Ex Parte Schneider

Board of Patent Appeals and Interferences

Mar 19, 2012

10905418 (B.P.A.I. Mar. 19, 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.
10/905,418 01/03/2005 Joseph C. Schneider 15051 (ITWO:0321) 2418
52145 7590 03/20/2012
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
VAN, QUANG T
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
03/20/2012 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 JOSEPH C. SCHNEIDER
________________

Appeal 2009-012779
Application 10/905,418
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-13 and 21-27. Claims 14-20 are canceled. 3
We have jurisdiction under 35 U.S.C. § 6(b). 4
We REVERSE.5

1 The Appellant identifies the real party in interest as Illinois Tool
Works Inc.
Appeal No. 2009-012779
Application No. 10/905,418

2
The Examiner rejects: 1
claims 7-13 under 35 U.S.C. § 112, first paragraph, as 2
failing to comply with the written description requirement; 3
claims 1-13 and 21-27 under § 112, second paragraph, as 4
being indefinite;2 5
claims 1, 2, 4-13, 21-25 and 27 under 35 U.S.C. § 102(b) 6
as being anticipated by Borowy ’543 (US 6,133,543, issued 7
Oct. 17, 2000); 8
claims 1, 2, 4-6, 21-23, 25 and 27 under § 102(b) as 9
being anticipated by Borowy ’617 (US 5,620,617, issued Apr. 10
15, 1997); 11
claims 3 and 26 under 35 U.S.C. § 103(a) as being 12
unpatentable over Borowy ’543 and Toth (US 5,630,954, issued 13
May 20, 1997); 14
claim 3 under § 103(a) as being unpatentable over 15
Borowy ’617 and Toth; and 16
claims 7-13, 24 and 26 under 35 U.S.C. § 103(a) as being 17
unpatentable over Borowy ’617 and Kohsaka (US 5,043,554, 18
issued Aug. 27, 1991). 19
Claims 1, 7 and 21 are independent claims. Claim 21 is illustrative of 20
the claims on appeal: 21
21. A plasma cutting system comprising: 22
a plasma torch; and 23

2 The Examiner in the Answer states that claims “1-27 stand rejected
under 35 U.S.C. 112, second paragraph, as being indefinite . . . .” (Ans. 4).
Since claims 14-20 are cancelled, we address only the rejections of claims 1-
13 and 21-27 under § 112.
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Application No. 10/905,418

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a controller configured to: 1
monitor a cutting arc duration 2
of the plasma torch; 3
cause the cutting arc to convert 4
to a pilot arc if the cutting arc 5
duration does not exceed a selected 6
duration; and 7
allow the cutting arc to collapse 8
if the duration of the cutting arc is at 9
least the selected duration. 10
11
The Rejection of Claims 7-13 under § 112, First Paragraph (Written 12
Description) 13
The Examiner finds that the Specification fails to provide a written 14
description of a plasma cutting system including “software means for non-15
mechanically changing operation of the plasma torch between the first 16
cutting mode and the second cutting mode and for operating the plasma 17
torch in the second cutting mode for a remainder of a touch trigger 18
depression if a maintaining of the cutting arc exceeds a pre-determined 19
temporal threshold” as recited in claim 7. (Ans. 3). The Appellant correctly 20
identifies paragraph 38 and Figure 3 of the Specification as describing this 21
limitation. (See Br. 4). Although the Examiner correctly finds that 22
paragraph 38 does not use the term “pre-determined temporal threshold” 23
(Ans. 8-9), the Specification need not describe a claim limitation in haec 24
verba to meet the written description requirement. Ariad Pharmas., Inc. v. 25
Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). We do not sustain 26
the rejection of claims 7-13 under § 112, first paragraph, as failing to comply 27
with the written description requirement. 28
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Application No. 10/905,418

