ILLINOIS TOOL WORKS INC.

Patent Trials and Appeals Board

Sep 23, 2020

14536140 - (D) (P.T.A.B. Sep. 23, 2020)

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.
14/536,140 11/07/2014 Quinn W. Schartner ITW 65820 7024
23721 7590 09/23/2020
GEORGE R. CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/23/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gcorrigan@new.rr.com
george.corrigan@corrigan.pro
kari.brekke@corrigan.pro
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QUINN W. SCHARTNER, BERNARD J. VOGEL, and
ANDREW S. NELSON
____________

Appeal 2019-006111
Application 14/536,1401
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 13–25, which constitute all the claims pending in the
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Illinois Tool Works
Inc.” Appeal Br. 3.
2 Appellant indicates that claims 1–12 are withdrawn from consideration. Id.
at 5.
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CLAIMED INVENTION
The disclosure “relates to welding type power supplies used for air
carbon arc cutting and providing welding type power for air carbon arc
cutting.” Spec. ¶ 1.
Apparatus claims 13, 18, and 20 are the independent claims on appeal
and reproduced below.
13. A welding-type power supply system comprising:
a user mode selector, including an air carbon arc cutting (CAC-
A) mode;
a power circuit, disposed to receive an input power and provide
CAC-A power, and having a control input; and
a controller, having a control output connected to the control
input, wherein the controller has a CAC-A control module responsive
to the CAC-A mode, and having a feedback input indicative of the
output current and indicative of the output voltage.

18. A welding-type power supply comprising:
a user mode selector, including an air carbon arc cutting
(CAC-A) mode;
a power circuit, disposed to receive an input power and provide
CAC-A power, and having a control input; and
a controller, having a control output connected to the control
input, wherein the controller has a CAC-A control module responsive
to the CAC-A mode, and having a feedback input indicative of the
output current and indicative of the output voltage, wherein the CAC-
A control module includes a CAC-A start module having a CAC-A
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hot start current that is greater than a stick hot start current, a CAC-A
hot start time, a CAC-A hot start delay time, responsive to the
feedback input, a CAC-A dig module having a dig threshold that is
greater than a stick dig threshold, and having a dig slope, wherein the
CAC-A start module includes a weld start module having a CAC-A
start current time and a CAC-A slew rate, and responsive to the
feedback input.

20. A welding-type power supply for air carbon arc cutting
(CAC-A), comprising:
means for providing welding-type power;
user select means for selecting a plurality of modes, including a
CAC-A mode;
control means, for controlling the means for providing welding-
type power, wherein the control means is responsive to the user select
means.
REJECTIONS
Claims 13–25 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 13–25 stand rejected under 35 U.S.C. § 112(b) as indefinite.
Claim 20 stands rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Radtke et al. (US 2011/0114036 A1, pub. May 19, 2011).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as being
obvious Radtke and Leisner et al. (US 6,603,097 B2, iss. Aug. 5, 2003).
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Claim 15 stands rejected under 35 U.S.C. § 103 as being obvious over
Radtke, Leisner, and Laabs et al. (US 2008/0047942 A1, pub. Feb. 28,
2008).
Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as being
obvious over Radtke, Leisner, and Fosbinder (US 2006/0016791 A1, pub.
Jan. 26, 2006).
Claim 18 stands rejected under 35 U.S.C. § 103 as being obvious over
Radtke, Leisner, Fosbinder, and Harris (US 2009/0071949 A1, pub. Mar. 19,
2009).
Claim 19 stands rejected under 35 U.S.C. § 103 as being obvious over
Radtke, Leisner, Fosbinder, Harris, and Geissler (US 5,783,799, iss. July 21,
1998).
Claim 21 stands rejected under 35 U.S.C. § 103 as being obvious over
Radtke and Geissler.
Claim 22 stands rejected under 35 U.S.C. § 103 as being obvious over
Radtke and Laabs.
Claims 23–25 stand rejected under 35 U.S.C. § 103 as being obvious
over Radtke, Laabs, and Harris.

