Ex Parte Hutchison et al

Patent Trial and Appeal Board

Jan 5, 2018

13733681 (P.T.A.B. Jan. 5, 2018)

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.
13/733,681 01/03/2013 Richard Martin Hutchison 61581 (ITWO:0658) 3870
52145 7590 01/09/2018
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
01/09/2018 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):
docket@fyiplaw.com
sinclair@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD MARTIN HUTCHISON and
KEVIN MICHAEL SCOTT
Appeal 2017-002175
Application 13/733,6811
Technology Center 3700
Before JILL D. HILL, ERIC C. JESCHKE, and PAUL J. KORNICZKY,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision, as set forth in the Final Office Action dated October 21, 2015
(“Final Act.”), and as further explained in the Advisory Action dated
February 1, 2016, rejecting claims 1—9 and 17—27. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 Illinois Tool Works, Inc. (“Appellant”) is the applicant as provided
in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br.
2.
Appeal 2017-002175
Application 13/733,681
BACKGROUND
The disclosed subject matter “relates generally to welding systems
and, more particularly, to controlling parameters of an arc welding process.”
Spec. 11. Claims 1, 17, and 22 are independent. Claim 1 is reproduced
below, with emphasis added:
1. A welding system, comprising:
an electrode configured to be advanced
toward a workpiece;
a power supply configured to provide a flow
of electricity to the electrode for generating a
welding arc between the electrode and the
workpiece;
a first sensor configured to sense a light
intensity of the welding arc;
a second sensor configured to sense a
voltage provided to the electrode via the power
supply; and
a controller communicatively coupled with
the first and second sensors, wherein the controller
is configured to control a welding parameter of the
welding system based on the light intensity when
the light intensity is above a light intensity
threshold, and wherein the controller is configured
to control the welding parameter based on the
voltage when the light intensity is below the light
intensity threshold.
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Appeal 2017-002175
Application 13/733,681
REJECTIONS
1. Claims 1—3, 5—8, and 17—26 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Madigan (US 5,349,156, issued Sept. 20, 1994).
2. Claims 4 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Madigan and Deam (US 5,086,207, issued Feb. 4, 1992).
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Madigan and Wills (US 2012/0291172 Al, published
Nov. 22, 2012).
DISCUSSION
Rejection 1 — Claims 1—3, 5—8, and 17—26
Independent claim 1 recites a “controller” that “is configured to
control a welding parameter of the welding system based on the light
intensity when the light intensity is above a light intensity threshold, and
wherein the controller is configured to control the welding parameter based
on the voltage when the light intensity is below the light intensity threshold.”
Appeal Br. 16 (Claims App.). Independent claim 17 recites providing a
“control signal” that “is based on the signal indicative of the light intensity
when the signal indicative of the light intensity is above a light intensity
threshold, and the control signal is based on the signal indicative of the
voltage when the signal indicative of the light intensity is below the light
intensity threshold.” Id. at 17—18. Independent claim 22 recites a
“controller” configured to
determine a first control signal based on the normalized signal
indicative of the light intensity; determine a second control
signal based on the signal indicative of the voltage; provide the
first control signal to the power supply of the welding system
when the normalized signal indicative of the light intensity is
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Appeal 2017-002175
Application 13/733,681
above the light intensity threshold; and provide the second
control signal to the power supply of the welding system when
the normalized signal indicative of the light intensity is below
the light intensity threshold.
Id. at 19. We will refer to these limitations, collectively, as “the limitations
at issue.”
Addressing these limitations in the Rejection, the Examiner stated:
[Wjhile the features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus
must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 44 USPQ2d 1429. In
addition, it has been held by the courts that apparatus claims
cover what a device is, not what a device does. Hewlett-
Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525 (Fed.
Cir. 1990). In this case, the patented apparatus of Madigan et al
