Ex Parte 6815639 et al

Patent Trial and Appeal BoardOct 31, 2012

95000204 (P.T.A.B. Oct. 31, 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. 95/000,204 01/17/2007 6815639 ITW 8637.61R 1120 23721 7590 10/31/2012 GEORGE R. CORRIGAN CORRIGAN LAW OFFICE 2168 COLLADAY POINT DRIVE STOUGHTON, WI 53589 EXAMINER NGUYEN, LINH M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/31/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ THE LINCOLN ELECTRIC COMPANY Requester and Respondent v. Patent of ILLINOIS TOOL WORKS, INC. Patent Owner and Appellant ____________________ Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 Technology Center 3900 ____________ Before RICHARD TORCZON, HOWARD B. BLANKENSHIP, ALLEN R. MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU, Administrative Patent Judges. PER CURIAM DECISION ON REQUEST FOR REHEARING Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 2 INTRODUCTION Patent Owner’s Request for Rehearing (filed May 15, 2012) contends that we erred in our Decision on Appeal mailed April 16, 2012 (“Decision”), in which we affirmed the Examiner’s decision to reject claims 1-18 and 20- 34. DISCUSSION In particular, Owner contends that we erred in our finding that Chambers (US 4,030,024) and Miller (US 5,465,011) are analogous art. We will consider and address points that Owner urges we misapprehended or overlooked in reaching our decision (see 37 C.F.R. § 41.79(b)(1)), but not re-argument of assertions that were presented in Owner’s briefs on appeal. First, we were not persuaded of error in the Examiner’s finding that the references are within the '639 patent's field of endeavor. Decision 13. The Examiner agreed with, and adopted, the Requester’s position with respect to Chambers and Miller being analogous art. Right of Appeal Notice (RAN) 40; see also Ans. 48-53. Requester noted that the '639 patent itself teaches that a related patent contained the “low power” technology that Owner contends is outside the field of endeavor. Third Party Requester Comments after Non-Final Action 12-13. The '639 patent incorporates by reference U.S. Patent 5,601,741, and discusses the implementation of the power supply in the “FIELD OF THE INVENTION” section. '639 patent col. 2, ll. 12 -65. The '741 patent, as identically stated in the '639 patent, says that the invention “generally relates to power sources. More particularly, this invention relates to inverter power Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 3 sources employed in welding, cutting and heating applications.” '741 patent col. 1, ll. 7-9. The '741 patent also describes a welding power source that includes an auxiliary power controller. Col. 3, l. 64 - col. 4, l. 7. Controller 104 [Fig. 1] is a main control board such as that found in many inverter-type welding power sources. The main control board provides the control signals to pulse-width modulator 103, to control the frequency and pulse-width of pulse-width modulator 103. Input rectifier 101, pulse-width modulator 103, controller 104 and output transformer T3 are well known in the art. . . . . Auxiliary power controller 105 receives the input line voltage and converts that voltage to a 18 volt dc control signal. The 18 volt control signal is created regardless of the input voltage, and is provided to boost circuit 102. Boost circuit 102 uses the 18 volt control signal to control its switching frequency and the magnitude of its output. Auxiliary power controller 105 also provides a 48 volt center tap ac power signal to controller 104. '741 patent col. 4, ll. 25-31, 44-51. Thus, welding power sources in the prior art included the type of “low power” power supplies (e.g., auxiliary power controller 105) that Owner now submits is not within the field of endeavor of the '639 patent. The invention generally relates to power sources, consistent with the literal language of the '639 patent. Our reviewing court was not persuaded that the Board had defined the “field of endeavor” too broadly in the case of In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009), cited with approval in Western Union Co. v. Moneygram Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 4 Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010). The Board had found that the field of endeavor was “pay-for-use public communication terminals,” but Mettke argued that the term “communication” over-broadly swept in such fields as facsimile machines, telephones, televisions, cellular phones, and global positioning systems. Mettke contended that the field of endeavor with respect to the claim was limited to an “Internet terminal.” Mettke, 570 F.3d at 1359. However, the Court noted that the specification of the patent described various communication media, including facsimile machines and email, as related to the invention, and found that the record supported the Board’s findings with respect to analogous art. Id. Significantly, the Mettke patent undergoing reissue (US 5,602,905) listed U.S. patents in the “BACKGROUND--DESCRIPTION OF PRIOR ART” as known prior art, the patents not being limited to describing Internet terminals. In this case, the incorporated-by-reference '741 patent and the '639 patent further describe the low-power controller power source, which indicates that the field of endeavor is not limited to circuitry that provides welding power. The welding-power circuitry would not function without the low-power controller circuitry. Owner suggests that we did not address In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), in the Decision because “it was released after the briefing in this case.” Req. Rh’g 8. “In view of Klein, the Board should reverse its decision.” Id. However, we did consider Klein in reaching our determinations. The case and why it is not germane to the invention of the '639 patent was, in fact, discussed at the oral hearing. See Hrg. Trans. 