OPINION
Written Description
The Examiner rejects claims 13–25 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 10–
11; Ans. 3. Section 112(a) requires that the specification contain a written
description of the claimed invention. “[T]he hallmark of written description
is disclosure.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
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(Fed. Cir. 2010) (en banc). The written description requirement is met when
the specification “conveys to those skilled in the art that the inventor had
possession of” and “actually invented” the claimed subject matter. Id.
In support of the rejection, the Examiner maintains:
Claim limitations “CAC-A control module”, “CAC-A start
Module”, “CAC-A dig module”, “CAC-A increased hot start
module”, “weld start module”, “droop disable module”, “means
for providing welding type power”, “user select means”,
“control means for controlling the means for providing welding
type power”, “means for disabling stick droop”, “means for
setting a CAC-A dig slope”, “means for setting a CAC-A hot
start time”, “means for setting a CAC-A hot start delay time”,
“means for increasing the CAC-A hot start time”, “means for a
CAC-A start current”, do not have corresponding structure for
any of the claim limitations interpreted under 112 sixth
paragraph are not disclosed in the specification in a way for one
skilled in the art to understand what structure will perform the
recited function.
Ans. 3.
Appellant’s description as filed is presumed to be adequate, unless or
until sufficient evidence or reasoning to the contrary has been presented by
the Examiner to rebut the presumption. See, e.g., In re Marzocchi, 439 F.2d
220, 224 (CCPA 1971). As such, the Examiner has the initial burden of
presenting by a preponderance of evidence why a person skilled in the art
would not recognize in Appellant’s disclosure a description of the invention
defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
This initial burden has not been met because the Examiner’s mere assertion
as to the lack of corresponding structure for means-plus-function claim
terms is the basis for an indefiniteness rejection, which we address below,
rather than written description. See, e.g., In re Dossel, 115 F.3d 942, 946
(Fed. Cir. 1997) (“Failure to describe adequately the necessary structure,
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material, or acts in the written description means that the drafter has failed to
comply with the mandate of § 112 ¶ 2 . . . the mandate that all claims must
particularly point out and distinctly claim the subject matter which the
applicant regards as his invention.”).
Accordingly, we do not sustain the rejection under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement.
Indefiniteness
Claims 13–19
We determine the rejection of claims 13–19 under 35 U.S.C. § 112(b)
as indefinite is proper because independent claims 13 and 18 recite means-
plus-function limitations that lack corresponding structure in Appellant’s
written description. Final Act. 11–12; Ans. 3–4.
The relevant portion of claim 13 recites “a controller, having a control
output connected to the control input, wherein the controller has a CAC-A
control module responsive to the CAC-A mode.” See claim 13 supra. We
acknowledge that omitting the term “means” in a claim element creates a
rebuttable presumption that § 112(f) does not apply; however, such an
omission does not automatically prevent that element from being construed
as a means-plus-function element. See Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Section 112(f) will apply if
the claim term fails to recite sufficiently definite structure, or else recites
function without reciting sufficient structure for performing that function.
See id. at 1349.
We determine that the term “controller” is merely a description for
software or hardware, recited as having a pair of connected “control[s]” that
are likewise recited solely in terms of their function––i.e., input and output.
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The claimed “controller” is further recited as having a “control module” that
functions as being responsive to a mode of a welding-type power supply that
is dedicated to air carbon arc cutting. See Spec. ¶ 6. The terms “controller,”
“control,” and “module” are merely nonce words or “non-structural generic
placeholders” that are equivalent to the term “means” because they fail to
connote sufficiently definite structure and, in the context of claim 13, invoke
§ 112(f). Cf. id. at 1350 (discussing similar nonce words, and interpreting
the term “distributed learning control module” under § 112(f) because it did
not recite sufficiently definite structure); Aristocrat Techs. Australia Pty Ltd.
v. Multimedia Games, Inc., 266 F. App’x 942, 945–46 (Fed. Cir. 2008)
(construing “control means” as a means-plus-function limitation); Ergo
Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363–64 (Fed. Cir.