discloses (as detailed above) all the structural limitations
required to perform the recited functional language, therefore
was considered to anticipate the claimed welding apparatus.
Final Act. 3 (claims 1 and 17), 7 (claim 22).
Appellant argues that Madigan “fails to disclose a controller
configured to control a welding system based on the light intensity when the
light intensity is above a threshold, and control based on the voltage when
the light intensity is below the threshold, as generally recited by independent
claims 1, 17, and 22.” Appeal Br. 7. For the reasons below, we agree.
Although each independent claim recites different language, the
limitations at issue in each independent claim generally require a control
system that uses only light intensity-based feedback control when a
measured light intensity is above a threshold value and uses only voltage-
based feedback control when a measured light intensity is below a threshold
value. See Appeal Br. 7 (discussing how the Specification “discloses a
control system that shifts from light intensity-based feedback control to
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Appeal 2017-002175
Application 13/733,681
voltage-based feedback control when the measured light intensity falls
below a threshold value”).2 As discussed by Appellant, Madigan, in
contrast, “teaches a feedback control that is simultaneously based on light
intensity, voltage, and current.” Id. at 8 (emphasis added) (discussing
Madigan, col. 8,11. 12—17, 23—32). Thus, we agree with Appellant that
Madigan does not disclose the limitations at issue. Id.
We turn now to the Examiner’s finding that Madigan discloses “all
the structural limitations required to perform the recited functional
language” in the limitations at issue, and “therefore was considered to
anticipate the” independent claims. Final Act. 3 (claims 1 and 17), 7 (claim
22); see also Ans. 3 (“Madigan indeed shows the relationship between
sensor 30 and control computer 32 as fully capable of controlling a welding
parameter based on light intensity as claimed.” (emphasis added)). On this
issue, we agree with Appellant that, in the context here, “the prior art
structure must be capable of performing the [recited] function[s] without
further programming.” Appeal Br. 9 (citing Typhoon Touch Tech., Inc. v.
Dell, Inc., 659 F.3d 1376, 1380—81 (Fed. Cir. 2011) (determining that
“memory . . . configured to” perform a function requires that the memory is
“actually programmed or configured” to perform the recited function)).
The Examiner states that “no additional programming ... is needed”
to use the system of Madigan as required by the limitations at issue (Ans. 4),
however, the Examiner has not shown that Madigan discloses a control
system that, without further programming, performs as required by the
2 Appellant cites “paragraph 51 of the Application” on this issue. We
understand Appellant to refer to paragraph 49 of the as-filed Specification,
which corresponds to paragraph 51 of the pre-grant publication.
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Application 13/733,681
limitations at issue, when construed as discussed above. Cf. Ans. 4
(“Madigan teaches the arc light intensity VI is monitored (Fig. 6) by sensor
30 which provides an output signal to the control computer 32(col 6, lines
38-40) and when that arc light intensity VI fall out of a predetermined value
(threshold, Fig. 6) then welding operation can be controlled.”); see also
Reply Br. 6 (“To operate the system of Madigan without reprogramming
would mean controlling a welding system only using a feedback control that
is simultaneously based on light intensity, voltage, and current, as described
in Madigan. To control the welding system of Madigan in a different way
would require reprogramming.” (internal citation omitted)).
For these reasons, we do not sustain the rejection of independent
claims 1,17, and 22, and also do not sustain the rejection of claims 2, 3, and
5—8 (which depend from claim 1), claims 18—21 (which depend from claim
17), and claims 23—26 (which depend from claim 22).
Rejections 2 and 3 — Claims 4, 9, and 27
Claims 4 and 9 depend from claim 1, and claim 27 depends from
claim 22. Appeal Br. 16, 17, 20 (Claims App.). The Examiner’s reliance on
Deam (regarding Rejection 2) and Wills (regarding Rejection 3) does not
remedy the deficiencies in the teachings of Madigan, discussed above (see
supra Rejection 1). Thus, for the same reasons discussed above, we do not
sustain the rejection of claims 4, 9, and 27.
DECISION
We reverse the decision to reject claims 1—9 and 17—27.
REVERSED
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