11560765 (P.T.A.B. Dec. 17, 2013)

Ex Parte Luck et al

Patent Trial and Appeal BoardDec 17, 2013

11560765 (P.T.A.B. Dec. 17, 2013)

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. 11/560,765 11/16/2006 John Luck 15578 (ITWO:0348) 6339 52145 7590 12/17/2013 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 12/17/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN LUCK and STEPHEN P. FERKEL ____________ Appeal 2012-001212 Application 11/560,765 Technology Center 3700 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. Opinion for the Board filed by HILL, Administrative Patent Judge. Opinion Dissenting filed by CAPP, Administrative Patent Judge HILL, Administrative Patent Judge DECISION ON APPEAL Appeal 2012-001212 Application 11/560,765 2 STATEMENT OF THE CASE John Luck and Stephen P. Ferkel (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 1-7 and 9-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to a method and apparatus for communicating control signals to a welding power source from a remote location. Spec., para. [0001]. Claim 1 represents the subject matter on appeal and is reproduced below with the disputed limitation emphasized. 1. A welding-type system comprising: a power source having a controller to regulate welding operation; a welding torch connected to the power source; a wireless remote control configured to remotely transmit a signal for controlling at least one of a plurality of welding parameters in the welding system; a wireless receiver connected to the controller remote from the wireless control and configured to receive the signal and allow the controller to regulate at least one of the plurality of welding parameters in response thereto; and wherein the wireless receiver is further configured to engage an existing connection port located on an exterior of the power source, the connection port configured to engage both a control cable coupled to a wired control device and the receiver in place of the control cable. Appeal 2012-001212 Application 11/560,765 3 EVIDENCE The Examiner relies on the following evidence: Reynolds US 7,205,503 B2 Apr. 17, 2007 Clark US 7,245,875 B2 Jul. 17, 2007 Li US 7,336,259 B2 Feb. 26, 2008 REJECTIONS Claims 1-7 and 9-18 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 4. Claims 1, 3-7, 10-15, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Clark and Li. Ans. 5. Claims 2, 9, 16, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Clark, Li, and Reynolds. Ans. 9. ANALYSIS Rejection under 35 U.S.C. § 112, First Paragraph The Examiner finds that “[t]he phrase ‘wired control device’ [is] not properly described in the application as filed.” Ans. 4. This term is included in each of independent claims 1, 7, and 13. Appellants argue that support for a “wired control device” can be found in paragraphs [0019] and [0023] of the originally-filed Specification. App. Br. 6. Paragraph [0019] indeed refers to connection port 37 being “configured to engage standard control cables (not shown) often used in a welding system.” One skilled in the art would have understood that such standard control cables would have been connected to a wired control device. We therefore disagree with the Examiner that a wired control device would not have been properly described to one skilled in the art in the as- Appeal 2012-001212 Application 11/560,765 4 filed application.1 We do not sustain the rejection of claims 1-7 and 9-18 under 35 U.S.C. § 112, first paragraph. Rejections under 35 U.S.C. § 103(a) The Examiner finds that Clark teaches a welding system comprising a power source having a controller to regulate a welding operation, a wireless remote control configured to remotely transmit a signal for controlling welding parameters, and a wireless receiver connected to the controller and configured to receive a signal from the wireless remote control and allow the controller to regulate welding parameters in response to the received signal. Ans. 5. The Examiner finds that Clark fails to teach the receiver being configured to engage a connection port located on an exterior of the power source, the connection port configured to engage either a control cable coupled to a wired control device or the wireless remote control receiver. Ans. 8. The Examiner finds, however, that Li teaches a wireless receiver 521 configured to engage a connection port located on an exterior of a power source (computer 60) and configured to engage either a control cable 522 coupled to a wired control device or the wireless receiver 521 – the connection port being used for recharging the receiver 521. Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Clark with Li’s wireless receiver 521 and cable 522 “in 1 We note, however, that 37 C.F.R. § 1.83(a) states that the drawings in a non-provisional application “must show every feature of the invention specified in the claims.” Appeal 2012-001212 Application 11/560,765 5 the same port . . . to recharge the receiver thru the cable while it connects with [the] computer.” Id. The Examiner further explains that Li’s connection port is capable of engaging both a cable 522 coupled to a wired control device 51, and a wireless receiver 521 “in place of the control cable.” Ans. 10. This statement is in error. Wireless receiver 521 is the receiver for the control device 51. When the control device 51 is “wired” for charging, which may or may not make it a “wired control device” as claimed, the receiver 521 is also wired. Likewise, when the receiver 521 is not wired for charging, neither is the control device 51. Further, Li’s receiver 521 is only taught as being connected to the computer 60 via cable 522. Lacking a teaching of separate wired and wireless control devices with elements to engage the connection port, and lacking a teaching of connection of a receiver to the connection port without a control cable, the Examiner does not establish that Li teaches the claimed connection port configured to engage both a control cable coupled to a wired control device and the receiver in place of the control cable. For these reasons, we do not sustain the rejection of claims 1, 3-7, 10- 15, and 17 under 35 U.S.C. § 103(a) as unpatentable over Clark and Li. The Examiner does not allege that Reynolds teaches a connection port configured to engage both a control cable coupled to a wired control device and the receiver in place of the control cable. Therefore, for the same reasons, we do not sustain the rejection of claims 2, 9, 16, and 18 as unpatentable over Clark, Perez, and Reynolds. Appeal 2012-001212 Application 11/560,765 6 DECISION We REVERSE the rejection of claims 1-7 and 9-18 under 35 U.S.C. § 112, first paragraph. We REVERSE the rejections of claims 1-7 and 9-18 under 35 U.S.C. § 103(a). REVERSED mls Appeal 2012-001212 Application 11/560,765 7 OPINION DISSENTING CAPP Administrative Patent Judge I would affirm the decision of the Examiner to reject at least claim 1 of the pending claims. As I interpret Li, when receiver 521 is engaged in recess 511, mouse body 51 physically incorporates receiver 521 as one integral unit. Thus, in my opinion, when receiver 521 is engaged in recess 511, the connection between the integrated mouse/receiver unit and computer 60 is a wired connection. Li, col. 1, l. 64 – col. 2, l. 59. Likewise, when receiver 521 is disengaged from recess 511, the connection between mouse 51 and computer 60 may properly be considered a wireless connection. Id. From my perspective, the fact that there may be a wireless data transmission link between body 51 and receiver 521 while 521 is disposed in recess 511, thereby forming an integral mouse/receiver unit, is of no consequence to the patentability of the claimed invention. Li discloses a computer 60 with a (USB) port. Li, Fig. 3, col. 2, ll. 19- 28. The computer 60 functions as a power source and the USB port on the computer is configured to transmit power to the mouse 51 to power the mouse and/or recharge the mouse battery. The USB port is also configured to transmit control signals between the mouse and the computer. Li, col. 1, l. 64 – col. 2, l. 59. In my opinion, this satisfies the limitation of claim 1 directed to a connection port located on an exterior of the power source. Under the controlling statute, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art. 35 Appeal 2012-001212 Application 11/560,765 8 U.S.C. § 103(a). The statute contemplates that there may some differences between the prior art and the claimed invention and yet the subject matter is, nevertheless, not patentable. In my opinion, the fact that Li maintains a wireless data transmission link between the body 51 and the receiver 521 while the receiver is engaged in recess 511is such a trivial difference that the claimed subject matter, as a whole, would have nevertheless been obvious to a person of ordinary skill in the art.2,3 For the foregoing reasons, I respectfully dissent. 2 In my opinion, converting Li to a fully wired (data and power) connection when the receiver is engaged in the recess would have been well within the capability of a person of ordinary skill in the art at the time of the invention. 3 Otherwise, I agree with the Examiner that Li is analogous art that is readily combinable with Clark and that a person of ordinary skill in the art would have had the requisite motivation to make the combination.