ILLINOIS TOOL WORKS INC.

Patent Trials and Appeals Board

May 17, 2021

2020005030 (P.T.A.B. May. 17, 2021)

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.
14/489,227 09/17/2014 Bryan Dustin Marschke 62444US01 (65750-US) 5424
149749 7590 05/17/2021
ITW c/o MCANDREWS HELD & MALLOY
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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 BRYAN DUSTIN MARSCHKE, AMANDA JEAN D’ARCY, and
NATHAN GERALD LEITERITZ
____________

Appeal 2020-005030
Application 14/489,227
Technology Center 3700
____________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
BRETT C. MARTIN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Mar. 6, 2019, hereinafter “Final
Act.”) rejecting claims 1, 3–8, 10, 12–17, and 19–24.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Illinois Tool Works Inc. is identified as the real party in
interest in Appellant’s Appeal Brief (filed Jan. 30, 2020, hereinafter “Appeal
Br.”). Appeal Br. 1.
2 Claims 2, 9, 11, and 18 are canceled. Appeal Br., Claims App. A-1, A-2,
A-4.
Appeal 2020-005030
Application 14/489,227

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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to “methods and systems for controlling
electrode transfer in pulsed spray gas metal arc welding (GMAW-P)
processes.” Spec., para. 1.
Claims 1, 10, and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A welding system, comprising:
a power source configured to generate welding
power and deliver the welding power to a welding torch,
wherein the welding torch is coupled to a negative output
terminal of the power source;
a welding wire feeder configured to advance a
metal cored electrode into the welding torch at a rate of
advancement; and
control circuitry configured to implement a direct
current (DC) electrode negative (EN) pulse welding
process comprising current-closed loop peak phase, a
generally parabolic EN current-closed loop stabilization
phase following the peak phase, and a current-closed
loop return phase from the stabilization phase to a
background power level, wherein the stabilization phase
comprises a down ramp of current defined by a current-
per-unit-time-squared relationship.

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Application 14/489,227

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REJECTIONS

I. The Examiner rejects claims 1, 3–8, 10, 12–14, 16, and 21–23
under 35 U.S.C. § 103 as being unpatentable over Daniel,3
Peters ’104,4 and Peters ’527.5
II. The Examiner rejects claim 15 under 35 U.S.C. § 103 as being
unpatentable over Daniel, Peters ’104, Peters ’527, and Henry.6
III. The Examiner rejects claims 17, 19, and 20 under 35 U.S.C.
§ 103 as being unpatentable over Adams7 or Ulrich,8 Daniel,
Peters ’104, and Peters ’527.
IV. The Examiner rejects claim 24 under 35 U.S.C. § 103 as being
unpatentable over Daniel, Peters ’104, Peters ’527, and Baker9
or Uezono.10

ANALYSIS
Rejection I
The Examiner finds that Daniel discloses a peak current phase 213–
215, a stabilization phase 215–217, and a return phase 217-211 to a
background power level. Final Act. 3 (citing Daniel, Fig. 2B). The
Examiner further finds that Peters ’104 discloses “a return phase (106, 108,

3 Daniel et al., US 2014/0263237 Al, published Sept. 18, 2014.
4 Peters et al., US 2010/0176104 Al, published July 15, 2010.
5 Peters et al., US 2011/0108527 Al, published May 12, 2011.
6 Henry et al., US 2014/0263241 Al, published Sept. 18, 2014.
7 Adams et al., US 2015/0105898 Al, published Apr. 16, 2015.
8 Ulrich et al., US 6,707,001 Bl, issued Mar.16, 2004.
9 Baker, US 6,015,964, issued Jan.18, 2000.
10 Uezono et al., US 2007/0102407 Al, published May 10, 2007.
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Application 14/489,227

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110) to a background return phase (104).” Id.; see also Peters ’104, Fig. 2.
Furthermore, the Examiner finds that Peters ’527 discloses “a return phase to
background phase (42) wherein a transition is present between the
stabilization phase and the return phase.” Id. at 4 (citing Peters ’527, Fig.
2A), 9 (“[T]he return phase, which is return to background power level, is
shown by the background level/phase 42 as illustrated in Figure 2A of Peters
’527.”).
Appellant first argues that Daniel does not disclose “a current-closed
loop return phase from the stabilization phase to a background power level”
because “data points 217-211 . . . are the background current level rather
than a return phase from a stabilization phase to a background power level.”
Appeal Br. 7 (emphasis omitted). Appellant further contends that Peters
’104 likewise fails to disclose a return phase, as called for by each of
independent claims 1 and 10, as “Peters ’104 has no return phase from the
allegedly ‘generally parabolic stabilization phase’ to the background level
104.” Id. at 8 (citing Peters ’104, Fig. 2). According to Appellant, “the
[E]xaminer relies on the actual background phase itself as the ‘return
phase.’” Id. Finally, in regards to Peters ’527, Appellant contends that
“Peters ’527 does not distinguish the background phase 42 from a return
phase,” and, thus, “the background phase is ‘deemed’ to include both the
background phase and the return phase.” Id. at 9. In particular, Appellant
notes “[t]he rear flank 52 of Peters ’527 transitions completely to the
background level 42.” Id. (citing Peters ’527, para. 25).
In response, the Examiner merely reiterates that in Daniel “the return
to [the] background phase follow[s] . . . data points 217-211.” Examiner’s
Answer (dated Apr. 23, 2020, hereinafter “Ans.”) 10. The Examiner further
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Application 14/489,227

