Ex Parte Beeson et al

Patent Trial and Appeal Board

Mar 20, 2014

11825597 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/825,597 07/06/2007 Rick Beeson 21128/SWA (ITWO:0198) 7075
52145 7590 03/20/2014
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
03/20/2014 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 RICK BEESON and DANIEL C. FOSBINDER
____________

Appeal 2012-002047
Application 11/825,597
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and JILL D. HILL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002047
Application 11/825,597

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STATEMENT OF THE CASE
Rick Beeson and Daniel C. Fosbinder (Appellants) seek our review
under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 3, 5-
12, 15, 17-21 and 23-29. We have jurisdiction over the appealed claims
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ invention is directed to a system and method that includes
a welding circuit and a charging circuit. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system, comprising:

a portable welder comprising:

a welding output;

a charging output;

a welding circuit coupled to the welding
output;

a charging circuit coupled to the charging
output, wherein the charging circuit is configured
to automatically adjust power to the charging
output based on a feedback associated with
charging a battery; and

an automatic switch between the welding
output and the charging output, wherein the
automatic switch is configured to selectively
activate the welding output in response to a first
feedback indicative of welding demand, and the
automatic switch is configured to selectively
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activate the charging output in response to a
second feedback indicative of a charging demand.

THE REJECTIONS
Appellants appeal from the following rejections:
(i) claims 1, 3, 5, 9, 11, 15, 18-21 and 23-271 under 35 U.S.C.
§ 103(a)2 as being unpatentable over Stava (US 6,818,860 B1, issued Nov.
16, 2004);
(ii) claims 7, 8, 10, 12, 17, 28 and 29 under 35 U.S.C. § 103(a) as
being unpatentable over Stava in view of Koenck (US 2002/0101218 A1,
published Aug. 1, 2002) and Krieger (US 6,822,425 B2, issued Nov. 23,
2004); and
(iii) claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Stava in view of Albrecht (US 2005/0109748, published May 26, 2005).

1 Although the statement of the rejection in the Examiner’s Answer included
claims 28 and 29 as being subject to this rejection, the Examiner made no
findings as to these claims in this rejection. The claims are addressed in the
§ 103 rejection over Stava, Koenck and Krieger. Accordingly, we regard
claims 28 and 29 as not being part of this rejection.
2 The stated statutory basis for this rejection is 35 U.S.C. 102(b). Ans. 4.
However, the Examiner characterizes this as an inadvertent error, and points
out that the detailed grounds of rejection evidence that the rejection is
instead based on obviousness criteria under 35 U.S.C. § 103(a). Id. While
Appellants suggest that the shift in the basis of the rejection should result in
a new non-final office action, Appellants present arguments both in the
Appeal Brief and Reply Brief that assume the rejection to be one grounded
in obviousness. Appeal Br. 8-10; Reply Br. 2-6. Since Appellants have had
a fair opportunity to address, and have addressed, the rationale under § 103,
we will treat the rejection as being based upon that statutory provision.
Appeal 2012-002047
Application 11/825,597

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ANALYSIS
Claims 1, 3, 5, 9, 11, 15, 18-21 and 23-27--§ 103(a)--Stava
Claims 1, 9 and 24-26
Appellants argue claims 1, 9 and 24-26 as a group. We will take
claim 1 as representative of this group.
The Examiner finds that Stava discloses all elements of claim 1 with
the exception of an automatic switch configured to operate as claimed. Ans.
5. The Examiner points out that Stava includes a manual switch 70 that
switches between a charging mode and a welding mode. Ans. 11. The
Examiner concludes that it would have been obvious to instead provide
Stava with an automatic switch as claimed, in that prior case law has held
that broadly providing a mechanical or automatic means to replace manual
activity which accomplishes the same result involves only routine skill in the
art. Ans. 5 (citing In re Venner, 120 USPQ 192 (CCPA 1958)).
Appellants counter that the factual underpinnings in the Venner case
relied on by the Examiner support a conclusion in the present case that claim
1 is patentable. Not only do we not see a close parallel between this case
and that to which the Venner decision was directed, we are of the opinion
that the more recent Leapfrog Enterprises3 decision buttresses the principle
set forth in the Venner case and relied on by the Examiner. The court there
held that, “[a]ccommodating a prior art mechanical device that accomplishes
[a goal previously attained electro-mechanically] to modern electronics
would have been reasonably obvious to one of ordinary skill in the art . . ..
Applying modern electronics to older mechanical devices has been

