Ex Parte Fosbinder

Board of Patent Appeals and Interferences

Aug 13, 2012

11742399 (B.P.A.I. Aug. 13, 2012)

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.
11/742,399 04/30/2007 Daniel C. Fosbinder 20725 (ITWO:0182) 4793
52145 7590 08/13/2012
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
08/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL C. FOSBINDER
____________________

Appeal 2010-007791
Application 11/742,399
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007791
Application 11/742,399

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STATEMENT OF THE CASE
Daniel C. Fosbinder (Appellant) appeals under 35 U.S.C. § 134(a)
from a decision finally rejecting claims 1-8, 12-18, and 21-30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Claimed Subject Matter
According to Appellant, the claimed invention relates “generally to
welding systems and more particularly to welding systems utilizing an
engine coupled to an air compressor, a welding generator, and possibly other
loads.” Spec. 1, para. [0001]. Claim 1, reproduced below, is illustrative of
the claimed subject matter.
1. A system, comprising:
a portable unit, comprising:
an engine;
a generator coupled to the engine;
a compressor coupled to the engine; and
a priority load controller configured to adjust various
loads on the engine, the generator, or the compressor, or a
combination thereof, in response to sensor feedback and a
priority control scheme.

Evidence
The Examiner relies upon the following prior art references:
Lemelson
Silvestro
US 4,367,130
US 2006/0027547 A1
Jan. 4, 1983
Feb. 9, 2006

Appeal 2010-007791
Application 11/742,399

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Rejections
The Examiner makes the following rejections:
I. Claims 1-8, 12-18, 21-27, and 29-30 are rejected under 35 U.S.C. §
102(e) as being anticipated by Silvestro.
II. Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Silvestro and Lemelson.

OPINION
Anticipation
The Examiner rejected claims 1-8, 12-18, 21-27, and 29-30 as
anticipated by Silvestro. The Silvestro reference “is directed to an integrated
engine driven welder, hydraulic unit and air compressor that can be
conveniently transported to a site for welding; and/or for operating
hydraulic, air powered and/or electric power tools; and can by operated and
maintained by a user.” Silvestro 1, para. [0008].
Claims 1-3, 6, 8, 26, and 27
Appellant disputes the Examiner’s finding that Silvestro discloses “a
priority load controller configured to adjust various loads on the engine, the
generator, or the compressor, or a combination thereof, in response to sensor
feedback and a priority control scheme” as required by independent claim 1.
App. Br. 7, 10.
The Examiner relies largely on paragraphs [0051] and [0053] of
Silvestro (Final Rej. 8; Ans. 9), which refer to figures 7 and 9, respectively.
Figure 7 is reproduced below.

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Application 11/742,399

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A controller 330 is illustrated in FIG. 7 as receiving input from
one or more components of the hydraulic unit and/or
controlling the operation of one or more components of the
hydraulic unit. For instance, controller 330, when activated by
pump switch 150, can detect the pressure in pipe 254 via
pressure gauge 156 and use such information to activate or
deactivate hydraulic pump 250.

Silvestro 9, para. [0051]. Thus, the controller 330 is configured to adjust
various loads on the engine by activating or deactivating the hydraulic
pump, which increases and decreases, respectively, the load on the engine.
Id. The controller 330 is expressly configured to do this in response to
sensor feedback obtained from the pump switch 150 and from the pressure
gauge 156. Id.
With respect to controller 340, Silvestro states:
Controller 340 is illustrated as being potentially connected to
regulation valve 288, control valve 286, pressure gauge 164
and/or clutch 302. Controller 340 can be designed to receive
information from one or more of these components so as to
control the operation of one or more components based upon
the information received. For instance, pressure information
received from pressure gauge 164 can be used by controller 340
to open and close pressure release valve 288 so as to not over-
pressurize the air compressor unit. Alternatively or
additionally, controller 340 can use the information received
from pressure gauge 164 to control the operation of control
valve 286 to re-pressurize the accumulator tank and/or to direct
compressed air out through air outlet 162 and into an air tool
320. Alternatively and/or additionally, the information received
from pressure gauge 164 can be used by controller 340 to
activate and/or deactivate air compressor 280 directly and/or
indirectly via clutch 302.

