Ex Parte Daniel

Patent Trial and Appeal Board

Oct 24, 2017

13551660 (P.T.A.B. Oct. 24, 2017)

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.
13/551,660 07/18/2012 Joseph A. Daniel 201990.05862 4208
124124 7590 10/26/2017
The Lincoln Electric Company (Pearne Cases)
Attn: Kevin M. Dunn/IP Legal
22801 Saint Clair Ave
Cleveland, OH 44117
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip @ lincolnelectrie .com
brad_spencer @ lincolnelec trie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH A. DANIEL
Appeal 2016-006178
Application 13/551,660
Technology Center 3700
Before: DANIEL S. SONG, KEN B. BARRETT, and WILLIAM A. CAPP,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—4, 11—13, and 19-27. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-006178
Application 13/551,660
THE INVENTION
Appellant’s invention relates to welding. Spec. 11. Claim 19,
reproduced below, is illustrative of the subject matter on appeal.
19. A welding system, said welding system comprising:
a consumable welding package including a consumable
welding wire;
a welding tool;
a welding power source configured to provide electrical
power to the welding tool; and
a wire feeder configured to feed the consumable welding
wire from the consumable welding package to the welding tool,
and further configured to provide wire feeding information,
associated with feeding the consumable welding wire, to the
welding power source,
wherein the welding power source is further configured to:
determine at least one characteristic associated with
replenishing the consumable welding package,
determine if the at least one characteristic is a weak
indicator or a strong indicator that the consumable welding
package has been replenished,
automatically prompt an operator of the welding system
to manually reset a weight value of the consumable welding
package within the welding system when the at least one
characteristic is determined to be a weak indicator, and
automatically reset the weight value of the consumable
welding package within the welding system when the at
least one characteristic is determined to be a strong
indicator.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Blankenship US 6,536,660 B2 Mar. 25, 2003
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Application 13/551,660
The following rejections are before us for review:
1. Claims 19—22 and 27 are rejected under 35U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
2. Claims 19-22 and 27 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement.
3. Claims 1—4, 11—13, and 19-27 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
4. Claims 1—4, 11—13, and 19-27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Blankenship.
OPINION
Written Description
Claim 19 is an independent claim and claims 20—22, and 27 depend
therefrom. Claims App. With respect to the language “configured to,”
which appears four times in claim 19 and once each in claims 20 and 27, the
Examiner finds the claim language is broad enough to encompass any and
all conceivable configurations that are capable of performing the claimed
functions. Final Action 3. “[T]he scope of the functional claim language of
claim 1 is so broad and sweeping that it includes all structures or means that
can perform the function.” Ans. 14. Thus, according to the Examiner, the
scope of the claims is broader than the scope of the Specification. Final
Action 3.
Appellants argue that the Examiner’s position is unreasonable.
Appeal Br. 14.
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Application 13/551,660
The written description requirement is met when the disclosure
“allow[s] one skilled in the art to visualize or recognize the identity of the
subject matter purportedly described.” Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The proper inquiry is “whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” AriadPharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010) (en banc).
For purposes of the instant case, we focus our attention on the
limitation: “wherein the welding power source is further configured to: . . .
determine if the at least one characteristic is a weak indicator or a strong
indicator that the consumable welding package has been replenished.”
Claims App. The Specification defines “weak indicator” — as “a clue, a
signal, data, or information suggesting that something may have happened,
but very possibly not.” Spec. 125. Similarly, “strong indicator” is defined
to “mean a clue, a signal, data, or information suggesting that something has
likely happened, but possibly not.” Spec. 126. The Specification, however,
provides no teaching as to how a practitioner may determine whether an
indicator is “weak” or “strong.” The Specification alludes to “various
techniques” such as a “Q-test.” Spec. 149. The Specification further
alludes to embodiments where “the system learns to recognize”
characteristics associated with replenishing. Id. The Specification further
alludes to neural network techniques, evolutionary algorithm techniques,
inductive logic techniques, etc. Id. 1 50. However, the Specification fails to
describe with any specificity how such techniques are actually used to
determine weak or strong indicators in the context of replenishment of a
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Application 13/551,660
consumable welding package. In particular, we note the complete absence
of a single operational example in the Specification. Cf. Ariad, 598 F.3d
at 1352 (examples are not required where the invention is otherwise
adequately disclosed). Thus, the description fails to reasonably convey that
the inventors had possession of the scope of the claimed welding power
source configured to make determinations concerning weak and strong
indicators.