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notes that the waveform in Figure 2 of Peters ’104 exhibits “a peak phase
(102) followed [by] a return phase from the stabilization phase shown
by the declining line (shown by the arrow 100) to a low background current
level (104).” Id. Finally, with respect to Peters ’527, the Examiner states
that “the stabilization phase shown with the curved portion is between the
peak point 48 and the background level which is shown by the flatten line
42.” Id. at 11 (citing Peters ’527, Fig. 2A).
Independent claim 1 requires, inter alia, “a current-closed loop return
phase from the stabilization phase to a background power level.” Appeal
Br., Claims App. A-1 (emphasis added). Independent claim 10 requires,
inter alia, “creating a current-closed loop return to a background power
level.” Id. at A-2 (emphasis added). The use of the prepositions “from” and
“to” in claim 1 requires the claimed “current-closed loop return phase” to
begin at “the stabilization phase” and continue towards “a background
power level.” The use of the preposition “to” in claim 10 requires the
claimed “current-closed loop return” to continue towards “a background
level.” Such an interpretation is consistent with Appellant’s Specification,
which distinguishes stabilization ramp 72, return ramp 74, and background
level 78, wherein return ramp 74 is from stabilization ramp 72 and continues
towards background level 78. See Spec., para. 25, Fig. 5; see also Reply
Brief (filed June 23, 2020, hereinafter “Reply Br.”) 3.
Daniel discloses pulse current waveform 210 including beginning
point 211, peak current level data points 213–215, and “background current
data point 217 which indicates the level at which the waveform is to be
maintained for a background current level 214.” Daniel, para. 23 (emphasis
added), Fig. 2B. As such, a skilled artisan would readily understand that
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Application 14/489,227

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Daniel’s data points 217–211 constitute a background current (power) level,
rather than “a current-closed loop return phase from the stabilization phase
to a background power level” (as per claim 1) or “a current-closed loop
return to a background level” (as per claim 10). See Appeal Br., Claims
App. A-1 (emphasis added). In particular, Daniels’ data points 217–211
begin and end at a background current (power) level, that is, are maintained
at background current (power) level 214, and, thus, do not begin at “the
stabilization phase” and continue towards “a background power level,” as
required by claim 1. As Daniels’ data points 217–211 are maintained at
background current (power) level 214, such data points do not continue
towards, i.e., “return to,” “a background power level,” as required by claim
10. Hence, for the foregoing reasons, Daniel fails to disclose “a current-
closed loop return” phase/ramp, as called for by each of independent claims
1 and 10.
Furthermore, with respect to Peters ’527, line 42 is explicitly
disclosed as a “background level.” See Peters ’527, para. 25. Appellant is
correct that “Peters ’527 does not mention any phase between the tailout
time 52 and the background 42.” Appeal Br. 9. Thus, Peters ’527 also fails
to disclose “a current-closed loop return” phase/ramp, as called for by each
of independent claims 1 and 10.
Lastly, in regards to Peters ’104, the Examiner equates line 100 from
peak line 102 to current line 106 to the claimed “stabilization phase,” current
lines 106, 108, 110 to the claimed “current-closed loop return” phase/ramp,
and current line 104 to the claimed “background power level.” See Final
Act. 3; see also Peters ’104, Fig. 2. In particular, Peters ’104 discloses
current lines 106, 108 as an increase in current to overcome a short circuit of
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Application 14/489,227

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molten metal between the electrode and the workpiece, and current line 110
as a recovery of the current to background level 104. See Peters ’104, para.
58, Fig. 2. Appellant’s Specification describes stabilization phase ramp 72
as “driv[ing] the current down to a . . . ramp 74 to return to the background
level 78.” Spec., para. 25 (emphasis added), Fig. 5. Thus, in contrast to
Appellant’s claimed “stabilization phase” 72, which drives a decrease in
current, as per phase/ramp 74, to return to background level 78,
“stabilization phase” 100 of Peters ’104, drives an increase in current, as per
current lines 106, 108, to return to background current 104. Accordingly,
the Examiner’s construction of current lines 106, 108 of Peters ’104 as the
claimed “current-closed loop return” phase/ramp is unreasonable and
inconsistent with Appellant’s Specification. See In re Abbott Diabetes Care
Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (“[C]laims under examination
before the PTO are given their broadest reasonable interpretation consistent
with the specification.”).
Nonetheless, we appreciate that current line 110 of Peters ’104
constitutes a return to background current level 104. See Peters ’104, Fig. 2.
However, current line 110 is not from “stabilization phase” 100 to
“background power level” 104, that is, does not begin at “stabilization
phase” 100 and continues towards “background power level” 104, as called
for claim 1. Instead, current line 110 is from current line 108, which is not
part of “stabilization phase” 100, as it represents an increase in current,
rather than a “down ramp.” Therefore, for the foregoing reasons, Peters
’104 also fails to disclose “a current-closed loop return” phase/ramp, as
called for by independent claim 1.
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Application 14/489,227

