11560773 (P.T.A.B. Dec. 10, 2013)

Ex Parte Luck et al

Patent Trial and Appeal BoardDec 10, 2013

11560773 (P.T.A.B. Dec. 10, 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. 11/560,773 11/16/2006 John A. Luck 21181 (ITWO:0351) 6354 52145 7590 12/10/2013 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 12/10/2013 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 A. LUCK and STEPHEN P. FERKEL ____________ Appeal 2011-012993 Application 11/560,773 Technology Center 3700 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012993 Application 11/560,773 2 STATEMENT OF THE CASE John A. Luck and Stephen P. Ferkel (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 1-18, 20, and 21. 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 welder comprising: a power source having a controller to regulate a welding operation; a wireless control panel configured as a removable front panel transceiver attachable to the power source and comprising a plurality of dedicated weld parameter selectors configured to control welding parameters of the power source, the wireless control panel configured to be secured to the power source and removed from the power source and to receive inputs for performing the welding operation both when secured to the power source and wirelessly when removed from the power source. Appeal 2011-012993 Application 11/560,773 3 EVIDENCE The Examiner relies on the following evidence: Gilliland US 5,136,139 Aug. 4, 1992 Clark US 7,245,875 B2 Jul. 17, 2007 Perez US 7,257,465 B2 Aug. 14, 2007 REJECTIONS Claims 1-18, 20, and 21 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting over claims 1-7 and 9-16 of co-pending Application No. 11/560,765. Ans. 4. Claims 1-4, 6-13, 15-18, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Clark and Perez. Ans. 5. Claims 5, 14, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Clark, Perez, and Gilliland. Ans. 9. ANALYSIS Rejection of Claims on Double Patenting Grounds Appellants set forth several arguments against the Examiner's obviousness-type double patenting rejection based on the ’765 application. App. Br. 5. However, the claims of the ’765 application that were relied upon by the Examiner in the rejection are still pending and accordingly, the Examiner's rejection remains provisional. We note that the Board has flexibility to reach or not reach provisional obviousness-type double patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). In this case, we decline to reach the rejection, because the claims of the ’765 application may be amended prior to the issuance, if any, of the ’765 application. Appeal 2011-012993 Application 11/560,773 4 Rejection of Claims under 103(a) The Examiner finds that Clark teaches a power source having a controller to regulate a welding operation, a wireless control panel 110 comprising a plurality of dedicated weld parameter selectors configured to control welding parameters of the power source, the wireless control panel 110 configured to receive inputs for performing the welding operation wirelessly. Ans. 5. The Examiner does not find that Clark’s wireless control panel is a removable front panel attachable to the power source or is configured to be secured to and removed from the power source. Ans. 8. The Examiner finds that Perez teaches a removable front panel attachable to a power source and configured to be secured to and removed from the power source. Ans. 8-9. The Examiner concludes that it would have been obvious to one skilled in the art to modify Clark’s wireless communication system “with [a] wireless device that can be remove[d] from [the] system as taught by Perez in order to permit the controller to be programmed at a remote location by the user.” Ans. 9. Appellants argue that the claimed control panel is configured to function as a removable front panel transceiver, and to perform a welding operation both when secured to and removed from the power source, and that Perez cannot obviate the deficiencies of Clark with regard to these claimed features. App. Br. 7-8. Appellants explain that Perez’s control panel 20 is not operable to perform any control operation (much less a welding operation) when removed from the controller 10. App. Br. 8-9. While the Examiner has found that Clark teaches a detached wireless weld controller that can control a weld operation while not being secured to the power source, and Perez teaches a removable controller that can control Appeal 2011-012993 Application 11/560,773 5 a device when attached thereto, the Examiner fails to explain how or why Clark would be combined with Perez to provide a controller that is configured to receive inputs for performing the welding operation both when secured to the power source and wirelessly when removed from the power source. Lacking such a finding and explanation, the Examiner has failed to establish prima facie obviousness. We therefore do not sustain the rejection of claims 1-4, 6-13, 15-18, and 20 as unpatentable over Clark and Perez. The Examiner does not allege that Galliland teaches a controller that is detachable from a power source and is configured to receive inputs for performing the welding operation both when secured to the power source and wirelessly when removed from the power source. Therefore, for the same reasons, we do not sustain the rejection of claims 5, 14, and 21 as unpatentable over Clark, Perez, and Galliland. DECISION We decline to reach the merits of the provisional rejection of claims 1- 18, 20, and 21 on the ground of non-statutory obviousness-type double patenting. We REVERSE the rejection of claims 1-4, 6-13, 15-18, and 20 under 35 U.S.C. § 103(a) as unpatentable over Clark and Perez. We REVERSE the rejection of claims 5, 14, and 21 under 35 U.S.C. § 103(a) as unpatentable over Clark, Perez, and Gilliland. REVERSED mls