When a written description cannot be found in the specification, as
filed, the only thing the PTO can reasonably be expected to do is to point out
its non-existence. See Hyatt v. Dudas, 492 F.3d 1365, 1377 (Fed. Cir.
2007). The Examiner has adequately pointed out the deficiency in
Appellant’s disclosure. Final Action 3^4.
We sustain the Examiner’s Section 112 written description rejection
of claims 19-22 and 27.
Enablement
In this ground of rejection, the Examiner essentially takes the same
observations made in the written description rejection discussed above and
re-casts them as a non-enablement ground of rejection. Final Action 4 (“The
remarks in the written description rejection are incorporated here”).
However, courts recognize that a specification need not describe how to
make and use every possible variant of a claimed invention. AK Steel Corp.
v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003). The artisan’s knowledge of
the prior art and routine experimentation can often fill gaps, interpolate
between embodiments, and even extrapolate beyond the disclosed
embodiments depending upon the predictability of the art. Id.
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Application 13/551,660
To be enabling, a patent's specification must . . teach those skilled
in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” ALZA Corp. v. Andrx Pharm., LLC, 603
F.3d 935, 940 (Fed. Cir. 2010) (citation omitted). Enablement is not
precluded by the necessity for some experimentation, as long as the amount
of experimentation is not undue. See In re Wands, 858 F.2d 731, 736—37
(Fed. Cir. 1988) (“The key word is ‘undue,’ not ‘experimentation’”).
Factors to be considered in determining whether a disclosure would require
undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Id. at 737.
In the instant case, the Examiner performs no analysis regarding what
a person of ordinary skill in the art would or would not be able to do without
engaging in undo experimentation. The Examiner’s findings and analysis
are insufficient to state a proper rejection. We do not sustain the Examiner’s
Section 112 enablement rejection of claims 19—22 and 27.
Indefiniteness
The Examiner determines that the terms “weak” and “strong,” which
appear in all pending claims, render all claims indefinite. Final Action 5.
According to the Examiner, Appellant’s Specification is unclear, leaving the
meaning of these terms up to subjective interpretation. Id. More
particularly, with respect to claims 19—22, and 27, the Examiner determines
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Application 13/551,660
that Appellant has engaged in pure functional claiming. Id. (“determine,
determine, automatically prompt, and automatically reset”). Id.
Appellant argues that “weak” and “strong” are terms of degree and, as
such, are not indefinite because Appellant’s Specification provides adequate
standards for measuring such. Appeal Br. 16—17. With respect to the
Examiner’s accusation of “pure functional” claiming, Appellant argues that:
“the welding power source is the structure, and it employs programmed
logic to perform the recited aspects.” Id. at 18.
The test for definiteness under 35 U.S.C. § 112, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The PTO can
properly reject a claim as indefinite if the claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014). During patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989).
Claims 1—4 and 23—26,
Claims 1—4 are method claims, where claim 1 is an independent claim
and claims 2-4, and 23—26 depend, directly or indirectly, therefrom. Claims
App. The second step of claim 1 recites: “determining if said at least one
characteristic is a weak indicator or a strong indicator that the consumable
welding package has been replenished.”
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Application 13/551,660
The Examiner points out, correctly, that Appellant is merely claiming
an intended result. Ans. 15. The Examiner points out that there is no
algorithm disclosed in the Specification to achieve the intended result. Id.
This is just programming that is not disclosed in the
specification. Element 130 is a black box not needed
disclosure. A means for determining strong or weak indicator is
not addressed. It appears to be more undisclosed programing.
Again box 130 is a black box only. If programming exits [sic
exists] for the means recitation it is not disclosed in the
specification. The alarm 133 and computer 150 are known
devices taught in the art and require programming to perform
the intended functions in the recitations.
Id. at 16. The Examiner’s findings are amply supported by the record and
Appellant has failed to direct our attention to any disclosure in the
Specification that controverts the Examiner’s findings.1
Claim 11—13
Claim 11 is an independent claim and claims 12 and 13 depend
therefrom. Claims App. Claim 11 is substantially similar in scope to
independent claims 1 and 19, except that it is recited in means-plus-fimction
language. Id. For purposes of this rejection, we focus our attention on the
following limitation in claim 11: “means for determining if said at least one
characteristic is a weak indicator or a strong indicator that the consumable
welding package has been replenished.”
