Ex Parte Kropp et al

Board of Patent Appeals and Interferences

Aug 12, 2012

11742378 (B.P.A.I. Aug. 12, 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.
11/742,378 04/30/2007 Eric M. Kropp 20724 (ITWO:0181) 4758
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 ERIC M. KROPP and DANIEL C. FOSBINDER
____________________

Appeal 2010-007790
Application 11/742,378
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 2010-007790
Application 11/742,378

2
STATEMENT OF THE CASE
Eric M. Kropp and Daniel C. Fosbinder (Appellants) appeal under 35
U.S.C. § 134(a) from a decision finally rejecting claims 1-17, 19, 20, and 22-
24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Claimed Subject Matter
According to Appellants, the claimed invention relates “generally to
welding systems and more particularly to welding systems utilizing an
engine coupled to an air compressor and welding generator in a single unit.”
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 controller configured to soft start the compressor to reduce
shock to the system.

Evidence
The Examiner relies upon the following prior art reference:
Silvestro US 2006/0027547 A1 Feb. 9, 2006

Rejection
The Examiner makes the following rejection:
I. Claims 1-17, 19, 20, and 22-24 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Silvestro.
Appeal 2010-007790
Application 11/742,378

3
OPINION
All of the claims on appeal stand rejected as anticipated by Silvestro,
which “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 and 6-8
Claim 1 requires in relevant part “a controller configured to soft start
the compressor to reduce shock to the system.” The Examiner found that
Silvestro discloses this limitation at elements 330 and 340 in figure 7. Ans.
3. In the Response to Arguments, the Examiner also pointed to a shock
suppressor in Silvestro. Ans. 7.
Figure 7 of Silvestro is reproduced below.
App
App

Figu
comp
330
280,
conf
Exam
issue
supp
eal 2010-0
lication 11
re 7 depict
ressor int
and 340 ar
respective
As the c
igured to s
iner’s fin
.
We also
ressor des
07790
/742,378
s a schem
egrated wi
e controlle
ly.
ontroller 3
oft start th
ding that t
disagree w
cribed in S
atic repres
th an engi
rs for the
30 is for th
e compres
he control
ith the Ex
ilvestro sa
4
entation of
ne welder.
hydraulic
e hydraul
sor. Thus
ler 330 sat
aminer’s f
tisfies the
a hydraul
As seen i
pump 250
ic pump, i
, we disag
isfies the c
inding tha
claim lim

ic pump a
n figure 7
and air co
t is clearly
ree with th
laim limit
t the shock
itation at i
nd an air
, elements
mpressor
not
e
ation at

ssue since

Appeal 2010-007790
Application 11/742,378

5
Silvestro discloses it as part of the hydraulic unit. Silvestro 3, para. [0011].
(Although claim 1 does refer to reducing shock to the broader system, which
would include the hydraulic pump, the claim specifically requires soft
starting the compressor.)
The other Silvestro controller (340), however, is for the compressor
and is capable of soft starting it to reduce shock to the system. In describing
figure 7, Silvestro states:
The air compressor 280 of the air compressor unit is also
illustrated as being directly connected or interconnected via
clutch 302 to motor 180. The air compressor can be driven by
one or more gears or belts that are directly connected to motor
180 or interconnected to motor 180 via clutch 302. A controller
340 is illustrated as controlling the operation of air compressor
280 when activated by air compressor switch 160.

Silvestro 9, para. [0051]. Silvestro also states that the “clutch can be used in
conjunction to a belt or gear driven air compressor to control the speed
and/or operation of the air compressor.” Silvestro 8, para. [0049].
Use of the clutch for the air compressor satisfies the claim limitation
at issue. Without the clutch, the transmission of power from the motor to the
air compressor would be less gradual and occur more quickly, resulting in a
greater shock to the system.
Appellants’ own Specification concedes that if a compressor is
controlled through a clutch, it is configured to be soft started, stating:
The control features also may include a specific air compressor
load control, which may be configured to reduce the engine
speed and/or gradually engage (e.g., via a clutch) the air
compressor 16 during start up (e.g., a soft start control). . . .

. . . .
Appeal 2010-007790
Application 11/742,378

6
. . . . Again, the soft start may include reducing the
engine speed, engaging the clutch, gradually ramping up the
engine speed, gradually increasing engagement of the clutch,
gradually increasing tension in the belt 30 relative to the pulleys
24 and 28, or a combination thereof.

Spec. 3, para. [0012] (emphasis added); Spec. 19, para. [0049] (emphasis
added).
For these reasons, we sustain the decision to reject claim 1.
Dependent claims 2, 3, and 6-8 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, and 6-8.
Claims 10 and 15-17
Independent claim 10 is similar to claim 1 as it requires “a controller
configured to soft start an air compressor to reduce shock to the system in a
portable welding unit having the air compressor, an engine coupled to the air
compressor, and a welding generator coupled to the engine.”
Appellants argue claim 10 separately from claim 1 but rely on the
same arguments. Thus, for the same reasons discussed above with respect to
claim 1, we sustain the decision to reject claim 10.
Dependent claims 15-17 are not separately argued from independent
claim 10. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select
claim 10 as representative of the group and treat those claims as falling with
representative claim 10. Hence, we also sustain the decision to reject claims
15-17.
Appeal 2010-007790
Application 11/742,378

