Ex Parte Diedrick et al

Patent Trial and Appeal Board

Oct 17, 2014

12201959 (P.T.A.B. Oct. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/201,959 08/29/2008 Michael G. Diedrick 21490/YOD (ITWO:0216) 1418
52145 7590 10/17/2014
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
MAYE, AYUB A
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
10/17/2014 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 MICHAEL G. DIEDRICK and GREGORY C. BAETEN
____________

Appeal 2012-008900
Application 12/201,9591
Technology Center 3700
____________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael G. Diedrick and Gregory C. Baeten (“Appellants”) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2,
and 4–20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Appeal Brief identifies Illinois Tool Works Inc. as the real party in
interest. See App. Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal:
1. A welding system comprising:
a welding torch;
a torch cable coupled to the welding torch; and
a wearable wire feeder coupled to the cable and
comprising a support for a spool of welding wire,
control circuit configured to generate a control signal
and a wire drive motor responsive to the control signal
to drive welding wire from the spool through the cable
to the welding torch, wherein the wearable wire feeder
further comprises a user adjustable input for regulating
welding power voltage supplied to the torch by a power
unit.
App. Br. 18.
REJECTIONS
The following rejections are before us on appeal. See App. Br. 4–5;
Ans. 4–13.2
Claims 17–20 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 1, 2, 4–7, 9–15, and 17–20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Albrecht (US 6,479,795 B1, iss. Nov. 12,
2002) and Hughes (WO 00/76709 A1, pub. Dec. 21, 2000).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Albrecht, Hughes, and Matiash (US 2005/0224484 A1, pub. Oct. 13, 2005).

