Ex Parte Kooken et al

Patent Trial and Appeal Board

Apr 18, 2017

13291328 (P.T.A.B. Apr. 18, 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.
13/291,328 11/08/2011 Todd Kooken 072056-8070.US00 7076
91854 7590 04/20/2017
Lincoln Electric Company/Perkins COIE LLP
700 Thirteenth Street, NW
Suite 600
Washington, DC 20005-3960
EXAMINER
BAE, GYOUNGHYUN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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):
wdcle @perkinscoie. com
patentprocurement @perkinscoie. com
ip @ lincolnelectrie .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD KOOKEN, MATTHEW JON KRUEGER,
and LIFENG LUO
Appeal 2015-003170
Application 13/291,328
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1—20, 23, and 24. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify the real party in interest as “Lincoln Global, Inc.”
(Appeal Br. 3.)
Appeal 2015-003170
Application 13/291,328
STATEMENT OF THE CASE
The Appellants’ invention relates to “systems and methods for real­
time computation and reporting of welding machine performance and
metrics.” (Spec. 11.)
Illustrative Claim
1. A welding or cutting power supply, comprising:
a housing;
a power conversion module located within the housing
which receives an input signal having a first voltage, first
current and first power and converts said input signal into an
output signal having a second voltage, second current and
second power which are each different from said respective first
voltage, current and powers, and said power conversion module
provides said output signal to a load;
a performance monitoring module located within the
housing and electrically coupled to said power conversion
module which receives a reference signal from said input signal
and a reference signal from said output signal during operation
of said power conversion module and determines a real-time
efficiency of said power conversion module by comparing said
first power to said second power during an operation of said
power conversion module; and
at least one of a user interface and a data connection
device coupled to said housing to provide said determined real­
time efficiency to a user.
Rejections
I. The Examiner rejects claims 1—20, 23, and 24 under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement requirement,
(Final Action 6.)
II. The Examiner rejects claims 23 and 24 under 35 U.S.C. § 112,
second paragraph, as indefinite. (Final Action 7.)
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Application 13/291,328
III. The Examiner rejects claims 1—20 under 35 U.S.C. § 102(b) as
anticipated by Rovnyak.2 (Final Action 7.)
IV. The Examiner rejects claims 23 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Rovnyak and Spear.3 (Final Action 16.)
ANALYSIS
Claims 1 and 11 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2—10, 12—20, 23, and 24) depending
therefrom. (See Appeal Br., Claims App.) Independent claims 1 and 11
each recites “[a] welding or cutting power supply.” (Id.)
Rejection I
Independent claim 1 recites “an input signal,” “a reference signal from
said input signal,” “an output signal” that is provided “to a load,” and “a
reference signal from said output signal.” (Appeal Br., Claims App.)
Independent claim 11 similarly recites an input signal, a reference signal
from the input signal, a DC output signal, and an output signal that is
provided to a load. (Id.) Dependent claims 23 and 24 each recites that “said
output signal is a signal that is suitable for welding or cutting processes.”
(Id.)
The Examiner maintains that the recited signals are not described in
the Specification in an enabling manner. (See Final Action 6.) According to
the Examiner, it is not clear if the “signals” recited in the claims are “large”
electric power waveforms or “weak” sensor measurements. (Id. at 2.) The
2 US 2010/0185336 A1 published July 22, 2010.
3 US 2005/0035105 A1 published February 17, 2005.
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Application 13/291,328
Examiner explains that “large power that is not attenuated” would damage
the performance monitoring module; (Answer 3) and that an attenuated
signal suitable for the performance monitoring module “cannot cut or weld a
workpiece” (Final Action 6).
The Appellants argue that the claims are enabling to “those skilled in
the relevant art.” (Appeal Br. 13; see also Reply Br. 4—7.) We are
persuaded by the Appellants’ position because the enablement requirement
when one skilled in the art, after reading the St could
practice the claimed invention without undue experimentation. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner does not sufficiently
explain why one skilled in the art, after reading the Specification, would be
unable to practice the claimed invention without undue experimentation.
In this regard, we agree with the Appellants that one skilled in the art
would appreciate, upon reading the Specification (see e.g., Spec. ]Hf 16—19,
