Ex Parte Albrecht et al

Patent Trial and Appeal BoardAug 27, 2014

11163161 (P.T.A.B. Aug. 27, 2014)

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. 11/163,161 10/07/2005 Bruce Albrecht 15207 (ITWO:0326) 4160 52145 7590 08/27/2014 FLETCHER YODER (ILLINOIS TOOL WORKS INC.) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER JENNISON, BRIAN W ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 08/27/2014 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 ________________ Ex parte BRUCE ALBRECHT and JAMES F. ULRICH ________________ Appeal 2012-003612 Application 11/163,161 Technology Center 3700 ________________ Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE and CARL M. DEFRANCO, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellants1 appeal under 35 U.S.C. § 134 (2011) from the 2 Examiner’s decision rejecting claims 1–11, 57, and 58. The Examiner has 3 withdrawn claims 12–17 and 19–51 from consideration. Claim 18 is 4 cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2011). 5 We do not sustain the rejection of claims 1–11, 57, and 58 under 35 6 U.S.C. § 112, first paragraph (2011), as failing to comply with the written 7 description requirement. 8 1 The Appellants identify Illinois Tool Works Inc. as the real party in interest. Appeal 2012-003612 Application 11/163, 161 2 We sustain the rejection of claims 1–6, 8–11, 57, and 58 under 35 1 U.S.C. § 103(a) (2010) as being unpatentable over Feichtinger et. al. (US 2 2004/0026392 A1, published Feb. 12, 2004), Adachi (US 6,728,619 B2, 3 issued April 27, 2004), and Menard (US 2003/0210140 A1, publ. Nov. 13, 4 2003).2 We also sustain the rejection of claim 7 under § 103(a) as being 5 unpatentable over Feichtinger, Adachi, Menard, and Blankenship (US 6 6,536,660 B2, issued March 25, 2003). 7 Claim 1 is the sole independent claim on appeal: 8 1. An apparatus comprising: 9 a welding-type device; 10 a data storage unit associated with the welding-type 11 device and having identification information of the welding-12 type device, system type of the welding-type device, and 13 location information of the welding-type device within a 14 network stored thereon, wherein the location information 15 comprises data that enables determination of the physical 16 location of the welding-type device; and 17 a wireless communication unit operationally attached to 18 the data storage unit, the wireless communication unit 19 configured to emit a signal carrying the identification 20 information and the location information from the data storage 21 unit in response to a system-type identification request from a 22 monitoring device and based on the system type stored in the 23 data storage unit. 24 2 On page 5 of the Answer, the Examiner states that “[c]laims 1–6, 8– 11 and 57–58 are rejected under 35 U.S.C. 102(b) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over Feichtinger et al. (US 2004/0026392) in view of Adachi (US 6,728,619) and further in view of Menard et al. (US 2003/0210140).” Since a claim cannot be anticipated by three references, E.g., W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983), the rejection can be based only on § 103(a). Appeal 2012-003612 Application 11/163, 161 3 ISSUES 1 The Appellants do not separately argue the patentability of the claims 2 on appeal for purposes of any rejection at issue in this appeal. (See, e.g., 3 App. Br. 12–15). Therefore, we group claims 1–6, 8–11, 57, and 58 for 4 purposes of the rejection of those claims under § 103(a). Claim 1 is 5 representative. The Appellants only argue the patentability of claim 7 on the 6 basis that Blankenship fails to remedy perceived deficiencies in the 7 combined teachings of Feichtinger, Adachi, and Menard. (See App. Br. 15–8 16). 9 Arguments that the Patent Owner could have made but chose not to 10 make have not been considered and are deemed to be waived. See 37 C.F.R. 11 § 41.37(c)(1)(vii) (2011). Two issues are dispositive of this appeal: 12 First, does the Specification adequately describe “a data 13 storage unit associated with the welding-type device and having 14 identification information of the . . . system type of the 15 welding-type device” as recited in independent claim 1? (See, 16 e.g., App. Br. 4–7; Ans. 4–5). 17 Second, would an apparatus including “a data storage 18 unit . . . having identification information of the welding-type 19 device, system type of the welding-type device, and location 20 information of the welding-type device within a network stored 21 thereon” in combination with a “wireless communication unit 22 configured to emit a signal carrying the identification 23 information and the location information from the data storage 24 unit in response to a system-type identification request from a 25 monitoring device and based on the system type stored in the 26 Appeal 2012-003612 Application 11/163, 161 4 data storage unit” have been obvious from the combined 1 teachings of Feichtinger, Adachi and Menard? (See, e.g., App. 2 Br. 13–15; Ans. 6–8, 10). 3 4 FINDINGS OF FACT 5 The record supports the following findings of fact (“FF”) by a 6 preponderance of the evidence. 7 1. Feichtinger describes a system for running a welding process 8 which includes a power source in the form of a current source 2; a wire feed 9 device 11; and a welding torch 10. (Feichtinger, paras. 38–40). 10 2. Each of these components has an associated communication 11 module 29 including a data storage unit in the form of a memory unit 43; 12 and a wireless communication unit in the form of a transmitter and/or 13 receiver system 38. (Feichtinger, paras. 