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As for independent claim 10, we appreciate that in contrast to claim 1,
claim 10 does not require a “return phase from the stabilization phase to a
background power level,” but merely a “return to a background power
level.” See Appeal Br., Claims App. A-2 (emphasis added). As discussed
supra, current line 110 of Peters ’104 constitutes a current “return to a
background power level,” namely, background level 104. However, the
Examiner does not adequately explain why a person of ordinary skill in the
art would further modify Daniel’s welding method, as modified by Peters
’104 and Peters ’527, to include current line 110 of Peters ’104, i.e., a
“return to a background power level.” Moreover, as discussed above,
because background current data point 217 represents a background current
(power) level, Daniel already discloses a “return to a background power
level.” See Daniel, para. 23, Fig. 2B. Thus, absent hindsight, we fail to see
why a person having ordinary skill in the art would further modify Daniel’s
welding method, as modified by Peters ’104 and Peters ’527, to include
current line 110 of Peters ’104 in the manner claimed.
Moreover, the Examiner’s reasoning to modify Daniel’s welding
method with Peters ’104 is to provide “a metal cored electrode that is known
in the art as another suitable or alternative welding wire/electrode usable in
the welding application.” Final Act. 4. The Examiner further reasons to
modify Daniel’s welding method with the parabolic stabilization phase of
Peters ’527 “so that a more stable and steady arc is controlled and
maintained.” Id. However, the Examiner does not adequately explain why a
person of ordinary skill in the art would further modify Daniel’s welding
method, as modified by Peters ’104 and Peters ’527, to include current line
110 of Peters ’104 in the claimed manner. Conclusory statements are not
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Application 14/489,227

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enough to satisfy the Examiner’s obligation to provide reasoned explanation
for its decision. In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). The
Examiner must explain why a person of ordinary skill in the art would
modify the prior art references to create the claimed invention. In re Kotzab,
217 F.3d 1365, 1371 (Fed. Cir. 2000). “Even under [the] ‘expansive and
flexible’ obviousness analysis [of KSR], we must guard against ‘hindsight
bias’ and ‘ex post reasoning.’” St. Jude Med., Inc. v. Access Closure, Inc.,
729 F.3d 1369, 1381 (Fed. Cir. 2013) (citation omitted).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of independent claims 1 and 10, and their
respective dependent claims 3–8, 12–14, 16, and 21–23, as unpatentable
over Daniel, Peters ’104, and Peters ’527.

Rejections II and IV
The Examiner’s reliance on the disclosures of Henry, Baker, and
Uezono does not remedy the deficiency of the Daniel, Peters ’104, and
Peters ’527 combination discussed supra. See Final Act. 5, 8. Therefore,
for the same reasons discussed above in Rejection I, we also do not sustain
the rejections under 35 U.S.C. § 103 of claim 15 as unpatentable over
Daniel, Peters ’104, Peters ’527, and Henry and of claim 24 as unpatentable
over Daniel, Peters ’104, Peters ’527, and Baker or Uezono.

Rejection III
Like independent claim 10, independent claim 17 also recites
“creating a current-closed loop return to a background power level.” Appeal
Br., Claims App. A-3 (emphasis added). To satisfy this limitation, the
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Application 14/489,227

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Examiner employs the disclosures of Daniel, Peters ’104, and Peters ’527 in
the same manner as discussed supra in Rejection I. See Final Act. 5–7. The
Examiner’s use of the Adams and Ulrich disclosures does not remedy the
deficiency of the Daniel, Peters ’104, and Peters ’527 combination discussed
above. See id.
Therefore, for the foregoing reasons, we also do not sustain the
rejection under 35 U.S.C. § 103 of independent claim 17, and its dependent
claims 19 and 20, as unpatentable over Adams or Ulrich, Daniel, Peters
’104, and Peters ’527.

CONCLUSION

Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–8, 10,
12–14, 16,
21–23
103 Daniel, Peters ’104,
Peters ’527
1, 3–8, 10,
12–14, 16,
21–23
15 103 Daniel, Peters ’104,
Peters ’527, Henry
15
17, 19, 20 103 Adams or Ulrich,
Daniel, Peters ’104,
Peters ’527
17, 19, 20
24 103 Daniel, Peters ’104,
Peters ’527, Baker
or Uezono
24
Overall
Outcome
1, 3–8, 10,
12–17,
19–24

REVERSED