Ex Parte Kooken et al

Patent Trial and Appeal Board

Apr 21, 2017

11051196 (P.T.A.B. Apr. 21, 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.
11/051,196 02/07/2005 Todd E. Kooken 072056-8010.US00 3189
91854 7590 04/25/2017
Lincoln Electric Company/Perkins COIE LLP
700 Thirteenth Street, NW
Suite 600
Washington, DC 20005-3960
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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 E. KOOKEN and LIFENG LUO
Appeal 2015-001844
Application 11/051,196
Technology Center 3700
Before ALLEN R. MacDONALD, KEN B. BARRETT and
CARL W. WHITEHEAD JR., Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-001844
Application 11/051,196
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—76, 181—183, and 185—216. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A power source for an electric arc welding process, said
power source comprising:
a first module including:
an input stage having an AC input and a first fixed DC
output signal,
a second stage in the form of an unregulated DC to DC
converter having an input connected to said first
fixed DC output signal, a network of switches
switched at a high frequency with a given duty
cycle to convert said input into a first internal AC
signal, an isolation transformer with a primary
winding driven by said first internal AC signal and
a secondary winding for creating a second internal
AC signal and a rectifier to convert said second
internal AC signal into a second fixed DC output
signal of said second stage; with a magnitude
related to said duty cycle of said switches; and
a second module including a third stage to convert said second
fixed DC output signal to a welding output for welding in
said process, said input stage and said second stage being
assembled into said first module and said third stage
being assembled into said second module so as to be
releasably connectable to said first module.
2
Appeal 2015-001844
Application 11/051,196
Church
Ulrich
Church et al.
Ishii et al.
Baretich et al.
Blankenship et al.
Stava
References
US 6,504,132 B1
US 6,236,014
US 6,023,037
US 5,825,642
US 5,747,972
US 2003/0111451 Al
US 2002/0125235 Al
January 7, 2003
May 22, 2001
February 8, 2000
October 20, 1998
May 5, 1998
June 19, 2003
September 12, 2002
Rejections
The Examiner provisionally1 rejected claims 1—76, 181—183, and
185—216 on fifteen (15) grounds of nonstatutory obviousness-type double
patenting as not being patentably distinct from various claims of U.S. Patent
Applications 10/889,866, 11/087,179, 11/102,429, or 11/551,957, in various
combinations with Church ‘132, Ulrich, Church ’037, Ishii, Baretich,
Blankenship, and Stava. Final Act. 3—26.2
1 A number of the relied upon U.S. Patent Applications have issued as U.S.
Patents. Therefore, a number of these provisional rejections were converted
to actual nonstatutory obviousness-type double patenting rejections by the
issuance of these patents. MPEP § 804 I.B.l. However, the Examiner and
Appellants continue to style all these rejections as “provisional” and we
maintain that designation herein.
2 Appellants do not argue these rejections separately. Thus, the rejections of
these claims turn on our decision as to claim 1. Except for our ultimate
decision, only the provisional rejection of claim 1 is discussed further herein.
3
Appeal 2015-001844
Application 11/051,196
The Examiner rejected claims 1, 2, 4, 181, 182, 185—187, 205—207,
215, and 216 are under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Ishii and Church ’037.3
The Examiner rejected claims 3, 5—76, 183, 188—204, and 208—214
under 35 U.S.C. § 103(a) as being unpatentable over Ishii and Church ’037
in various combinations with other references.4
Appellants ’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
In view of the description from Ishii, appellant maintains that
Ishii does not provide a second fixed DC output signal as
claimed. . . . Ishii does not show or describe that the output from
the output rectifier 6 is fixed; and shows and describes that the
output of the output rectifier 6 is a high frequency signal that has
been rectified. See Ishii, col. 3, lines 23-26.
App. Br. 13.
2. Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
A high-frequency or AC voltage that is rectified by a rectifier
alone does not provide a constant or fixed DC signal. See
Kooken [Declaration] at | 8. Instead, a rectifier converts an AC
or high-frequency signal that reverses direction (positive to
3 Separate patentability is not argued for claims 2, 4, 181, 182, 185—187,
205—207, 215, and 216. Except for our ultimate decision, this rejection of
these claims is not discussed further herein.