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The Rejection of Claims 1-13and 21-27 under § 112, Second Paragraph 1
(Indefiniteness) 2
The Examiner rejects each of the independent claims as being 3
indefinite, concluding that each independent claim fails to describe how its 4
claimed device behaves if a recited condition is not met. (Ans. 4). The 5
Examiner does not identify any persuasive evidence that the Appellant 6
omitted any limitations which the Appellant regarded as being critical to the 7
claimed subject matter. 8
A claim is not indefinite if “one skilled in the art would understand 9
the bounds of the claim when read in light of the specification.” Exxon 10
Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 11
2001). Furthermore, the principle function of claims “is to provide notice of 12
the boundaries of the right to exclude and to define limits; it is not to 13
describe the invention.” Ariad Pharmas. at 1347. The failure of claims 1, 7 14
and 21 to describe how their claimed devices might behave under all 15
possible conditions does not imply that one of ordinary skill would not 16
understand the bounds of what claims 1, 7 and 21 do claim. 17
The independent claims as written are broader than those claims might 18
be were the claims limited as the Examiner suggests. Breadth itself does not 19
imply indefiniteness, however. In re Miller, 441 F.2d 689, 693 (CCPA 20
1971). Since the Examiner has not adequately explained why one of 21
ordinary skill in the art as of the filing would not have been able to 22
understand the bounds of the claims as currently written, we do not sustain 23
the rejection of claims 1-13 and 21-27 under § 112, second paragraph, as 24
being indefinite. 25
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Rejection of Claims 1, 2, 4-6, 24, 25 and 27 under § 102(b) as Being 1
Anticipated by Borowy ’543 or Borowy ’617 2
Rejection of Claims 3 and 26 under § 103(a) as Being Unpatentable over 3
Borowy ’543 and Toth 4
Rejection of Claim 3 under § 103(a) as Being Unpatentable over Borowy 5
’617 and Toth 6
Rejection of Claims 24 and 26 under § 103(a) as Being Unpatentable over 7
Borowy '617 and Kohsaka 8
Claim 1 recites a welding-type system. The system includes a 9
controller “configured to:” 10
[a] automatically switch operation of the 11
plasma torch between an expanded metal mode 12
and a non-expanded metal mode upon generation 13
of the cutting arc; and 14
[b] operate the plasma torch in a non-15
expanded metal mode for a duration of a touch 16
trigger actuation if the cutting arc is present over a 17
pre-defined time period after generation of the 18
cutting arc. 19
The Examiner correctly interprets the term “configured to” as recited 20
in claim 1 as being sufficiently broad to encompass any controller capable of 21
automatically switching operation of the plasma torch and operating the 22
plasma torch as recited in the claim. (See Ans. 6). A claim reciting an 23
apparatus may be anticipated by a reference disclosing a device which 24
includes each and every structural limitation in the claim and which is 25
capable of performing each and every functional limitation in the claim. 26
E.g., In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997) (upholding 27
the Board’s affirmance of a rejection under section 102(b) on the basis of a 28
finding that a device disclosed in a prior art reference was capable of 29
performing a function which the appellant alleged to distinguish the 30
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Application No. 10/905,418