9-13. Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 5 In Klein, our reviewing court determined that the Board had made a factual finding with respect to the problem the inventor was facing; namely, “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” 654 F. 3d at 1348. The Court determined that three references were not analogous because the purpose of each reference was to separate solid objects. As such, an inventor considering the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals” would not have been motivated to consider any of the references. Id. at 1350-51. The Court further determined that the remaining two references were not analogous because they did not address multiple ratios or have a “movable divider.” [A]n inventor considering the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals,” would not have been motivated to consider either of these references since neither of the references shows a movable divider or the ability to prepare different ratios. Klein, 654 F.3d at 1352. We therefore disagree with Owner’s characterization that the Court “found five prior art references nonanalogous because they were pertinent only to some aspect of the invention,” and because “none were related to the problem as a whole.” Req. Rh’g 9 (emphasis deleted). The Court determined the references were non-analogous because none were reasonably pertinent to the problem of making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals. Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 6 In this case, the Examiner found that the inventor was faced with the problem of providing low-power control (“housekeeping”) power (e.g., Ans. 49). The '639 patent provides more than adequate support for the finding. For example: [A] welding power source that may receive any common input voltages or frequency is desirable. Preferably, this is accomplished without the need of any linkages for the welding power input and for the control power input. '639 patent col. 2, l. 66 - col. 3, l. 3 (emphasis added). If, as Owner suggests (Req. R’hg 8), we “completely ignored” other challenges facing the inventor, the other challenges were not relevant in our determination as to whether adequate evidence supported the Examiner’s finding that Chambers and Miller represented prior art. Our reviewing court has “reminded ... the PTO that it is necessary to consider ‘the reality of the circumstances’ - in other words, common sense - in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (citations omitted). A person of ordinary skill is a person of ordinary creativity, not an automaton. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). One of ordinary skill in the art would have looked to power supply circuits that supply power to controller elements, regardless of the end use of the device in which the circuits were used. The artisan1 would not have limited his consideration to 1 As noted in the Decision (20, n.11), according to Owner’s expert the minimum level of skill in the art includes a bachelor’s degree in electrical engineering or similar discipline, three years of experience with welding, Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 7 power sources used in welding, cutting, and heating applications when wishing to improve controller power sources in such equipment. Thus, we remain unconvinced that the Examiner erred in finding that even if “low power, non-welding” power supplies were not within the field of endeavor, they were, at the least, reasonably pertinent to the problem facing the patentee and thus are prior art as contemplated by 35 U.S.C. § 103(a). We are not persuaded that we misapprehended or overlooked anything in rendering the Decision. DECISION We have granted Owner’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of claims 1-18 and 20-34, but we decline to modify the decision in any way. Requests for extensions of time in this proceeding are governed by 37 C.F.R. § 1.304(a). DENIED cutting, or heating applications, a general knowledge of power electronics, and a specific background in welding power supplies. Appeal 2011-005722 Reexamination Control 95/000,204 Patent US 6,815,639 B2 8 cc: Patent Owner: GEORGE R. CORRIGAN CORRIGAN LAW OFFICE 2168 COLLADAY POINT DRIVE STOUGHTON, WI 53589 Third Party Requester: TERRANCE J. WIKBERG LINCOLN ELECTRIC COMPANY/PERKINS COIE LLP 607 14TH STREET, NW WASHINGTON, DC 20005-2003