4 Separate patentability is not argued for claims 3, 5—76, 183, 188—204, and
208—214. Thus, the rejections of these claims turn on our decision as to
claim 1. Except for our ultimate decision, these rejections are not discussed
further herein.
4
Appeal 2015-001844
Application 11/051,196
negative) and converts it to a signal that is uni-directional
(positive only) which varies over time in amplitude from a
maximum magnitude to zero. See Kooken at || 8 & 9.
App. Br. 13.
In order to make a rectified signal fixed or constant, the
rectifier output must be coupled to a smoothing circuit; such as
for example, a smoothing capacitor. See Kooken at 110.
App. Br. 14.
3. Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
With respect to the Kooken Declaration, the Examiner responded
that, “the examiner respectfully disagrees.” See Final, Detailed
Action at 44, para. 102. Appellant respectfully submits that the
Examiner’s consideration and response to the Kooken
Declaration is insufficient in support of the conclusion that the
declaration was insufficient.
App. Br. 14-15.
4. Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Ishii does not show or describe an input and second stage with a
releasably connected third stage to comprise a power source as
claimed. Instead, Ishii shows and describes a “generic” and
“independent” stand alone [sic] power supply which can be used
with an arc welder or arc cutter.
App. Br. 16.
Appellant submits that the claimed power source is not rendered
prima facie obvious by the purported two stage power supply
apparatus of Ishii. Because the Examiner’s obviousness
determination fails to consider both the claimed invention and
Ishii as a whole, a prima facie case of obviousness has not been
appropriately established.
App. Br. 17.
5
Appeal 2015-001844
Application 11/051,196
5. Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[T]he Examiner now argues that the output of the rectifier 6
provides for the alleged second fixed signal because it is
purportedly unregulated. The Examiner bases his assertion, not
on Ishii, but rather on his understanding of the specification of
the instant application. The Examiner cites various paragraphs
from the specification in support. Applicant submits that the
Examiner’s Answer fails to rebut appellant argument and fails to
support the rejection of claims because the Examiner’s rationale
fails to correctly understand and consider each of the claimed
invention and the applied prior art as a whole. MPEP 2141.02.
Moreover, by interpreting Ishii based upon applicant’s own
disclosure, appellant submits that the Examiner’s Answer in
support of the obviousness rejections relies upon improper
hindsight reasoning. MPEP 2142.
Reply Br. 6.
According to the Examiner’s Answer, the prior art reference of
Ishii is being interpreted in view of purported “definitions”
derived from appellant’s own specification. See Examiner’s
Answer at 5 (“If the second stage produces a fixed DC output
because it is unregulated as defined by the applicant then Ishii
fully discloses ‘a second fixed DC output signal’.” (citations
omitted)) Because the Examiner’s Answer is analyzing Ishii
based upon description of appellant’s own power source,
appellant submits that the Examiner’s Answer and the rejection
of claims fails to consider the prior art as a whole. For this
additional reason, arguments of the Appeal Brief have not been
refuted and therefore the rejections should not stand.
Appellant further submits that the analysis of Ishii in
support of the rejection of claims is based upon improper
hindsight reasoning.
Reply Br. 8.
6
Appeal 2015-001844
Application 11/051,196
6. Appellants contend the Examiner erred in provisionally rejecting
claim 1 on the ground of nonstatutory obviousness-type double patenting
because:
Ishii does not show or describe a power supply or source that
includes input and second stages with a releasably connected
third stage to [comprise a power source as claimed]. Instead,
Ishii shows and describes a “generic” and “independent”
purported two-stage standalone power source which can be used
with an arc welder or arc cutter.
App. Br. 18.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
Did the Examiner err in provisionally rejecting claim 1 on the ground
of nonstatutory obviousness-type double patenting as not being patentably
distinct?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions. We concur with the conclusions
reached by the Examiner.