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appellant’s apparatus from the device). To require that an element of an 1
apparatus recited as being “configured to” perform some function be 2
“constructed, arranged or set up” to perform the function would define the 3
element improperly in terms of the state of mind of a designer or builder of a 4
covered apparatus (that is, in terms of the use to which the designer or 5
builder intended to put the element) rather than in terms of the structure of 6
the element itself. 7
Furthermore, claim 1 does not limit how the plasma torch might be 8
operated if the cutting arc were not present over a pre-defined period after 9
generation of the cutting arc. (See Ans. 4). The limitation identified as 10
limitation [b] above may be satisfied if the controller is capable of operating 11
the plasma torch in a non-expanded metal mode for a duration of a touch 12
trigger actuation even if the cutting arc were not present over a pre-defined 13
time period after generation of the cutting arc, so long as the controller also 14
was capable of operating the plasma torch in a non-expanded metal mode for 15
a duration of a touch trigger actuation if the cutting arc were present over the 16
pre-defined time. In other words, limitation [b] encompasses a system 17
including a controller capable of operating the plasma torch in a non-18
expanded metal mode for a duration of a touch trigger actuation regardless 19
whether the cutting arc is present over a pre-defined time period or not. 20
That said, the Examiner finds that column 10, line 56 through column 21
11, line 7 of Borowy ’543 and column 6, lines 29-62 of Borowy ’617 22
disclose automatically switching operation of the plasma torch between an 23
expanded metal mode and a non-expanded metal mode upon generation of 24
the cutting arc; and operating the plasma torch in a non-expanded metal 25
mode for a duration of a touch trigger actuation if the cutting arc is present 26
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over a pre-defined time period after generation of the cutting arc. (Ans. 5). 1
Each of these passages describes a controller capable of alternating between 2
operation with a cutting or transfer arc and operation with a pilot arc alone. 3
Claim 1 recites a controller “configured to . . . operate the plasma 4
torch in a non-expanded metal mode for a duration of a touch trigger 5
actuation if the cutting arc is present over a pre-defined time period after 6
generation of the cutting arc.” This recitation indicates that the duration of 7
the cutting arc is not necessarily the same as the duration of the non-8
expanded metal mode, thereby implying that the the non-expanded metal 9
mode does not necessarily coincide with the presence of the cutting arc. See 10
Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404-05 (Fed. Cir. 11
1996)(construing separate claim elements as reciting separate structures). 12
For similar reasons, the absence of the cutting arc (that is, operation with a 13
pilot arc alone) does not correspond to the recited non-expanded metal 14
mode. The Examiner has not identified clearly what feature described by 15
Borowy ’543 or Borowy ’617 corresponds to the non-expanded metal mode. 16
We do not sustain the rejection of claims 1, 2, 4-6, 24, 25 and 27 under § 17
102(b) as being anticipated by Borowy ’543; or the rejection of claims 1, 2, 18
4-6, 25 and 27 under § 102(b) as being anticipated by Borowy ’617. 19
The Examiner cites Toth as teaching positioning a controller in either 20
the plasma torch or the power source. (Ans. 6). The Examiner does not 21
persuasively explain how this teaching remedies the deficiencies in the 22
teachings of Borowy ’543 or Borowy’617 for purposes of the rejections of 23
claims 3 and 26 under § 103(a). We do not sustain the rejection of claim 3 24
under § 103(a) as being unpatentable over Borowy ’543 and Toth; or the 25
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rejection of claim 3 under § 103(a) as being unpatentable over Borowy ’617 1
and Toth. 2
The Examiner cites Kohsaka as teaching a “controller including 3
software control means.” (Ans. 7). The Examiner does not persuasively 4
explain how the teachings of Kohsaka might remedy the deficiencies in the 5
disclosure of Borowy’617. We do not sustain the rejection of claims 24 and 6
26 under § 103(a) as being unpatentable over Borowy ’617 and Kohsaka. 7
8
Rejection of Claims 7-13 under § 103(a) as Being Unpatentable over 9
Borowy '617 and Kohsaka 10
Claim 7 recites a plasma cutting system. The system includes: 11
software means for non-mechanically changing 12
operation of the plasma torch between the first 13
cutting mode and the second cutting mode and for 14
operating the plasma torch in the second cutting 15
mode for a remainder of a torch trigger depression 16
if a maintaining of the cutting arc exceeds a pre-17
determined temporal threshold. 18
Regardless whether the term “software control means” is interpreted under 19
35 U.S.C. § 112, sixth paragraph, any structure corresponding to the 20
software means must be at least capable of performing the identical function 21
recited in the claim. See Schreiber; Valmont Indus., Inc. v. Reinke Mfg. Co., 22
983 F.2d 1039, 1042 (Fed. Cir. 1993)(when determining whether an accused 23
device includes a limitation interpreted under § 112, sixth paragraph, “[t]he 24
accused device must also perform the identical function as specified in the 25
claims.”). 26
The Examiner finds that “Borowy ’617 discloses substantially all 27
features of the [subject matter of claim 7] except a controller including 28
software control means.” (Ans. 7). Presumably, the Examiner relies on 29
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column 6, lines 24-62 as describing the functions to be performed by the 1
software control means. The passage describes a controller capable of 2
alternating between operation with a cutting or transfer arc and operation 3
with a pilot arc alone. Mere operation with a cutting arc does not correspond 4
to the second cutting mode, since claim 7 implies that the second cutting 5
mode does not coincide necessarily with the maintaining of the cutting arc. 6
Likewise, mere operation with a pilot arc alone does not correspond to the 7
second cutting mode. The Examiner has not identified clearly what feature 8
described by Borowy ’617 does correspond to the second cutting mode. 9
The Examiner does not persuasively explain how the teachings of 10
Kohsaka might remedy the deficiencies in the disclosure of Borowy’617. 11
We do not sustain the rejection of claims 7-13 under § 103(a) as being 12
unpatentable over Borowy ’617 and Kohsaka. 13
14
Rejection of Claims 21-23 under § 102(b) as Being Anticipated by Borowy 15
'543 or Borowy ’617 16
Claim 21 recites a plasma cutting system. The system includes a 17
controller “configured to . . . monitor a cutting arc duration of the plasma 18
torch.” Both Borowy ’543 and Borowy ’617 include timing diagrams 19
schematically depicting control cycles for the formation of pilot and cutting 20
arcs for plasma torches controlled by their respective controls. (See Borowy 21
’543, figs. 4 and 6; Borowy ’617, fig. 5). Nevertheless, the Appellant is 22
correct in pointing out that neither Borowy ’543 nor Borowy ’617 describes 23
monitoring a cutting arc duration of the plasma torch. (See Br. 9). 24
For example, Borowy ’543 describes an embodiment which converts a 25
cutting or transfer arc to a pilot arc when a controller determines that the 26
power supply of the plasma torch has reached its limit of available output 27
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voltage for a selected operating current and standoff distance. (Borowy 1
’543, col. 11, ll. 17-22). The Examiner does not identify a sufficient 2
relationship between these quantities and cutting arc duration to imply that 3
monitoring these quantities effectively monitors the cutting arc duration. 4
Neither does the Examiner provide a sound basis for belief that either 5
Borowy ’543 or Borowy ’617 inherently monitors the cutting arc duration. 6
(Contra Ans. 11-12 and 13-14). 7
8
DECISION 9
We REVERSE the Examiner’s rejecting claims 1-13 and 21-27. 10
11
REVERSED 12
13
14
15
16
Klh 17