Ex Parte Carrier et al

Patent Trial and Appeal Board

Mar 14, 2016

11742108 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111742, 108 0413012007
28268 7590 03/14/2016
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
FIRST NAMED INVENTOR
David A. Carrier
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TN-11068 4271
EXAMINER
EV ANS, GEOFFREY S
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
03/14/2016 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 DAVID A. CARRIER, GEOFFREY S. HOW ARD,
SHELBY K. STARKS, and DAVID A. GOLDMAN
Appeal2014-000246
Application 11/742,108
Technology Center 3700
Before JENNIFER D. BAHR, LEE L. STEPINA, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Carrier et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision finally rejecting claims 1, 4-13, 15, 18-23, 25,
26, 29-33, 35, and 38--44. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.
1 The Examiner has indicated that "[c]laims 45 and 47 are allowed." Final
Act. 17.
Appeal2014-000246
Application 11/742,108
THE CLAIMED SUBJECT MATTER2
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A welding machine comprising:
a housing;
first and second batteries disposed in the housing and
being connected in parallel, the first and second batteries being
power tool batteries that are electrically connectable and
physically attachable to a power tool;
a ground clamp connected to the first and second batteries;
and
a first welding electrode connected to the first and second
batteries;
the batteries providing a current output of at least 40 amps;
wherein the welding machine, excluding the ground clamp
and any cables connecting to the first welding electrode, weighs
less than 30 pounds and has a current-to-weight ratio between
about 3 .1 7 amps/pound and about 10 amps/pound.
REJECTIONS
I. Claims 1, 4--13, 15, 18-23, 25, 29-33, 35, and 38--44 stand
rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
II. Claims 1, 4, 10, 25, 35, and 38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chandler (US 6,225,596 Bl, issued
May 1, 2001), Vogel (US 2007/0181547 Al, published Aug. 9,
2007), and Suzuki (Isao Suzuki and Koichi Nishiyama, High
2 The Claims Appendix in the Appeal Brief contains incorrect versions of
claims 1, 15, 25, and 35; correct versions can be found in the Amendment
filed December 11, 2012 (hereinafter "Amendment").
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Application 11/742,108
Power and Long Life Lithium-ion Battery for Backup Power
Sources, IEICE/EEEE INTELEC'03 15-2, 317-322 (2003)).
III. Claims 13, 15, 18, 26, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chandler, Vogel, Suzuki, and Kirk
(GB 2,316,244 A, published Feb. 18, 1998).
IV. Claims 5, 29, and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chandler, Vogel, Suzuki, and Watson
(US 2004/0196002 Al, published Oct. 7, 2004).
V. Claims 6, 7, 30, 31, 40, and 41 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chandler, Vogel, Suzuki, Watson,
and Weber (US 5,757,162, issued May 26, 1998).
VI. Claims 8, 9, 32, 33, 42, and 43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chandler, Vogel, Suzuki, and Carrier
(US 2005/0073282 Al, published Apr. 7, 2005).
VII. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chandler, Vogel, Suzuki, and Radtke (US 2004/0226930 Al,
published Nov. 18, 2004).
VIII. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chandler, Vogel, Suzuki, and Wilcox (US 4,656,327, issued
Apr. 7, 1987).
IX. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chandler, Vogel, Suzuki, Kirk, and Watson.
X. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chandler, Vogel, Suzuki, Kirk, Watson, and
Weber.
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Application 11/742,108
XL Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chandler, Vogel, Suzuki, Kirk, and Carrier.
DISCUSSION
Rejection I-Written Description
The stated basis for the rejection under 35 U.S.C. § 112, first
paragraph, is that "there is no support in the originally filed specification,
including the claims, for 'excluding the ground clamp, the first welding
electrode and any connecting cables'" in independent claims 1, 15, 25, and
35. Final Act. 2. The Examiner pointed to paragraph 45 of Appellants'
Specification as excluding the weight of cables GCC and SOC, clamp GC,
and gun 50 from the recited weight ranges of the welding machine, in two
battery pack and four battery pack configurations. Id.
Appellants amended independent claims 1, 15, 25, and 35 in the
Amendment, in an attempt to overcome this rejection and a rejection under
35 U.S.C. § 112, second paragraph. Amendment 8. The Examiner entered
the Amendment. See Advisory Act., mailed Jan. 30, 2013.3 The Examiner
states that "the amendment to the claims merely removes the parentheses
thereby solving the rejection under 35 [U.S.C. §] 112, second paragraph[,]
but does not solve the rejection of claims 1, 4--13, 15, 18-23, 25, 29-33,
35[,] and 38--44 under the written description requirement." Ans. 6-7. The
statement that the amendment merely removes the parentheses is not
accurate. The language added in the amendment (i.e., "excluding the ground
clamp and any cables connecting to the first welding electrode") differs from
the parenthetical language deleted from the claims (i.e., "(excluding the
3 Hereinafter "Advisory Action" or "Advisory Act."
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Application 11/742,108
ground clamp, the first welding electrode and any connecting cables)").
Notably, the weight of the "first welding electrode" is no longer recited as
being excluded from the claimed welding machine weight.
As none of the Advisory Action, the Pre-Appeal Brief Decision, and
the Examiner's Answer expressly indicates that the rejection under
35 U.S.C. § 112, first paragraph, has been withdrawn, this rejection is still
pending, and is before us for review. See Advisory Act. 2; Pre-Appeal Brief
Decision 1;4 Ans. 2, 6-7; 37 C.F.R. § 41.3 l(c) (2015) ("An appeal, when
taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office."); 37 C.F.R. § 41.39(a)(l) (2015) (providing that the
"examiner's answer is deemed to incorporate all of the grounds of rejection
set forth in the Office action from which the appeal is taken (as modified by
any advisory action and pre-appeal brief conference decision), unless the
