Ex Parte Ott

Patent Trial and Appeal Board

Nov 14, 2014

11625357 (P.T.A.B. Nov. 14, 2014)

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.
11/625,357 01/22/2007 Brian L. Ott 14544.60 (ITWO:0316-1) 8342
52145 7590 11/14/2014
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
11/14/2014 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 BRIAN L. OTT
____________

Appeal 2012-007804
Application 11/625,357
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant Brian L. Ott appeals under 35 U.S.C. § 134(a) from the
rejection of claims 1–20. App. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claim 1, reproduced below, illustrates the subject matter on appeal:
1. A welding system comprising:
a power source having a primary contactor and a
secondary contactor;
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Application 11/625,357

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a weld cable connecting the power source to a remote
device, the remote device operable in an ON mode, an OFF
mode, and a standby mode; and
a controller to regulate activation of the primary and the
secondary contactors such that a non-welding voltage is applied
from the power source to the remote device across the weld
cable when the remote device is in the standby mode.

PRIOR ART
The Examiner relies on the following evidence in rejecting the claims
that are the subject of this appeal:
Pratt
Chandler
Baum
Nitta

US 6,166,506
US 6,225,596 B1
US 6,653,597 B2
JP 2003-191075A
Dec. 26, 2000
May 1, 2001
Nov. 25, 2003
July 8, 2003
GROUNDS OF REJECTION
1. Claim 1 stands rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of
U.S. Patent No. 7,180,029. Ans. 4–5.
2. Claims 1–5, 7, and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nitta in view of Baum. Id. at 6.
3. Claims 6 and 13–20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nitta in view of Baum and Pratt. Id. at 8.
4. Claims 8 and 10–12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nitta in view of Baum and Chandler. Id. at 10.

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OPINION
Double Patenting Rejection
Appellant does not contest the Examiner’s rejection of claim 1 on the
ground of obviousness-type double patenting. Thus, Appellant has waived
any argument of error, and we summarily sustain the rejection. See In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (holding that the Board did not
err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when
the applicant failed to contest the rejection on appeal).

Obviousness Rejections
Claim 1 recites that the welding system includes a power source with
“a primary contactor and a secondary contactor” and “a controller to regulate
activation of the primary and the secondary contactors such that a non-
welding voltage is applied from the power source to the remote device
across the weld cable when the remote device is in the standby mode.”
Claim 9 also recites that the power source includes a primary contactor and a
secondary contactor and further recites that “the power source is configured
to supply the second power by closing the secondary contactor and opening
the primary contactor.” Claim 16, which is directed to a method of
operating a power source for welding, recites “providing an output less than
a welding-type output to the remote device by closing a primary contactor
and opening a secondary contactor of the power source.”
The Examiner finds that Nitta does not teach that the power source
has a primary contactor and a secondary contactor, nor does it disclose that
the power source is configured to supply a second power by closing the
secondary contactor and opening the primary contactor. Ans. 7. The
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Application 11/625,357

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Examiner finds that Baum teaches these features. Id. Each of the
obviousness rejections is premised on the Examiner’s determination that it
would have been obvious “to modify Nitta with contactors as taught [by]
Baum in order to energize the appropriate contactors.” Id. (citing Baum, col.
2, ll. 15–17).
Appellant argues that the reason the Examiner has articulated for the
proposed combination is conclusory and circular, insofar as it “says
essentially that contactors of Baum should be combined with Nitta so that
contactors can be energized. Because Nitta does not teach that contactors
are energized, there is no reason for Nitta to energize contactors.” App. Br.
11; see also Reply Br. 3. The Examiner responds that “the combination of
Nitta controlling the power supply thru the stages of welding process and
Baum having multiple contactors switches would have yielded predic[t]able
results and resulted in an improved system.” Ans. 15.
As Appellant correctly notes, a conclusory statement is insufficient to
sustain an obviousness rejection. App. Br. 6 (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). The Federal Circuit has made clear that “there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988 (cited
with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
We agree with Appellant that in this case, the Examiner has failed to
articulate a reason for the proposed combination supported by a rational
underpinning. The Examiner’s stated reason to modify Nitta to include
Baum’s contactors is “to energize the appropriate contactors.” Ans. 7.
Modifying Nitta in order to energize the appropriate contactors lacks a
rational underpinning because the Examiner finds that “Nitta fails to teach
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having a primary contactor and a secondary contactor.” Id. The Examiner’s
statement that the proposed modification “would have yielded predic[t]able
results and resulted in an improved system” (Ans. 15) does not remedy the
deficiency because the Examiner has not provided any explanation of why
the proposed modification would be considered an improvement.
For the foregoing reasons, we do not sustain the Examiner’s
obviousness rejections of claims 1–20.

DECISION
We AFFIRM the rejection of claim 1 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of
U.S. Patent No. 7,180,029.
We REVERSE the rejection of claims 1–5, 7, and 9 under 35 U.S.C.
§ 103 as being unpatentable over Nitta in view of Baum.
We REVERSE the rejection of claims claims 6 and 13–20 under 35
U.S.C. § 103 as being unpatentable over Nitta in view of Baum and Pratt.
We REVERSE the rejection of claims claims 8 and 10–12 under 35
U.S.C. § 103 as being unpatentable over Nitta in view of Baum and
Chandler.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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