Ex Parte Myers et al

Patent Trial and Appeal Board

Oct 25, 2012

11465999 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RUSSELL K. MYERS, TIMOTHY M. O’DONNELL,
and ALONZO P.O. YOST
____________________

Appeal 2010-005481
Application 11/465,999
Technology Center 3700
____________________

Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and
REMY J. VANOPHEM, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
101-1201. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part. However, we denominate the affirmed rejections
“new ground[s] of rejection” under 37 C.F.R. § 41.50(b).

The claims are directed to an electric arc welder. Claim 101,
reproduced below, is illustrative of the claimed subject matter:
101 An electric arc welder, comprising:
a first electrode driven by a first wire feeder;
a second electrode driven by a second wire feeder; and
a main power source with a first output terminal
connected to the first electrode and a second output terminal
connected both to the second electrode and directly or indirectly
to the metal workpiece to create a second electrode path and a
workpiece path, the main power source including a high speed
switching output stage for creating current with a selected AC
waveform between the first and second output terminals, the
waveform of the main power source having an independently
adjustable frequency unrelated to a line frequency of line
voltage provided to the main power source.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chyle
Baum
Reynolds
Stava
US 3,223,818
DE 3804802 A
US 6,177,651 B1
US 6,291,798 B1
Dec. 14, 1965
Aug. 24, 1989
Jan. 23, 2001
Sep. 18, 2001

1 Even though Appellants indicate the claims rise or fall together (App. Br.
6) we will group the claims based on those separately argued by Appellants.
See App. Br. 9-18.
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REJECTIONS
Claims 116 and 117 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Chyle. Ans. 3.
Claim 118 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chyle. Ans. 5.
Claims 119 and 120 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chyle and Baum. Ans. 6.
Claims 101, 106-112, 114, and 115 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chyle and Reynolds. Ans. 7.
Claims 102-105 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chyle, Reynolds, and Stava. Ans. 10.
Claim 113 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chyle, Reynolds, and Baum. Ans. 11.

OPINION
Regarding the rejection of independent claim 116 under 35 U .S.C.
§ 102(b) as being anticipated by Chyle, the central point disputed by the
Examiner and Appellants is how Chyle’s adjustable current control 8
functions. Appellants contend that “power provided by both power sources 7
is tapped by voltage control component 10 (left) to control the wire feeder
(left), and power provided by both power sources 7 is tapped by voltage
control component 10 (right) to control the wire feeder (right).” App. Br. 10.
Whereas the Examiner found that “each wire feeder (voltage control
10/motor 2) is clearly controlled by only one power source.” Ans. 14.
The Examiner’s factual conclusion is based on the fact that each of the
electrodes 1 are automatically fed, presumably independently, to maintain
constant voltage between the electrode and workpiece. Ans. 14; Chyle col. 2,
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ll. 7-10. However, even if a single power circuit is tapped to power the feed
motors 2, each motor has an independent voltage control 10. Thus, there is
no reason each motor could not be independently and automatically
controlled in the manner described if the current control operates as
Appellants suggest. Chyle is predominantly concerned with the chemical
composition of the electrodes and flux. Col. 2, l. 20 – col. 6, l. 49. Chyle
provides very little discussion of the electric system the Examiner relies
upon and, ultimately, does not enable us to determine exactly how the
current control 8 and voltage control 10 operate. Thus, the Examiner has not
established by a preponderance of the evidence that each current source 7 in
Chyle controls only one feed motor 2. Contra Ans. 14; Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
While we agree with Appellants that the Examiner has failed to
establish the particular fact discussed above, this is inconsequential to the
question of whether Chyle anticipates claim 116. This is because the
Examiner has interpreted the claim too narrowly, to require a particular
relationship between the power sources and feeders that is not required by
the language of the claim. See In re Prater, 415 F.2d 1393, 1404-05 (CCPA
1969).
Appellants contend that “in claim 116 of the present application each
wire feeder is clearly controlled by only one of the power sources.” App. Br.
10. We disagree with Appellants proposed construction. Appellants’
argument improperly inserts the word “only” which has no express basis in
the claim. Claim 116 requires the first wire feeder to be driven by one of the
power sources and the second wire feeder to be driven by the other of the
power sources. However, claim 116 contains no language which precludes
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the second wire feeder from also being driven by the “one of the power
sources” or the first wire feeder from also being driven by “the other of the
power sources.” While each power source is required to drive one or the
other feeder, there is no requirement that it do so exclusively. Accordingly,
regardless of whether Appellants or the Examiner accurately describe the
operation of Chyle’s current control 8, Chyle anticipates claim 116.
Since we have relied upon a claim construction that differs from the
Examiner in reaching this conclusion, we designate our affirmance as a
“new ground of rejection” pursuant to 37 C.F.R. § 41.50(b) so that
Appellants may be afforded the procedural options to respond associated
therewith. In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). Since claims
117-120 are argued solely based upon dependency, we will similarly affirm
the Examiner’s rejections of these claims. See App. Br. 10-11.
We turn to the rejections based upon the combination of Chyle and
Reynolds. Appellants and the Examiner initially dispute the propriety of the
Examiner’s reliance on a theory of inherency to support the Examiner’s
finding regarding a main power source in Chyle. App. Br. 12; Ans. 15-16.
The Examiner appears to have properly recognized that supporting a finding
of inherency requires the Examiner to provide evidence or reasoning to show
that the allegedly inherent characteristic is necessarily present. Ans. 16.
However, demonstrating that something is “highly irregular” or “known in
the art” (Ans. 15-16, 18) does not meet this requirement.2 Articulating why
Chyle’s system would not work absent the allegedly inherent structure, as

2 The Examiner improperly relies on Stava for the first time in
response to Appellants’ arguments to support the Examiner’s position. Even
if the prior art reference is cited to support the rejection in a minor capacity,
it should be positively included in the statement of rejection. In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970).
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Appellants suggest, is a way to provide the requisite support. App. Br. 12;
contra Ans. 16. While we agree with Appellants that the Examiner has not
established that the allegedly inherent characteristic is necessarily present
because the Examiner’s analysis is legally flawed, this finding appears to be
relevant only for claim 106. See Ans. 7-8.
Insofar as the Examiner’s proposed combination of Chyle and
Reynolds’s is concerned, we agree with Appellants that the Examiner has
failed to articulate reasoning with rational underpinnings in support thereof.
See App. Br 13; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The
Examiner contends that it would have been obvious to “modify the
adjustable current control stage of Chyle [sic with ] a high speed switching
output stage for creating current with a selected AC waveform of Reynolds
in order to provide a phase staggering between the various arcs to remove
the magnetic interaction between the nearby arcs.” Ans. 9. The flaw in the
Examiner’s reasoning is that Chyle only appears to disclose one arc between
the electrodes, as opposed to “various arcs,” since, as Appellants point out,
the Chyle electrodes are wired in series. App. Br. 13; Chyle col. 2, ll. 3-4.
Thus, it is unclear why the skilled artisan would have found it obvious to
incorporate Reynolds teachings, which are concerned with alleviating some
of the problems associated with welding systems having two or more close
arcs (Reynolds col. 3, ll. 1-7), into Chyle. Accordingly, the Examiner’s
rejections premised entirely, or in part, upon the combination of Chyle and
Reynolds’s, as discussed above, cannot be sustained.

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DECISION
The Examiner’s rejections of claims 101-115 are reversed.
The Examiner’s rejections of claims 116-120 are affirmed, however,
we denominate this affirmance a “new ground of rejection” under 37 C.F.R.
§ 41.50(b).

37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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; 37 C.F.R. § 41.50(b)

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