3 Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir.
2007).
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commonplace in recent years.” Leapfrog Enterprises, 485 F.3d at 1161.
Both decisions support the Examiner’s conclusion in the present case.
Accordingly, we find that the Examiner did not err in concluding that it
would have been obvious to modify the Stava device to include an automatic
switch in place of the manual switch disclosed, with the automatic switch
being configured to operate as claimed. The rejection of claim 1, and of
claims 9 and 24-26 grouped therewith, is sustained.
Claims 11, 19, 20, 21 and 27
Independent claims 11 and 19 require the presence of a
microprocessor that is shared by a smart charging circuit and a welding
circuit to control charging and welding operations. Appeal Br., Claims
Appendix. Appellants argue that “Stava does not teach or suggest use of any
microprocessors, much less a single microprocessor shared by both the
charging circuit and the welding circuit.” Appeal Br. 11.
The Examiner, in stating that “Stava must contain a microprocessor
since it controls voltage and wire speed and involves logic circuits which
determine phase angles,” is apparently acknowledging that Stava does not
explicitly disclose the claimed microprocessor, but that such is inherent in
the Stava device. Ans. 5. The Examiner further reasons that “[a] controller
clearly encompasses a microprocessor since and [sic., an] SCR controller is
used with semiconductor devices which include microprocessors.” Id. at 5,
11-12.
We agree with Appellants, for the reasons set forth at page 12 of the
Appeal Brief, that the Examiner has not established by a preponderance of
the evidence that either controller 180 or SCR controller 120 necessarily
includes a microprocessor. Appeal Br. 12. We further agree with
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Appellants that, even if it were to be assumed that either controller includes
a microprocessor, the Examiner has not established by a preponderance of
the evidence that any such microprocessor would be shared by the charging
and welding circuits. Appeal Br. 12-13. Accordingly, the rejection of
claims 11 and 19 over Stava is not sustained. The same rejection applies to
claim 27, which depends from claim 11, and to claims 20 and 21 depending
from claim 19. The rejection is not sustained as to these claims, as well.
Claims 5, 15 and 23
Appellants further argue, with respect to dependent claims 5, 15 and
23, that Stava fails to disclose a “boost mode” in addition to a battery charge
mode and a jump start mode, as required by these claims. Appeal Br. 13.
Appellants urge that we should take into account the Specification’s
disclosure that a boost mode involves a smaller current (50 amps) than the
high current of the jump mode (100-1000 amps), and further mention other
characteristics of the boost mode allegedly disclosed in the Specification.
Id., citing Spec., para. [0032]. Appellants argue that Stava’s welder “can be
shifted only ‘between the welding mode, the battery charging mode and the
battery eliminator or starting mode and the off position.’ Stava, col. 4, lines
18-21.” Id. at 13-14.
The Examiner cites to Figure 4 of Stava as evidencing that Stava
provides a charging circuit “capable of operating in a battery charge mode
300, jump mode 302 and boost mode 304 with the latter two modes being
used to start an automobile.” Ans. 6. The Examiner further points out that
Figure 4 evidences that the current in mode 304 is lower than the current in
jump mode 302. Ans. 12. The Examiner appears to agree with Appellants
that the claimed “boost mode” involves the starting of an automobile.
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While Appellants’ arguments do not directly challenge the Examiner’s
position that modes 302 and 304 are used to start an automobile, the Stava
disclosure is clear that these two modes are part of the battery charging
mode, and do not relate to the starting of an automobile, as asserted by the
Examiner. Stava, col. 5, l. 31-col. 6, l. 12. That, combined with Appellants’
observation that the switch 70 in Stava has only weld, charge, start and off
modes, leads us to conclude that the preponderance of the evidence does not
support the Examiner’s finding that Stava discloses an additional boost
mode for starting an automobile. Stava, fig. 4; col. 4, ll. 18-21. The
rejection of claims 5, 15 and 23 is not sustained.
Claims 3 and 18
Finally, Appellants argue that Stava does not disclose a system in
which the welding output and the charging output share a single electrical
connector pair of a positive connector and a negative connector, as set forth
in claims 3 and 18. Appeal Br. 14-15. Appellants direct attention to their
Specification, which discusses that a single pair of shared connectors, as
contrasted with the illustrated separate sets of connectors, can simplify
operation of the system. Id. at 14, citing Spec., para. [0016].
The Examiner’s position is that both the welding output 20, 22 and the
charging output 50, 52 are shown to share a pair of positive and negative
connectors in the form of lines 64 and 62, since both the outputs are
connected to switch 60. Ans. 5; see also Stava, fig. 1. The Examiner
maintains that the claims “fail[] to specify the extent of the sharing,” and the
broadest reasonable interpretation of the claims encompasses the Examiner’s
findings. Id. at 5-6.
We find that the Examiner’s proposed claim construction is
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unreasonably broad in that persons of ordinary skill in the art would
understand, from reading Appellants’ Specification, that the claimed shared
connector pair is intended to provide the ability to connect the welding and
charging outputs to external leads that perform either welding or charging.
The Examiner’s reliance on a connector pair that connects an input for an
external switch to the Stava welding and charging system is not seen as
falling within the scope of claims 3 and 18, under their broadest reasonable
interpretation. The rejection of claims 3 and 18 is not sustained.

