Ex Parte HutchisonDownload PDFPatent Trial and Appeal BoardApr 16, 201311110216 (P.T.A.B. Apr. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD M. HUTCHISON ____________________ Appeal 2011-001620 Application 11/110,216 Technology Center 3700 ____________________ Before: JOHN C. KERINS, SCOTT A. DANIELS, and JILL D. HILL, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001620 Application 11/110,216 2 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 Claims 1-27, 33-35 and 46-48 are canceled and claims 37 and 38 are withdrawn.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. Appeal 2011-001620 Application 11/110,216 3 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. Appeal 2011-001620 Application 11/110,216 4 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. Appeal 2011-001620 Application 11/110,216 5 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. Appeal 2011-001620 Application 11/110,216 6 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 Appeal 2011-001620 Application 11/110,216 7 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. Appeal 2011-001620 Application 11/110,216 8 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 Klh Copy with citationCopy as parenthetical citation