2012) (“The recitation of ‘control device’ provides no more structure than
the term ‘control means’ itself, rather it merely replaces the word ‘means’
with the generic term ‘device.’”); Fiber, LLC v. Ciena Corp., 792 Fed.
App’x 789, 2019 WL 6216149 (Fed. Cir. 2019) (unpublished) (construing
the term “control” as a means-plus-function limitation).
In fact, Appellant acknowledges that “[m]odule is explicitly defined in
the specification as ‘software and hardware that cooperate to perform a
given function,’” which are “part of another structure–controller 104.”
Appeal Br. 21 (citing Spec. ¶¶ 44–45). Appellant quotes various parts of the
Specification in which these terms are defined by their function. See id. at
21–22. For example, Appellant asserts that “CAC-A dig module was
explicitly defined as a control module that causes a welding-type power
supply to provide a dig output below a dig threshold, when in a CAC-A
mode.” Id. at 21 (citing Spec. ¶ 45). According to Appellant, “specific
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hardware structure was [sic] is described for all of these modules – analog
circuitry, a digital controller with discrete elements, and DSPs [and g]iven
the specific structure of each module these rejections should be overturned.”
Id. at 22. But describing these software modules by their function and
ascribing a generic digital controller or computer as the hardware structure
that performs those functions is not sufficient under 35 U.S.C. § 112(f)
because the specification must disclose an algorithm for performing the
claimed specific computer function, or else the claim is indefinite
under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d
1359, 1367 (Fed. Cir. 2008).
The recited controller, controls, and module are analogous to the
claimed processors that expanded panels of this Board held were non-
structural generic placeholders that require means-plus-function treatment in
three instructive informative opinions regarding functional claiming. See Ex
parte Lakkala, No. 2011-001526 (PTAB Mar. 13, 2013) (expanded panel)
(informative); Ex parte Erol, No. 2011-001143 (PTAB Mar. 13, 2013)
(expanded panel) (informative); Ex parte Smith, No. 2012-007631 (PTAB
Mar. 14, 2013) (expanded panel) (informative)). “The standard is whether
the words of the claim are understood by persons of ordinary skill in the art
to have a sufficiently definite meaning as the name for structure.”
Williamson, 792 F.3d at 1349; see also Greenberg v. Ethicon Endo-Surgery,
Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). Because the claim is devoid of
any language that provides the requisite structure, we conclude that these
limitations are means-plus-function limitations. See Media Rights Techs.,
Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015).
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Because the claim terms are means-plus-function terms as described
in § 112(f), we must construe these terms by identifying the corresponding
structure, material, or acts described in the specification to which each term
will be limited. Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097
(Fed. Cir. 2014). As such, we next determine whether Appellant’s
Specification contains corresponding structure for these limitations. The
corresponding structure, material, or acts may be disclosed in the original
drawings, figures, tables, or sequence listing. However, the corresponding
structure, material, or acts cannot include any structure, material, or acts
disclosed only in the material incorporated by reference or a prior art
reference. See, e.g., Pressure Prods. Med. Supplies, Inc. v. Greatbatch
Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010); Atmel Corp. v. Info. Storage
Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999).
“In cases involving a computer-implemented invention in which the
inventor has invoked means-plus-function claiming, [the Federal Circuit] has
consistently required that the structure disclosed in the specification be more
than simply a general purpose computer or microprocessor.” EON Corp. IP
Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015)
(quotation omitted). Thus, an algorithm is required to provide sufficient
structure unless the function can be performed by any general purpose
computer with no special programming. Id.
Here, it is clear from a review of the Specification in the context of
the pertinent art to which the claims are directed that any general purpose
computer with no special programming cannot implement instructions for air
carbon arc cutting. The Abstract of the Specification indicates: “Start and
restrike algorithms can be used that are specifically for CAC-A” (air carbon arc
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cutting). Therefore, this application must disclose enough of an algorithm to
provide the requisite structure––a disclosure that can be expressed in any