Fig. 1), that the recited “input” and “output” signals correspond to “high
current, high voltage waveforms.” (Appeal Br. 11.)
We also agree with the Appellants that one skilled in the art would
appreciate, upon reading the Specification (see, e.g., Spec. 113, Fig. 1), that
the recited “reference” signals correspond to “respective feedforward/
feedback information” for these input and output signals. (Appeal Br. 13.)
Thus, we do not sustain the Examiner’s rejection of claims 1—20, 23,
and 24 under 35U.S.C. § 112, first paragraph.
Rejection II
As indicated above, dependent claims 23 and 24 recite that “said
output signal is a signal that is suitable for welding or cutting processes.”
(Appeal Br., Claims App.) The Examiner maintains that it “is not clear” if
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Application 13/291,328
the output signal recited in dependent claims 23 and 24 can “cut or weld a
workpiece.” (Final Action 7.)
The Appellants argue that “when read in context with the respective
base claims and in light of the specification, it would be clear to those skilled
in the art that the ‘signal that is suitable for welding or cutting processes’
means a welding or cutting waveform.” (Appeal Br. 15.) We are persuaded
by the Appellants’ position because, as discussed above, we agree with the
Appellants that one skilled in the art would appreciate, upon reading the
Specification (see e.g., Spec. Tflf 16—19, Fig. 1), that the claimed “output
signal” corresponds to “high current, high voltage” output. (Appeal Br. 11.).
Thus, we do not sustain the Examiner’s rejection of claims 23 and 24
under 35 U.S.C. § 112, second paragraph.
Rejection III
As discussed above, independent claims 1 and 11 each recites an
“input” signal and an “output” signal that, in the context of the claims at
hand, are power waveforms. (Appeal Br., Claims App.) Independent
claim 1 also recites that “a power conversion module” receives the input
signal and independent claim 11 also recites that “a DC conversion stage”
receives the input signal. (Id.) Independent claims 1 and 11 each
additionally recites that the output signal is “provided to a load.” (Id.)
The Examiner finds that Rovnyak discloses six components (i.e., a
DGSC, an AVR, a PMS, a UL Standard, a rectifier, and a generator system)
that each receives an input signal and provides an output signal to a load.
(See Final Action 8.) These findings are premised upon any box having an
input/output cord constituting a conversion component that receives an
“input signal” and provides an “output signal” to a load. (See Answer 5.)
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Application 13/291,328
As such, the Examiner does not consider it necessary to specifically identity
what is considered the claimed “input signal” for each of these six
components. (See id. 4—13.)
The Appellants argue that the Examiner fails to show a “nexus”
between the alleged “input signal” in Rovnyak and “the other claimed
features.” (Reply Br. 12.) We are persuaded by this argument because
independent claims 1 and 11 each recites another component that “receives a
reference signal from said input signal.” (Appeal Br., Claims App.) As
discussed above, in the context of the claims at hand, this reference signal
provides feedforward/feedback information for the recited input signal.
Insofar as any of the six conversion components listed above receive an
input signal (i.e., power waveform) as recited in independent claims 1
and 11, the Examiner does not sufficiently explain how another component
in Rovnyak receives a reference signal from this particular input signal.4
Thus, we do not sustain the Examiner’s rejection of claims 1—20 under
35 U.S.C. § 102(b) as anticipated by Rovnyak.
Rejection IV
As indicated above, dependent claims 23 and 24 each recites that
“said output signal is a signal that is suitable for welding or cutting
processes.” (Appeal Br., Claims App.) The Examiner finds that it would
have been obvious to integrate Rovnyak’s power control system into a
4 For example, according to the Appellants, “[o]f the six cited components,”
only the input to the PMS is “identified as allegedly corresponding to the
claimed ‘input signal’” but “no explanation is given” as to how the input to
the PMS “allegedly provide[s] the ‘reference signal from said input signal’”
as set forth in independent claim 1. (Reply Br. 12.)
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welding system taught by Spears. (See Final Action 16.) We agree with the
Appellants that the Examiner’s findings with respect to Spears “do[] not cure
the deficient teachings of Rovnyak discussed above with respect to claims 1
and 11.” (Appeal Br. 35.)
Thus, we do not sustain the Examiner’s rejection of claims 23 and 24
under 35 U.S.C. § 103(a) as unpatentable over Rovnyak and Spear.
DECISION
We REVERSE the Examiner’s rejections of claims 1—20, 23, and 24.
REVERSED
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