2 The Examiner additionally identifies an objection to the application’s
Drawings as a ground of rejection. See Ans. 4–5. Such objections are
reviewed via a petition to the Director, not an appeal to the Board. See 37
C.F.R. § 1.113(a). We therefore do not comment further on this objection.
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Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Albrecht, Hughes, and Matus (US 7,049,545 B2, iss. May 23, 2006).
Claims 1, 2, and 4–20 are provisionally rejected as an obviousness-
type double patenting over claims 1–25 of App. Serial No. 11/648,353 in
view of Hughes.
Claims 1, 2, and 4–20 are provisionally rejected as an obviousness-
type double patenting over claims 1–30 of App. Serial No. 11/644,442.
ANALYSIS
A. Rejection of Claims 17–20 as Indefinite
The Examiner rejected independent claim 17 and its dependent
claims 18–20 as indefinite, concluding the term “and/or” in claim 17
rendered the scope of the claims unascertainable. See Final Office Action
(mailed July 6, 2011), 5; Ans. 7–8. Appellants attempted to overcome this
rejection with an after-final amendment seeking to remove “and/” from
claim 17. See Amendment (dated Aug. 26, 2011), 4, 8. However, that
proposed amendment was not entered by the Examiner, so it is the
unamended claim 17 which is before us on appeal. See Advisory Action
(mailed Sept. 16, 2011); see also 37 C.F.R. §§ 1.113 & 1.116 (after-final
amendments not entered as a matter of right). Appellants do not present any
reason(s) why the Examiner erred in rejecting unamended claim 17 as being
indefinite. See App. Br. 2; Reply Br. We, therefore, summarily sustain the
indefiniteness rejection of claims 17–20.
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B. Rejection of Claims 1, 2, 4–7, 9–15, and 17–20 as Unpatentable Over
Albrecht and Hughes under 35 U.S.C. § 103(a)
1. Claims 1, 2, 4–7, and 9
In rejecting independent claim 1 and its dependent claims 2, 4–7,
and 9 as unpatentable over Albrecht and Hughes, the Examiner cites
Albrecht as disclosing each and every limitation of claim 1 except for a
“wearable” wire feeder. See Ans. 8–9. Particularly concerning the claimed
“user adjustable input for regulating welding power voltage” (our emphasis
added to the language of claim 1), the Examiner concluded Albrecht
correspondingly discloses control panel assembly 103. See Ans. 8–9, 13–14.
Most pertinently, Albrecht describes its control panel as “controls, knobs or
switches for controlling or adjusting the welding wire feeder including . . .
welding power mode switches.” Albrecht, 8:38–47.
Appellants contend the Examiner erred in finding that Albrecht
discloses the user adjustable input for regulating welding power voltage
required by claim 1. See App. Br. 6–8; Reply Br. 2–3. According to
Appellants, “Albrecht simply discloses that a switch . . . may control power
modes, but makes no mention of actually regulating power voltage.” App.
Br. 7 (underlined emphasis in original). Appellants also assert the “welding
power mode switch” described in Albrecht “appears to be nothing more than
a switch that allows the operator to turn on/off the power supplied from the
welding power supply to the welding torch.” Id. Appellants conclude: “One
of ordinary skill in the art would appreciate that turning power on and off is
not the same as regulating welding power voltage, much less enabling user
adjustability for regulating welding power voltage.” Id. (underlined
emphasis in original); see also id. at 8.
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We are not persuaded by Appellants’ argument. During examination
proceedings, claims of a patent application are given their broadest
reasonable interpretation consistent with the specification. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). Under that
claim construction standard, we sustain the Examiner’s finding that a
welding power switch is a user adjustable input for regulating welding
power voltage. The user adjusts the switch by turning it on and off. When
the switch is turned on, a voltage is delivered; when the switch is turned off,
a voltage is not delivered. Thereby, voltage is regulated. Appellants seek to
import into the “regulating” claim term a requirement that the switch must
be able to set various levels of voltage, after voltage is turned on. We find
no such requirement in the claim. Appellants’ reliance on the alleged
understanding of one of ordinary skill in the art is supported solely by
attorney argument, and entirely lacks any citation to the disclosures of the
prior art references on appeal or testimony from a person of ordinary skill.
That attack is not persuasive. See Gemtron Corp. v. Saint-Gobain Corp.,
572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not
evidence); Laitram Corp. v. Cambridge Wire Cloth Co., 919 F.2d 1579,
1583 (Fed. Cir. 1990) (criticizing parties’ “reliance on attorney argument
and counsel’s unsworn statements as ‘evidence’”).
Appellants additionally assert Hughes does not cure Albrecht’s
alleged failure to disclose claim 1’s user adjustable input for regulating
welding power voltage. See App. Br. 8. We have concluded above that
there is no failure of disclosure for Hughes to cure in this regard.
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Appellants do not argue for the patentability of dependent claims 2, 4–
7, and 9 separately from their common parent independent claim 1.
Therefore, these dependent claims fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
For the foregoing reasons we are not persuaded by Appellants’
arguments against the Examiner’s rejection of claims 1, 2, 4–7, and 9 as
unpatentable over Albrecht and Hughes. We therefore sustain that rejection.
2. Claims 10–13
In rejecting independent claim 10 and its dependent claims 11–13 as
unpatentable over Albrecht and Hughes, the Examiner cites Albrecht as
disclosing each and every limitation of claim 10 except for a “wearable”
wire feeder. See Ans. 9. Particularly concerning the claimed circuit
configured to control “a welding current, a welding voltage, or a
combination thereof,” the Examiner concluded Albrecht correspondingly
discloses control panel assembly 103, already discussed above in connection
with claim 1. See Ans. 9, 14–15.
Appellants contend the Examiner erred in finding that Albrecht
discloses the circuit configured to control a welding current or voltage as
required by claim 10. See App. Br. 9–10; Reply Br. 2–3. According to
Appellants, “Albrecht merely discloses a power switch that allows an
operator to turn welding power on and off,” and “[o]ne having ordinary skill
in the art would appreciate that an on/off power switch is not the same as a
circuit configured to adjust welding parameters.” App. Br. 10.
We are not persuaded by Appellants’ argument. Under the broadest
reasonable interpretation, we sustain the Examiner’s finding that Albrecht’s
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control panel assembly 103 is a circuit configured to control a welding
current or voltage. Specifically, the welding current or voltage is controlled
when it is turned on or turned off. Appellants’ reliance on the alleged
understanding of one of ordinary skill in this regard is unpersuasive for the
same reasons discussed above in connection with claim 1.
