Ex Parte Beistle et al

Patent Trial and Appeal Board

Aug 14, 2018

13872825 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/872,825 04/29/2013
149749 7590 08/16/2018
ITW c/o MCANDREWS HELD & MALLOY
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Edward Gerard Beistle
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
62310US02 (61300-US) 5686
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/16/2018 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD GERARD BEISTLE,
MARKUS MICHAEL DANTINNE, and
SCOTT STEPHEN LIEBERT
Appeal2017-007522
Application 13/872,825
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1, 3-9, and 12-20.2 We have jurisdiction
under 35 U.S.C. § 6(b ).
1 According to Appellants, "[t]he real party in interest is Illinois Tool Works
Inc." Appeal Br. 2.
2 Despite the Examiner' statements to the contrary, Appellants canceled
claim 2 during prosecution of the application. See Answer 2; see Appeal
Br 2.
Appeal2017-007522
Application 13/872,825
We AFFIRM-IN-PART.
According to Appellants, the invention "relates ... to systems and
methods to improve the operability of welding systems." Spec. ,r 2.
Claims 1, 12, and 18 are the independent claims on appeal. Appeal Br.,
Claims App. Below, we reproduce claim 1 as illustrative of the appealed
claims.
1. A system, comprising:
a welding power supply unit configured to supply power
to a welding torch;
a remote device coupled between the welding torch and
the welding power supply unit via a weld cable and comprising
detection circuitry configured to detect a polarity of a welding
operation; and
control circuitry configured to determine if the polarity is
appropriate based on one or more welding parameters and to
adjust the polarity of the welding operation, wherein the welding
power supply unit comprises the control circuitry.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 3, 6-9, 12-14, and 16-20 under 35 U.S.C. § I03(a) as
unpatentable over Blankenship et al. (US 6,552,303 B 1, iss.
Apr. 22, 2003) ("Blankenship"), Rappl et al.
(US 2011/0073569 Al, pub. Mar. 31, 2011) ("Rappl"), and
Veik et al. (US 2008/0035621 Al, pub. Feb. 14, 2008)
("Veik"); and
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Application 13/872,825
II. Claims 4, 5, and 15 under 35 U.S.C. § I03(a) as unpatentable
over Blankenship, Rappl, Veik, and Schartner et al.
(US 2008/0296276 Al, pub. Dec. 4, 2008) ("Schartner").
ANALYSIS
Rejection I
Claims 1, 3, 6-9, 12-14, 16, and 17
As set forth above, claim 1 recites, in relevant part, "a remote device
coupled between the welding torch and the welding power supply unit via a
weld cable and comprising detection circuitry configured to detect a polarity
of a welding operation." Appeal Br., Claims App. ( emphasis added).
Appellants argue that the Examiner's rejection is in error because, among
other reasons, "[t]he cited references, taken alone or in hypothetical
combination, do not teach or suggest detection circuitry of a remote device
coupled between a welding torch and a welding power supply unit via a
weld cable." Id. at 7 ( original emphasis omitted, our emphasis added); see
also id. at 8 (Blankenship's "controller 400 ... is not coupled between ...
torch E and ... power supply 410 ... via a weld cable, as recited by
independent claim[] 1."). Based on our review, we find that the Examiner
does not support adequately any finding that the proposed combination of
references discloses or renders obvious coupling a remote device having
polarity-detection circuitry with a welding torch and welding power supply
unit, via a weld cable.
Specifically, in the Final Office Action, the Examiner does not
identify any particular component of any reference as disclosing the claimed
weld cable. Further, in response to Appellants' argument regarding the weld
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Application 13/872,825
cable, in the Answer, the Examiner only references that "Rappl clearly
shows ... pendant 48 being configured to supply welding power via ...
welding power cable 50 and 64 to the welding torch." The Examiner does
not provide a citation to Rappl to support the finding that either of the
identified components is a weld cable. Conversely, Rappl describes
component 50 as an "auxiliary conduit." See, e.g., Rappl ,r 33. It is not clear
that an "auxiliary conduit" is a weld cable. Further, Rappl describes
component 64 as an "extension cable." See, e.g., id. f 3 7. It is not clear that