As to Appellants’ above contentions 1 and 2, we disagree. Appellants
argue “Ishii does not provide a second fixed DC output signal.” App. Br.
13. However, we do not find where Appellants’ argument (or the
Specification) sets forth a definition of “fixed” or “output signal” which
would preclude the Examiner’s reliance on Ishii’s “output rectifier 6” and its
“output voltage” (which an artisan would recognize as at least constant
7
Appeal 2015-001844
Application 11/051,196
within a range of variance (ripple voltage)) to show the “fixed” and “output
signal” limitations. We see no error in the Examiner viewing Ishii’s rectifier
output voltage as a fixed output signal. Similarly, our review of Appellants’
Kooken Declaration does not find where Appellants set forth a definition of
“fixed” or “output signal” which would preclude the Examiner’s reliance on
Ishii.
Although not relied upon by the Examiner, our review of the Kooken
Declaration, and the Smith reference it in turn relies upon, finds that Smith
shows it is conventional to use a rectifier to generate an output DC voltage
and explains the ripple voltage can be further reduced until the output
voltage “is nearly constant.” Smith 77. Appellants’ arguments do not
address this conventionality of producing a fixed DC voltage output.
Consequently, even if we were to agree with Appellants’ assertion that Ishii
is not fixed, an artisan would understand that it is conventional to add a
capacitor to the circuit of Ishii to reduce any ripple voltage and produce a
nearly constant DC output voltage.
As to Appellants’ above contention 3, we disagree. Given our
discussion above, we agree with the Examiner that the Kooken Declaration
is insufficient. Further, we agree with the Examiner that Appellants either
need to particularly define the “fixed” term, or limit the claim to distinguish
over the prior art. As Examiner states at paragraph 103 of the Final Action:
If the applicant is now changing the definition of fixed as being
a rectifier coupled to a smoothing circuit (i.e. smoothing
capacitor), it is requested] to put this limitation in the claim.
As to Appellants’ above contention 4, we disagree. Appellants
describes Ishii’s invention and assert that when Ishii is considered as a
whole, a prima facie case of obviousness has not been appropriately
8
Appeal 2015-001844
Application 11/051,196
established. However, we do not find where Appellants explain why this is
the case. Additionally, Appellants’ argued method of considering Ishii is not
the standard. “A reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). Appellants
only consider Ishii as to its particular invention, and overlook that
considering a reference in its entirety includes considering all portions of the
reference both individually and collectively. One cannot pick those parts of
a reference that are favorable to his or her position and ignore the other parts
that are unfavorable.
As to Appellants’ above contention 5, we disagree. Appellants seem
confused by the Examiner’s attempt to derive definitions from Appellants’
Specification. It is Appellants’ burden to precisely define the invention, not
the Examiner’s. In re Morris, 111 F.3d 1048, 1056 (Fed. Cir. 1997). Also,
within limits in ex parte prosecution a patent applicant is entitled to be his or
her own lexicographer of patent claim terms. In re Corr, 347 F.2d 578, 580
(CCPA 1965). We conclude the Examiner use of definitions derived from
Appellants’ Specification is appropriate. However, to the extent that the
Examiner deems a fixed signal to require it be “unregulated,” we conclude
this is overly restrictive. As discussed above, we conclude that “fixed”
requires only that it be at least constant within a range of variance (ripple).
As to Appellants’ above contention 6, it rests on the argument
presented at above contention 4. We disagree with contention 6 for the same
reasons discussed above for contention 4.
9
Appeal 2015-001844
Application 11/051,196
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—76, 181—183,
and 185—216 as being unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner did not err in provisionally rejecting claims 1—76,
181—183, and 185—216 on the ground of nonstatutory obviousness-type
double patenting as not being patentably distinct.
(3) Claims 1—76, 181—183, and 185—216 are not patentable.
DECISION
The Examiner’s rejections of claims 1—76, 181—183, and 185—216 as
being unpatentable under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s provisional rejections of claims 1—76, 181—183, and
185—216 on the ground of nonstatutory obviousness-type double patenting
are affirmed.
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
10