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Silvestro 9, para. [0051]. Thus, the controller 340 is configured to adjust
various loads on the engine by activating or deactivating the air compressor,
which increases and decreases, respectively, the load on the engine. Id. The
controller 340 is also configured to adjust various loads on the compressor
by controlling the pressure release valve 288 and/or the control valve 286.
Id. The controller 340 is configured to adjust these loads in response to
sensor feedback obtained from the pressure release valve 288, control valve
286, pressure gauge 164, clutch 302, and/or switch 160. Id.
Appellant argues that “Silvestro does not mention any priority load
controller or priority control scheme.” App. Br. 13. Silvestro’s failure to
mention either term, however, does not save Appellant’s claim. Anticipation
“is not an ‘ipsissimis verbis’ test[.]” In re Bond, 910 F.2d 831, 832-33 (Fed.
Cir. 1990) (citing Akzo N.V. v. U. S. Int'l Trade Comm'n, 808 F.2d 1471,
1479 n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not
duplicate word for word what is in the claims.” Standard Havens Prods. v.
Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
In fact, Appellant’s own Specification, apart from the claims as filed,
mentions “priority load controller” only once, stating: “A system, in one
embodiment, may include a portable unit having an engine, a generator
coupled to the engine, a compressor coupled to the engine, and a priority
load controller.” Spec. 2, para. [0004].
Elsewhere, the Specification refers to a “priority control 78” and a
“priority controller 78,” which terms we find the Specification equates with
“priority load controller.” For example, the Specification states:
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[t]he priority control 78 may take a variety of forms.
Embodiments, [sic] of the priority controller 78 may include
discrete circuits in a mixed signal analog design, an embedded
control system, a computer with Input/Output units, software
stored on a computer readable medium or memory, or a
complex machine. The priority control 78 may also include a
memory 92 configured to store data similar to the data
described above.

Spec. 15, para. [0038].
Consistent with the Specification, including the excerpt from
paragraph [0038] quoted above, “priority load controller,” given its broadest
reasonable interpretation, encompasses each of the Silvestro controllers 330
and 340. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’”) (quoting In re Bond, 910
F.2d 831, 833 (Fed. Cir. 1990).
Appellant further argues that “[e]ven if the controllers 330 or 340 are
hypothetically capable of executing a priority control scheme, it would
require the proper programming to achieve such a priority control scheme.”
App. Br. 15. The Examiner counters that the Silvestro controllers can
“operate based upon pre-programmed or preset information that [is] already
stored” in the controller[s.]” Ans. 8-9 (citing Silvestro para. [0053]).
Appellant concedes this finding but disputes that it teaches or suggests a
priority control scheme. App. Br. 10, 13. We find that it does.

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Claim 1 is not directed to any particular programming or priority
control scheme. The “pre-programmed information or preset information”
referred to in paragraph [0053] of Silvestro is a priority control scheme well
within the broadest reasonable meaning of claim 1. Appellant’s argument
that “Silvestro does not disclose any hierarchy of loads, or specific priority
control scheme” (App. Br. 15) is not commensurate with the scope of claim
1.
Furthermore, to satisfy the claim, a controller need only be configured
to adjust a load in response to sensor feedback and a priority control
scheme—however provided. Thus, the priority control scheme may be
provided by the directives supplied by a human operator by his operation of
the hydraulic pump switch 150, air compressor switch 160, and/or the
various switches and knobs 132, 134, 136 on the front panel. See Silvestro
5, para. [0041]. In other words, a human operator may determine the
priority of what tool he wants to operate and perhaps at what pressure to
operate it. The Silvestro controllers are configured to adjust a load in
response to his inputs.
We sustain the Examiner’s decision to reject independent claim 1.
Dependent claims 2, 3, 6, 8, 26, and 27 are not separately argued from
independent claim 1. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii),
we select claim 1 as representative of the group and treat those claims as
falling with representative claim 1. Hence, we also sustain the decision to
reject claims 2, 3, 6, 8, 26, and 27.
Claims 12, 15, 16, and 18
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Independent claim 12 is similar to claim 1 as it requires, in relevant
part, “a priority load controller configured to adjust various loads on an
engine, a welding generator coupled to the engine, or an air compressor
coupled to the engine, or a combination thereof, in a portable welding unit in
response to sensor feedback and a priority control scheme.”
For the same reasons discussed above with respect to claim 1, we
sustain the rejection of claim 12.
Dependent claims 15, 16, and 18 are not separately argued from
independent claim 12. Thus, in accordance with 37 C.F.R. 41.37(c)(1)(vii),
we select claim 12 as representative of the group and treat those claims as
falling with representative claim 12. Hence, we also sustain the decision to
reject claims 15, 16, and 18.
Claim 21
Independent claim 21, although directed to a method, is similar to
claim 1 as it requires, in relevant part, “adjusting power output to various
loads on an engine, a welding generator coupled to the engine, or an air
compressor coupled to the engine, or a combination thereof, in a portable
welding unit in response to sensor feedback and a priority control scheme.”
For the same reasons discussed above with respect to claim 1, we
sustain the rejection of claim 21.
Claims 4 and 30
Dependent claim 4 requires that “the priority load controller is
configured to regulate speed of the engine based on the sensor feedback and
the priority control scheme.” Dependent claim 30 requires that “the priority
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load controller is configured to output a control signal to operate a governor
in response to the sensor feedback and the priority control scheme, wherein
the governor is configured to regulate speed of the engine.” The Examiner
found these limitations taught in Silvestro at paragraphs [0014], [0051], and
[0053] but did not explain how. Ans. 4, 7.
Paragraphs [0051] and [0053] refer to figures 7 and 9, respectively. In
the schematics of both figures, the controllers 330 and 340 are not linked to
the engine (motor 180). Thus, the controllers do not appear to be configured
to regulate the engine speed even though they may impact the engine speed
by introducing or removing a load on the engine via the clutches they
control. Furthermore, with respect to claim 30, Silvestro does not disclose a
governor.
For these reasons, we cannot sustain the rejection of claims 4 and 30.1
Claims 5, 7, 17, and 22-25
Appellant argues claims 5, 7, 17, and 22-25 as a group. App. Br. 29.
In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 5 as
representative of the group. Therefore, we will treat claims 7, 17, and 22-25
as standing or falling with representative claim 5.
Claim 5 requires that “the priority load controller [be] configured to
regulate an actuator mechanically coupling a mechanical output of the
engine with a device based on the sensor feedback and the priority control