an "extension cable" is a weld cable. Still further, it is not clear that, in
either the Final Office Action or the Answer, the Examiner finds that it
would have been obvious to use Rappl' s auxiliary conduit or extension cable
in the Examiner's proposed combination of references. For example, in the
section of the Answer in which the Examiner rejects claim 1, the Examiner
only appears to rely on Rappl to teach a remote display interface in a power
supply. See Answer 3; see also Final Action 3.
Thus, based on the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 1. We also do not sustain the Examiner's
obviousness rejection of independent claim 12, which includes a similar
recitation as that discussed above with respect to claim 1 (Appeal Br.,
Claims App.), and which the Examiner rejects with claim 1 (see, e.g.,
Answer 2-3). We further do not sustain the Examiner's rejection of
claims 3, 6-9, 12-14, 16, and 17 that depend from independent claims 1
and 12.
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Appeal2017-007522
Application 13/872,825
Claim 18
Although Appellants argue independent claim 18 with claims 1 and 12
(see, e.g., Appeal Br. 6), claim 18 differs in scope from claims 1 and 12.
Specifically, claim 18 recites, in its entirety,
18. A system, comprising:
detection circuitry of a portable remote device disposed at
a location remote from a welding power supply unit of a welding
operation and configured to detect a polarity of a welding
operation; and
control circuitry of the welding power supply unit
configured to communicate with the detection circuitry and to
determine if the polarity is appropriate based on one or more
welding parameters.
Id. at Claims App. We note that claim 18 does not recite a weld cable.
Appellants' main argument that is relevant to claim 18 is that in Blankenship
"controller 400 is not disposed at a location remote from a welding power
supply unit ... , as recited by independent claim 18." Id. at 8. Appellants'
argument is not persuasive, however.
We agree with the Examiner that Appellants' "[S]pecification does
not clearly define what is considered to be remote . . . . [The Specification]
state[s] that the power supply may be distant from the welding operation."
Answer 4--5 (citing Specification ,r 20). Thus, the Examiner reasonably
finds that "[t]he term remote [may be] considered to be a device [that] is
separate from the power supply." Id. at 5. Blankenship shows, in Figure 5,
for example, that "power supply 41 O" is separate and spaced apart from
"controller 400." Blankenship Fig. 5. In the absence of persuasive evidence
establishing that claim 18 requires something more than the arrangement
shown in Blankenship's Figure 5, we sustain the rejection.
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Application 13/872,825
Appellants' further arguments regarding claim 18 are that "the
remaining references cited by the examiner do not obviate these deficiencies
of Blankenship" (Appeal Br. 9), and that it is only through impermissible
hindsight that the Examiner proposes such a modification (id. at 11 ).
Inasmuch as we do not agree with Appellants that Blankenship fails to
disclose a portable remote device disposed at a location remote from a
welding power supply unit, these arguments are not persuasive.
Claims 19 and 20
Each of these claims, which depend from independent claim 18,
recites that the portable remote device is configured to be coupled between
the welding torch and the welding power supply unit via a weld cable,
similar to the recitations of claims 1 and 12. Appeal Br., Claims App.
Inasmuch as the Examiner does not establish that any reference or obvious
modification to any reference remedies the deficiency in claim 1 's rejection,
discussed supra, we do not sustain the obviousness rejection of claims 19
and 20.
Rejection II
Each of claims 4, 5, and 15 depends from independent claim 1, the
rejection of which we do not sustain for the reasons discussed above.
Inasmuch as the Examiner does not establish that Schartner remedies the
deficiency in claim 1 's rejection, we also do not sustain the rejection of
dependent claims 4, 5, and 15.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1, 3-
9, 12-17, 19, and 20.
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Application 13/872,825
We AFFIRM the Examiner's obviousness rejection of claim 18.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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