Claims 7, 8, 10, 12, 17, 28 and 29--§ 103(a)--Stava/Koenck/Krieger
Claim 8
Appellants argue that Stava does not disclose or suggest employing a
battery temperature reading as an element of feedback used to control the
charging of a battery. Appeal Br. 15. The Examiner acknowledges this to
be the case, cites to paragraph [0020] of Koenck as teaching the monitoring
of battery temperature, and concludes that it would have been obvious to
modify the Stava system to include a battery temperature reading in the
feedback for control. Ans. 8-9. Appellants have contested neither the
Examiner’s finding directed to Koenck, nor the Examiner’s conclusion that
the proposed modification would have been obvious. As such, the rejection
of claim 8 is sustained.
Claims 7 and 17
Appellants argue, for claims 7 and 17, that none of Stava, Koenck and
Krieger discloses a charging circuit configured to charge deep-cycle
batteries, low maintenance batteries and gel cell batteries. Appeal Br. 16-17.
The Examiner maintains that the charging circuit of Koenck would be
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capable of charging these battery types, that the batteries themselves are not
positively recited in the claims, and that Koenck’s statement that its charger
may be used to charge nickel-cadmium cells, lithium-ion cells, or the like,
evidences the capability to charge the claimed types of batteries. Ans. 8.
The Examiner’s position is not supported by a preponderance of the
evidence. The Examiner has not established that deep-cycle batteries, low
maintenance batteries and gel cell batteries fall within the ambit of Koenck’s
“or the like” disclosure. In other words, the Examiner has not established
that these type of batteries are “like” Koenck’s nickel-cadmium and lithium-
ion batteries such that it can be said that Koenck’s charger is capable of
charging those types of batteries. The rejection of claims 7 and 17 is not
sustained.
Claims 10, 12, 28 and 29
For claims 10, 12, 28 and 29, Appellants rely on their arguments
presented with respect to the Stava disclosure and claims 1 and 11, and
maintain that Koenck and Krieger do not obviate the alleged deficiencies of
Stava. Appeal Br. 17-18. As discussed above, we do not agree that the
Stava disclosure is deficient in rendering obvious the subject matter of claim
1. Accordingly, the rejection of claim 10 is sustained. We do, however,
agree that the Examiner failed to establish that the subject matter of claim 11
would have been obvious. The Examiner does not rely on Koenck or
Krieger to remedy the deficiencies noted with respect to claim 11. Thus, this
rejection of claims 12, 28 and 29, which depend from claim 11, is not
sustained.

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Claim 6--§ 103(a)--Stava/Albrecht
Appellants rely on their arguments presented with respect to the Stava
disclosure and claim 1, and maintain that Albrecht does not obviate the
alleged deficiencies of Stava. Appeal Br. 18. As discussed above, we do
not agree that the Stava disclosure is deficient in rendering obvious the
subject matter of claim 1. Accordingly, the rejection of claim 6 is sustained.

DECISION
The decision of the Examiner to reject claims 1, 6, 8-10, and 24-26 is
affirmed.
The decision of the Examiner to reject claims 3, 5, 7, 11, 12, 15, 17-
21, 23 and 27-29 is reversed.
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).

AFFIRMED-IN-PART

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