understandable terms (e.g., a mathematical formula, in prose, or as a
flowchart). See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1341
(Fed. Cir. 2008); see also Aristocrat Techs. Australia Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
In support of the claimed subject matter Appellant cites
paragraphs 42–46 and Figures 1–2 of the Specification. Appeal Br. 7–8.
Paragraph 42 of the Specification discloses that “[c]ontroller 104 is
preferably a digital pulse width controller, such as that described in U.S. Pat.
No. 8,455,794. Controller 104 may also be such as that described in US-2014-
0021180-A1. Alternatives provide for an analog controller, a digital controller
with discrete elements, a controller using DSPs, and a controller using other
circuitry.” “Simply mentioning prior art references in a patent does not
suffice as a specification description to give the patentee outright claim to all
of the structures disclosed in those references.” Pressure Prods., 599 F.3d
at 1317.
Paragraph 44 discloses that “controller 105 implements a number of
software modules,” and paragraphs 45–46 provide a laundry list of modules
and their functions. The drawings of Figures 1 and 2 do not impart any
structural detail. Appellant’s Specification does mention the use of
algorithms at various portions of the Specification without disclosing the
algorithm itself. See e.g., Spec. ¶ 7 (discloses that a welding-type power
supply that includes a CAC-A mode will include a start algorithm that is
suitable for CAC-A.); ¶ 37 (“If current is detected within a CAC-A delay
time of an outage, the algorithm determines it is restrike and transitions to
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the CAC-A weld start state.”). The Specification provides no flowcharts or
mathematical formulas. And we do not find, nor does Appellant direct us to
any, algorithm with sufficient particularity to perform the recited functions.
Apart from merely indicating what the controller and modules do, the
Specification does not explain how it does it, let alone describe the
underlying algorithm to achieve that result.
Therefore, these limitations in independent claim 13, and similarly in
independent claim 18, lack corresponding structure and are rendered
indefinite under 35 U.S.C. § 112(b). See In re Donaldson, 16 F.3d 1189,
1195 (Fed. Cir. 1994) (en banc). Accordingly, we are not persuaded that the
Examiner erred in rejecting claim 13 and 18, and dependent claims 14–17
and 19, which are not argued separately, as indefinite.
Claims 20–25
We reach the same conclusion as to system claims 20–25, which
employ means-plus-function language in the claims and do not satisfy the
requirement of disclosing the particular structure for performing
the function of each means-plus-function limitation. In the briefs, Appellant
does not dispute the rejection of claims 20–25 as indefinite for lacking
corresponding structure. See Appeal Br. 20–22 (Section VII B 1: contesting
only claims 13–19 under § 112(b)). Accordingly, we summarily sustain the
rejection of claims 20–25 as indefinite under 35 U.S.C. § 112(b).
Prior Art Rejections
We do not reach the merits of the §§ 102(a)(1) and 103 rejections of
claims 13–25 because without a discernable claim construction, an analysis
of the claims under the prior art cannot be performed. Enzo Biochem, Inc. v.
Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“[A] claim cannot be
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both indefinite and anticipated.”). Before a proper review of those rejections
can be made, the subject matter encompassed by the claims on appeal must
be reasonably understood without resort to speculation. Because the claims
fail to satisfy the requirements under 35 U.S.C. § 112(b), we are constrained
to reverse, pro forma, the Examiner’s prior art rejections as to claims 13–25.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language).
It should be understood that our decision to reverse the rejections of
these claims is based solely on the indefiniteness of the claims, and does not
reflect on the merits of the underlying rejections.

CONCLUSION
The rejection of claims 13–25 under 35 U.S.C. § 112(a) is reversed.
The rejection of claims 13–25 under 35 U.S.C. § 112(b) is affirmed.
The rejections of claims 13–25 under 35 U.S.C. §§ 102(a)(1) and 103
are reversed pro forma.
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Decision summary:
Claims
Rejected
35 U.S.C.
§
References(s)/Basis Affirmed Reversed
13–25 112(a) Written Description 13–25
13–25 112(b) Indefiniteness 13–25
20 102(a)(1) Radtke 20
13, 14 103 Radtke, Leisner 13, 14
15 103 Radtke, Leisner,
Laabs
15
16, 17 103 Radtke, Leisner,
Fosbinder
16, 17
18 103 Radtke, Leisner,
Fosbinder, Harris
18
19 103 Radtke, Leisner,
Fosbinder, Harris,
Geissler
19
21 103 Radtke, Geissler 21
22 103 Radtke, Laabs 22
23–25 103 Radtke, Laabs,
Harris
23–25
Overall
Outcome
13–25

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