examiner's answer expressly indicates that a ground of rejection has been
withdrawn").
Appellants do not present any arguments contesting this rejection in
their Appeal Brief. See Appeal Br. 9-18. Thus, Appellants have waived any
argument of error. See 37 C.F.R. § 41.37((c)(iv) ("Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments ... not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal."). Appellants present an argument contesting this rejection in their
Reply Brief. See Reply Br. 8. However, this argument is not timely. See
37 C.F .R. § 41.41 (b )(2) ("Any argument raised in the reply brief which was
4 Notice of Panel Decision from Pre-Appeal Brief Review, mailed Feb. 22,
2013.
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Application 11/742,108
not raised in the appeal briet: or is not responsive to an argument raised in
the examiner's answer, ... will not be considered by the Board for purposes
of the present appeal, unless good cause is shown."). In any event,
Appellants' argument that a welding gun is a welding electrode (Reply Br.
8) does not sufficiently address the issue of whether the present application,
as of its filing date, provides written description support for the limitation in
the claims before us that "the welding machine, excluding the ground clamp
and any cables connecting to the first welding electrode, weighs less than 30
pounds." Notably, paragraph 38 of Appellants' Specification, which
Appellants cite in Section IV of their Appeal Brief as supporting the
limitation in question, discusses "the total weight of welding machine 100,
excluding cables GCC, SCC and clamps GC, SC." See Appeal Br. 6 (citing
Spec. 7, 11. 3-8). Thus, this paragraph fails to support the limitation in
question because it excludes not only the ground clamp (GC) and any cables
(SCC) connecting to the welding electrode, but also the stick clamp (SC),
which holds electrode stick S, and a cable (GCC) connecting to the ground
clamp, from the recited weight of the welding machine. Paragraphs 45 and
52 of Appellants' Specification discuss "total weight of welding machine
100" and "total weight of plasma cutting machine 200," respectively, but
also exclude at least cable GCC connecting to the ground clamp from the
disclosed weight, and, thus, appear equally unavailing in providing support
for the limitation in question.
For the above reasons, we sustain the rejection of claims 1, 4--13, 15,
18-23, 25, 29-33, 35, and 38--44 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Application 11/742,108
Rejection II-Obviousness based on Chandler, Vogel, and Suzuki
Appellants argue that "[ n ]one of the cited references provides any
information as to the weight of the welder, the welder housing, circuitry, etc.
As such, the Examiner has not provided any evidence as to how much a
welder built according to his proposed combination would weigh." Reply
Br. 4--5.
In addressing the weight of the welding machine, the Examiner made
findings as to the weight (i.e., 5 kg, or approximately 11 pounds) of Lithium
ion batteries, which the Examiner proposed to incorporate from the
teachings of Vogel into Chandler's welding machine. Final Act. 5. The
Examiner further took "[ o ]fficial notice ... that the weight of the circuitry is
substantially less than the weight of the batteries and the module
surrounding the batteries." Id. The Examiner determined that "[i]t would
have been obvious to adapt Chandler[] in view of Vogel[] and Suzuki[] to
provide this to lower the weight," but emphasized that "[t]his necessarily
excludes the weight of the electrodes or gun and any connecting cables." Id.
In responding to Appellants' argument regarding the lack of evidence as to
how much a welder built according to the Examiner's combination would
weigh, the Examiner added only that "the weight of the welding machine is
merely a desired result depending upon the weight of the battery pack, the
circuitry and the housing" and that "[ o ]ne of ordinary skill in the art would
be motivated to ... use materials to create a housing with as low a weight as
possible and to use minimal or low weight circuitry to create as low a weight
as possible" to decrease the burden on welders wearing the cordless welding
machine. Ans. 8.
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Application 11/742,108
The Examiner's findings and reasoning are deficient in that they
expressly exclude the weight of the electrodes or gun. As noted above,
claims 1, 15, 25, and 35 require that the weight of the welding machine,
including the weight of the electrode, be less than 30 pounds. The Examiner
did not rely on Kirk, Carrier, Radtke, Watson, Weber, or Wilcox for any
teaching that would overcome this deficiency. See Final Act. 11-16. Thus,
the Examiner failed to establish by a preponderance of the evidence that a
welding machine as called for in independent claims 1, 15, 25, and 35 would
have been obvious to a person having ordinary skill in the art. Accordingly,
we do not sustain any of the rejections under 35 U.S.C. § 103(a).
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. For the reasons discussed, supra, in regard
to claim 25, from which claim 26 depends, Appellants' Specification fails to
support the subject matter of claim 26 as required by the written description
requirement of 35 U.S.C. § 112, first paragraph.
DECISION
The Examiner's decision rejecting claims 1, 4--13, 15, 18-23, 25, 29-
33, 35, and 38--44 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement, is AFFIRMED.
The Examiner's decision rejecting claims 1, 4--13, 15, 18-23, 25, 26,
29-33, 35, and 38--44 under 35 U.S.C. § 103(a) is REVERSED.
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We enter a NEW GROUND of REJECTION of claim 26 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2014). 37 C.F.R. § 41.50(b) provides that "[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmances will be deferred until
conclusion of the prosecution before the Examiner unless the affirmed
rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
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case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
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)(l)(iv) (2014).
AFFIRMED; 37 C.F.R. § 41.50(b)
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