Our discussion with respect to claim 1^4 above is equally pertinent
here. Furthermore, as claim 11 is written in means-plus-fimction format, the
disposition of these claims is a straightforward application of the court’s
1 Our consideration with respect to claim 1 is augmented by our discussion
of pure functional claiming discussed in connection with the indefmiteness
rejection of claim 19 infra.
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Application 13/551,660
decision in Aristocrat Tech. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir.
2008).
In cases involving a computer-implemented invention in which
the inventor has invoked means-plus-fimction claiming, this
court has consistently required that the structure disclosed in the
specification be more than simply a general purpose computer
or microprocessor. The point of the requirement that the
patentee disclose particular structure in the specification and
that the scope of the patent claims be limited to that structure
and its equivalents is to avoid pure functional claiming. ... For
a patentee to claim a means for performing a particular function
and then to disclose only a general purpose computer as the
structure designed to perform that function amounts to pure
functional claiming. Because general purpose computers can
be programmed to perform very different tasks in very different
ways, simply disclosing a computer as the structure designated
to perform a particular function does not limit the scope of the
claim to “the corresponding structure, material, or acts” that
perform the function, as required by section 112 paragraph 6.
Id.
Claim 11 essentially recites a black box that is broad enough to
encompass any and all means to accomplish the recited “determining”
function. Appellant’s Specification cites insufficient structure to support the
“means for determining ...” step. Appellant’s argument that “the welding
power source is the structure, and it employs programmed logic to perform
the recited aspects” is to no avail. Appeal Br. 18. Appellant’s welding
power source 130 provides electrical power to welding tool 140 and further
includes a production monitoring system that uses software to keep track of
production information. Spec. 32-42. However, Appellant does not
direct us to any disclosure as to how the generic computing structure and
software determines whether an indicator is “weak” or “strong.” Appellant’s
generic disclosure of computational equipment and software is insufficient,
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Application 13/551,660
as a matter of law, to render the claims definite under the second and sixth
paragraphs of Section 112. See Function Media, LLC v. Google Inc., 708
F.3d 1310 (2013) (simply disclosing software without providing some detail
about the means to accomplish the function is not enough).
Claims 19—22 and 27
Claim 19 is an independent claim and claims 20—22 and 27 depend
therefrom. Claim 19 recites, in pertinent part, “wherein the welding power
source is further configured to . . . determine if the at least one characteristic
is a weak indicator or a strong indicator that the consumable welding
package has been replenished.” Id. The Examiner notes that these claims
involve functional recitations and that these claims contain the indefinite
terms “weak” and “strong.” Final Action 5. Like the method claims and
means-plus-fimction claims discussed above, claim 19, when read in light of
the Specification, leaves unclear how one determines whether an indicator is
“weak” or “strong.” Therefore, the scope of the claimed structure of a
welding power source configured to make that determination is equally
unclear.
In view of the foregoing discussion, we sustain the Examiner’s
indefmiteness rejection of claims 1—4, 11—13, and 19—27.
Unpatentability of Claims 1—4, 11—13, and 19—27
over Blankenship
In traversing the Section 103 rejection, Appellant points out, correctly,
the Blankenship fails to disclose prompting an operator to reset the weight
value of a consumable welding package. Appeal Br. 23. Thus, while we
agree with the Examiner that the claims are indefinite by reason of the
“weak” and “strong” indicator limitations, the claims are, nevertheless, not
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Application 13/551,660
obvious over Blankenship regardless of the meaning of such indefinite
terms.
Blankenship is concerned, generally, with aspects of inventory and
process control in a welding environment. Blankenship, Abstract. We have
reviewed the Examiner’s citations to Blankenship with respect to allegedly
prompting an operator to reset the weight value of a consumable welding
package and we agree with Appellant that the Examiner’s findings of fact
are not supported by a preponderance of the evidence. See Final Action 8,
129 and passages to Blankenship cited therein.
We do not sustain the Examiner’s Section 103 unpatentability
rejection of claims 1—4, 11—13, and 19-27.
DECISION
The decision of the Examiner to reject claims 19—22 and 27 under 35
U.S.C. § 112, first paragraph, for lack of written description is affirmed.
The decision of the Examiner to reject claims 19—22 and 27 under 35
U.S.C. § 112, first paragraph, for lack of enablement is reversed.
The decision of the Examiner to reject claims 1—4, 11—13, and 19—27
as indefinite under 35 U.S.C. § 112, second paragraph is affirmed.
The decision of the Examiner to reject claims 1—4, 11—13, and 19—27
as unpatentable under 35 U.S.C. § 103(a) over Blankenship 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)(l)(iv).
AFFIRMED
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