1 Claim 25 was grouped with claims 4 and 30 (App. Br. 28) but it does not
require a governor or controller configured to regulate the engine speed.
Accordingly, it is addressed with respect to a different set of claims (5, 7, 17,
and 22-25) with which Appellant grouped it. See App. Br. 29.
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scheme.” Although the Examiner did not expressly identify the structure in
Silvestro serving as an “actuator mechanically coupling a mechanical output
of the engine with a device,” he did cite to paragraph [0051], which
discusses clutches 300 and 302 in detail. Ans. 4; Silvestro 9, para. [0051].
We find either clutch to meet the claimed structure.
The Examiner also cited to paragraph [0053], which discloses control
of the hydraulic pump and air compressor (e.g., via clutches 300 and 302)
based on sensor feedback and a priority control scheme. Ans. 4; Silvestro 9,
para. [0053].
For these reasons, we sustain the rejection of claim 5, and of claims 7,
17, and 22-25, which fall therewith.
Claims 13, 14, and 29
Appellant argues claims 13, 14, and 29 as a group. App. Br. 30. In
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 13 as
representative of the group. Therefore, we will treat claims 14 and 29 as
standing or falling with representative claim 13.
Appellant argues claim 13 on the same basis as he argues claim 1.
App. Br. 30. Thus, for the same reasons discussed above with respect to
claim 1, we sustain the rejection of claim 13.
We additionally find that the Examiner properly relied on paragraphs
[0013] and [0014] of Silvestro in rejecting claim 13. See Ans. 4-5. Each of
those paragraphs discloses a priority control scheme comprising a priority of
loads including an air compressor power.
Paragraph [0013] states:
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In one embodiment of the invention, the compressor unit
includes a clutch to engage and disengage the air compressor
from the power drive or power source. The clutch is designed
to disengage the air compressor from the power drive when an
air powered tool or other device is not connected to compressor
unit and/or is not in use.

Silvestro 3, para. [0013]. In this example, the priority control scheme
(disengaging the air compressor from the power drive when an air powered
tool is not connected) appears to be programmed into the controller.
Paragraph [0014] states:
The housing of the engine welder can also or alternatively
include one or more circuits to power one or more internal
components (e.g. hydraulic unit, compressor unit, etc.). In one
embodiment of the invention, the housing of the engine welder
includes a switch and/or control circuit to activate and
deactivate one or more internal components. The switch and/or
control allows the operator to only activate the one or more
internal components when needed.

Silvestro 4, para. [0014]. In this example, the priority control scheme (e.g.,
activating the air compressor via a switch on the housing) appears to be
supplied, at least in part, by a human operator.
For these reasons and the reasons discussed above with respect to
claim 1, we sustain the rejection of claim 13, and of claims 14 and 29, which
fall therewith.
Obviousness
Claim 28
The Examiner rejected claim 28 as unpatentable over Silvestro and
Lemelson. Appellant argues claim 28 solely on the basis that Lemelson fails
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to obviate the purported deficiencies of Silvestro as anticipating prior art to
claim 1 from which claim 28 depends. App. Br. 35. Thus, we have already
rejected Appellant’s claim 28 arguments by virtue of the fact that we
rejected Appellant’s claim 1 arguments above.

DECISION
The Examiner’s decision to reject claims 1-3, 5-8, 12-18, and 21-29 is
affirmed. The Examiner’s decision to reject claims 4 and 30 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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