Appellants additionally assert Hughes does not cure Albrecht’s
alleged failure to disclose the circuit configured to control a welding current
or voltage as required by claim 10. See App. Br. 10. We have concluded
above that there is no failure of disclosure for Hughes to cure in this regard.
Appellants do not argue for the patentability of dependent claims 11–
13 separately from their common parent independent claim 10. Therefore,
these dependent claims fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
For the foregoing reasons we are not persuaded by Appellants’
arguments against the Examiner’s rejection of claims 10–13 as unpatentable
over Albrecht and Hughes. We therefore sustain that rejection.
3. Claims 14, 15, and 17–20
In rejecting independent claims 14 and 17, and their respective
dependent claims 15 and 18–20, as unpatentable over Albrecht and Hughes,
the Examiner cites Albrecht as disclosing each and every limitation of the
independent claims except for a “wearable” wire feeder. See Ans. 10–11.
The Examiner cites Hughes as disclosing a wearable wire feeder, and
concludes it would have been obvious to one ordinary skill in the art to
modify Albrecht to include a wearable wire feeder as taught by Hughes in
order to provide an improved wire feed system for a portable welding
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system. See id. at 11. Particularly concerning the “wearable wire feeder,
comprising . . . a gas source” of claim 14, and the “gas supply mounted on
the wearable wire feeder” of claim 17, the Examiner concluded Albrecht
correspondingly discloses a source of shielding gas. See Ans. 10, 15–17.
Appellants contend “the combination of Albrecht and Hughes fails to
disclose a gas supply that is an element of a wearable wire feeder (i.e., also
wearable).” App. Br. 11 (underlined emphasis in original). In particular,
Appellants concede Albrecht discloses a gas source, but contend neither
Albrecht alone nor Albrecht in combination with Hughes discloses or
suggests a gas source that is an element of a wearable wire feeder. See id. at
10–13. “In other words, any hypothetical combination of Albrecht with
Hughes would still have a gas source separate from a wire feeder or operator
(i.e., not wearable).” Id. at 11 (underlined emphasis in original). Thus,
according to Appellants, “the Examiner has not provided sufficient evidence
for combining the ‘gas source’ or ‘gas supply’ of Albrecht with the wearable
wire feeder of Hughes.” Id.
We agree with Appellants. Referring to Albrecht’s Figure 1, Albrecht
discloses portable welding wire feeder 100 which fits into instrument case
housing 101 for easy portability. Albrecht, 1:20–29, 3:7–13, 6:65–7:3. The
disclosure of Albrecht cited by the Examiner in relation to the claimed gas
source indicates feeder 100 has a “shielding gas interface disposed to receive
shielding gas from a source of shielding gas.” Albrecht, 4:30–35; see
Ans. 10. Albrecht’s Figure 2 shows such an interface at 133. Albrecht,
8:18–20, 9:11–30. These various disclosures in Albrecht indicate the
described gas source is not included in the portable wire feeder 100. That is,
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in Albrecht, the gas source is a separate component from wire feeder 100
which has to be connected to wire feeder 100 via interface 133.
Hughes is not cited as being pertinent to the gas source limitation of
the claims; it is cited only as disclosing a wearable wire feeder. See Ans. 10;
Hughes, Figs. 1 & 2. Indeed, Hughes does not even disclose a gas source.
The Examiner’s stated reason for mounting Albrecht’s gas source on a
wearable wire feeder was simply to “provide an improved wire feed system
for a portable welding system.” Ans. 11. In response to the Appeal Brief,
the Examiner reasons that Albrecht has a gas source; Hughes has a wearable
wire feeder; and “combining prior arts yield predictable results.” Ans. 15.
Also: “it would have been recognized by one ordinary skill in the art that
applying the known technique taught by Albrecht to wearable wire feeder of
Hughes would have yielded predictable results and resulted in an improved
system and method.” Ans. 16.
We conclude the Examiner has failed to provide a sufficient
articulated reasoning with a rational underpinning as to obviousness. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular,
neither Albrecht nor Hughes has a gas source disposed in a wire feeder at
all — much less a wearable wire feeder. In Albrecht, the gas source is a
separate component from wire feeder 100 which has to be connected to
feeder 100 via interface 133. Hughes is silent as to a potential gas source.
The Examiner’s generalized assertions of an “improved” system and
“predictable results” are mere conclusory statements which do not establish
a sufficient reason for the combination proposed by the Examiner. See KSR
v. Teleflex, 550 U.S. at 418.
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For the foregoing reasons we do not sustain the Examiner’s rejection
of claims 14, 15, and 17–20 as unpatentable over Albrecht and Hughes.
C. Rejection of Claim 8 as Unpatentable Over Albrecht, Hughes, and
Matiash under 35 U.S.C. § 103(a)
Appellants rely solely on their arguments against the rejection of
independent claim 1 in arguing for the patentability of its dependent claim 8.
See App. Br. 14. We are not persuaded by Appellants’ arguments relating to
claim 1, for the reasons discussed above. We therefore sustain the rejection
of claim 8 as unpatentable over Albrecht, Hughes, and Matiash.
D. Rejection of Claim 16 as Unpatentable Over Albrecht, Hughes, and
Matus under 35 U.S.C. § 103(a)
The Examiner’s rejection of dependent claim 16 relies upon the
rejection of its parent claim 14 as unpatentable over Albrecht and Hughes.
See Ans. 12–13. As discussed above, we do not sustain that rejection of
claim 14. The rejection of claim 16 cites Matiash for disclosing a standard
4 inch diameter welding wire spool, not in relation to the “gas source”
deficiencies of Albrecht and Hughes noted above. We therefore do not
sustain the rejection of claim 16 as unpatentable over Albrecht, Hughes, and
Matus.
E. Double Patenting Rejections
The Examiner provisionally rejected all pending claims 1, 2, and 4–20
for double patenting, principally based on two separate then-pending
Applications (Serial Nos. 11/648,353 and 11/644,442). We have the
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flexibility to reach or not to reach provisional obviousness-type double
patenting rejections. See Ex Parte Jerg, Appeal 2011-000044, 2012 WL
1375142 at *3 (BPAI 2012) (informative); Ex parte Moncla, 95 USPQ2d
1884 (BPAI 2010) (precedential). Both of the base applications for these
rejections have been abandoned since the rejections were appealed. We
therefore do not sustain these rejections.
DECISION
The rejection of claims 17–20 under 35 U.S.C. § 112, second
paragraph as indefinite is AFFIRMED. The rejection of claims 1, 2, 4–7,
and 9–13 under 35 U.S.C. § 103(a) as unpatentable over Albrecht and
Hughes is AFFIRMED. The rejection of claim 8 as unpatentable over
Albrecht, Hughes, and Matiash is AFFIRMED. All other claim rejections
on appeal are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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