7
Claims 19 and 24
Independent claim 19 is a method claim but it is analogous to claim 1
in that it requires “soft starting an air compressor . . . wherein soft starting
the air compressor comprises reducing a load or shock of the air compressor
on the engine during startup of the air compressor.”
Appellants argue claim 19 separately from claim 1 but rely on the
same arguments. Thus, for the same reasons discussed above with respect to
claim 1, we sustain the decision to reject claim 19.
Dependent claim 24 is not separately argued from independent claim
19. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim
19 as representative and treat claim 24 as falling with representative claim
19. Hence, we also sustain the decision to reject claim 24.
Claim 4
Dependent claim 4 recites that “the controller is configured to reduce
a speed of the engine during the soft start of the compressor to reduce shock
to the system.” The Examiner found this limitation in paragraphs [0011],
[0049], and [0051] of Silvestro. Ans. 4.
Paragraphs [0049] and [0051] disclose mechanically coupling an air
compressor to an engine through a clutch. Silvestro 8, 9, paras. [0049] and
[0051]. This puts a load on the engine, which will at least temporarily slow
the engine’s speed. This reduction in speed occurs during the soft start.
Accordingly, we do not find error in the decision to reject claim 4, and so we
sustain it.

Appeal 2010-007790
Application 11/742,378

8
Claim 5
Dependent claim 5 recites “wherein the controller is configured to
gradually engage the engine with the compressor during the soft start of the
compressor to reduce shock to the system.” The Examiner found this
limitation in paragraphs [0011], [0049], and [0051] of Silvestro. Ans. 4.
The Silvestro controller 340 is so configured since it controls the air
compressor’s engagement with the engine through a clutch, the use of which
provides gradual engagement. Silvestro 8, 9, paras. [0049] and [0051].
For this reason, we sustain the decision to reject claim 5.
Claim 9
Dependent claim 9 recites:
[t]he system of claim 1, comprising a first pulley coupled
to a first shaft of the engine, a second pulley coupled to a
second shaft of the compressor, and a belt disposed in tension
about the first and second pulleys, wherein the controller is
coupled to a tensioner configured to increase or decrease
tension of the belt during the soft start of the compressor to
reduce shock to the system.
The Examiner found this limitation in paragraphs [0011], [0049], and
[0051] of Silvestro but did not explain how these paragraphs describe, for
example, a “first pulley,” “second pulley,” or “tensioner,” nor is it apparent
to us. Ans. 4. Thus, we cannot sustain the decision to reject claim 9.
Claims 11-14
Dependent claim 11 recites that “the controller is configured to reduce
speed of the engine prior to engaging the engine with the air compressor in
response to a request to soft start the air compressor.” (Emphasis added).
Appeal 2010-007790
Application 11/742,378

9
The Examiner found this limitation in paragraphs [0049] and [0051] of
Silvestro. Ans. 4-5.
Neither paragraph nor any other portion of Silvestro discloses a
controller or governor for directly controlling the speed of the engine.
Instead, the controllers are described and illustrated as directly controlling
clutches as opposed to the engine itself. See Silvestro figs. 7-11. For
example, the controller 340 controls the clutch between the engine and the
air compressor. Silvestro fig. 7. It cannot affect the engine speed other than
through operation of the clutch. As such, it cannot reduce the engine speed
prior to engaging the engine with the air compressor. Accordingly, we
cannot sustain the decision to reject claim 11 or to reject claims 12-14,
which are dependent on claim 11.
Claim 20
Dependent claim 20 recites “wherein soft starting the air compressor
comprises reducing speed of the engine and gradually increasing speed of
the engine after engagement of the air compressor with the engine.” The
Examiner found this limitation in paragraphs [0011], [0049], and [0051] of
Silvestro but did not explain how, and it is not apparent. Ans. 5-6. As such,
we cannot sustain the decision to reject claim 20.
Claim 22
Dependent claim 22 recites:
[t]he method of claim 19, comprising receiving a request
to operate the air compressor, determining a minimum engine
operating speed based on a system parameter, checking an
actual engine speed to determine if the actual engine speed is at
Appeal 2010-007790
Application 11/742,378

10
or below the minimum engine operating speed, reducing the
actual engine speed to a level at or below the minimum engine
operating speed, engaging a clutch, and increasing the actual
engine speed to a level greater than the minimum engine
operating speed.

The Examiner found this limitation in paragraphs [0049], [0051], and
[0053] of Silvestro but did not explain how, and it is not apparent. Ans. 6.
As such, we cannot sustain the decision to reject claim 22.
Claim 23
Dependent claim 23 recites:
wherein the controller is configured to reduce speed of the
engine prior to engaging the engine with the compressor in
response to a request to soft start the compressor, the controller
is configured to engage a clutch between the engine and the
compressor after reducing the speed of the engine, the
controller is configured to gradually increase engagement of the
clutch between the engine and the compressor, and the
controller is configured to gradually increase the speed of the
engine after engaging the engine with the compressor via the
clutch.

The Examiner found this limitation in paragraph [0014] of Silvestro
but did not explain how, and it is not apparent. Ans. 6. As such, we cannot
sustain the decision to reject claim 23.
DECISION
The Examiner’s decision to reject claims 1-8, 10, 15-17, 19, and 24 is
affirmed. The Examiner’s decision to reject claims 9, 11-14, 20, 22, and 23
is reversed.

Appeal 2010-007790
Application 11/742,378

11
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

hh