
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supply by transforming the flow of electrons from one state or magnitude to
another upon the determination that a short is about to clear. Id.
Having reviewed the Examiner’s § 101 rejection of method claims 28-
32, 36 and 39 in light of Appellant’s above contention, we conclude that the
determination of when a short is about to clear is practically applied to a
physical entity (an output current) in the claim. As pointed out by
Appellant, output current from a short circuit welding machine is “a real
tangible thing that produces sufficient heat to melt metal.” Br. 10. Altering
the flow of electrons from one state or magnitude to another in order to
control the output current of the short circuit welding machine “transforms
the real world subject matter”. Id. Indeed, this method, specifically the step
of “using the determination that the short is about to clear to control an
output current” as recited in claim 28, could not, as a practical matter, be
performed entirely in a human’s mind. Accordingly, we are persuaded by
Appellant’s argument and we agree that each of independent claims 28, 32
and 36 “transforms [] underlying subject matter (current/output of a welding
power supply) to a different state” and is not merely a product of mental
steps. Br. 10. We do not sustain the § 101 rejection of method claims 28-
32, 36 and 39.

Claims 28, 29, 32, 36 and 39-41 as anticipated by Hutchison.

The Examiner found that Appellant’s own prior patent, Hutchison,
discloses a method of determining when a short is about to clear, including
calculating a value Vc where Vc = d/dt(kl *dp/dt), comparing Vc to a Vthreshold
and using the determination of when the short is about to clear to control an
output current. Ans. 5 (citing Hutchison, Abstract, col. 3, ll. 55-62, col. 6, ll.
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37-52, col. 8, l. 53 – col. 9, l. 29, col. 10, ll. 32-53, col. 11, ll. 10-45, col. 17-
18, claims 13-14). The Examiner also found that Hutchison discloses a
short-circuit welding power supply, a power circuit and controller connected
therewith. Ans. 5. The Examiner also reasoned that where Vthreshold may
vary with welding conditions as disclosed in Hutchison, Vthreshold thus varies
in response to welding cycle history, giving the claims their broadest
reasonable interpretation. Id.
Appellant argues that Hutchison cannot anticipate the presently
claimed invention because the reference does not disclose that Vc = d/dt(kl
*dp/dt), but in fact Hutchison discloses the equation Vc = d/dt(kl *dp/dt –
k2 di/dt) which includes subtracting an additional value before taking the
second derivative of the equation. Br. 10-11. Appellant asserts more
specifically that “the prior art does not teach to compare d/dt(kl *dp/dt) to a
threshold, rather it teaches to compare d/dt(kl *dp/dt - k2di/dt) to a
threshold.” Br. 11. Appellant’s argument is persuasive even given the open
ended nature of the present claims because aside from the case where k2di/dt
= 0, in any other instance the prior art Vc provides an entirely different value
for comparison with the Vthreshold vis-à-vis the currently claimed Vc. The fact
that the values could be the same in the one instance where k2di/dt = 0 does
not alter the fact that the prior art compares in every instance the complete
equation d/dt(kl *dp/dt - k2di/dt) to the threshold value. In other words,
Hutchison does not disclose comparing merely d/dt(kl *dp/dt) in any
instance to a threshold value, but d/dt(kl *dp/dt - k2di/dt) even in the case
where the subtracted value is 0. As each of the rejected independent claims
28, 32, 36 and 40, include the same formula compared to Vthreshold, the
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rejection as to all of the claims 28, 29, 32, 36 and 39-41 as anticipated by
Hutchison is not sustained.

Claims 30 and 31, as unpatentable over Hutchison, and Hamamoto.

The rejection of claims 30 and 31 which depend from independent
claim 28, relies on the same unsubstantiated finding regarding Hutchison’s
disclosure of Vc = d/dt(kl *dp/dt – k2 di/dt) as it is compared to Vthreshold.
Ans. 6-7. The Examiner’s citation of Hamamoto with respect to varying
Vthreshold based on past welding cycles does not remedy the deficiencies of
Hutchison as discussed supra with respect to claims 28 and 40. As such, we
also do not sustain the rejection of claims 30 and 31 as unpatentable over
Hutchison and Hamamoto.

DECISION
For the above reasons, the appeal of claims 40-45 and 49 is
DISMISSED .
The Examiner’s rejection of claims 28-32, 36 and 39 under 35 U.S.C
§ 101 is REVERSED.
The rejection of claims 28, 29, 32, 36, 39-41, 44, 45 and 49 as being
anticipated by Hutchison is REVERSED.
The rejection of claims 30, 31, 42 and 43 as unpatentable over
Hutchison, and Hamamoto is REVERSED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

REVERSED

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