45, 53 and 60; id., Figs. 1 and 2). 14 The components of Feichtinger’s system form a wireless communication 15 network 27. (Feichtinger, para. 45). 16 3. The communication modules 29 associated with the 17 components of Feichtinger’s system have the capacity to communicate 18 signals or data between themselves. 19 A signal and/or data block awaiting transmission may consist of 20 a code representing the communication module 29 and an 21 incrementing command number, followed by the signals and/or 22 data to be transmitted. When this data block is received by 23 another communication module 29, the latter can determine the 24 communication module 29 from which the data was sent along 25 with the running command number allocated to this 26 transmission. 27 (Feichtinger, para. 73). 28 Appeal 2012-003612 Application 11/163, 161 5 This passage implies that each communication module 29 is assigned a 1 unique code which identifies that communication module and its associated 2 component. 3 5. Menard discloses a portable sanitation unit 115. (Menard, para. 4 18). The portable sanitation unit is associated with a communication module 5 125 having an RF transmitter 125A. (Menard, paras. 19 and 22). The 6 communication module is capable of wirelessly exchanging executable code 7 as well as data with a remote transceiver. (Menard, para. 58). 8 6. The data exchanged by the communication module 125 with the 9 remote transceiver may include fields for an identification code for the 10 portable sanitary unit 115; a registered owner/lessee identification for 11 identifying a registered owner or lessee of the portable sanitary unit; and 12 location data such as global positioning satellite (“GPS”) coordinates. 13 (Menard, paras. 58–63, 66 and 67). 14 7. Menard teaches a method for operating a portable sanitary unit 15 115. In one embodiment, the method includes a step in which the portable 16 sanitary unit 115 “is programmed to transmit data upon receipt of an inquiry 17 command. The inquiry command may be manually supplied by a field 18 service technician or wirelessly received from a remote location.” (Menard, 19 para. 49). 20 21 ANALYSIS 22 First Issue 23 Claim 1 recites “a data storage unit associated with the welding-type 24 device and having identification information of the . . . system type of the 25 welding-type device.” The Examiner concludes that claims 1–11 and 57–58 26 Appeal 2012-003612 Application 11/163, 161 6 fail the written description requirement under § 112, first paragraph, because 1 the Appellants’ “specification does not state what a ‘system type’ is.” (Ans. 2 4–5). The Appellants argue that the written description rejection is 3 improper. (See App. Br. 5–7). 4 The “written description requirement” is met only if the underlying 5 application as originally filed would have clearly allowed one of ordinary 6 skill in the art to recognize that the Appellants invented, as of the application 7 filing date, the subject matter of the claim on appeal. See Ariad Pharmas., 8 Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). 9 Whether one of ordinary skill in the art could have determined the scope of 10 the term “system type” with reasonable certainty relates to indefiniteness 11 under the second paragraph of § 112, not to lack of written description under 12 the first paragraph of section 112. 13 The Appellants’ Specification expressly states that, “at a minimum, 14 data storage unit 26 should be capable of providing identification 15 information to wireless communication unit 28 for transmittal, such as serial 16 number, a unique identification code, system type information, or a network 17 ID number.” (Spec., para. 33). In addition, the Specification provides 18 examples of system types: “The phrase ‘welding-type device’ shall include 19 all devices useable in a welding system, including but not limited to welders, 20 power sources, wire feeders, generators, weld guns and torches, advanced 21 and user adapted systems, wire reels, accessories, and the like.” (Spec., 22 para. 30). Therefore, the Appellants’ Specification satisfies the written 23 description requirement by describing “a data storage unit associated with 24 the welding-type device and having identification information of the . . . 25 Appeal 2012-003612 Application 11/163, 161 7 system type of the welding-type device” as recited in claim 1. We do not 1 sustain the rejections of claims 1–11 and 57–58 under § 112, first paragraph. 2 Second Issue 3 Claim 1 recites an apparatus including “a data storage unit . . . having 4 identification information of the welding-type device, system type of the 5 welding-type device, and location information of the welding-type device 6 within a network stored thereon” in combination with a “wireless 7 communication unit configured to emit a signal carrying the identification 8 information and the location information from the data storage unit in 9 response to a system-type identification request from a monitoring device 10 and based on the system type stored in the data storage unit.” Claim 3 11 indicates that the “identification information of the welding-type device” 12 may include a unique identification number, an ownership identification or a 13 system identifier. (See App. Br. 18 (Claims Appendix)). As noted earlier, 14 the Specification provides examples of welding type devices. These 15 examples include power sources, wire feeders and weld torches. (See Spec., 16 para. 30). 17 The Appellants contend that an apparatus meeting these limitations 18 would not have been obvious from the combined teachings of Feichtinger, 19 Adachi, and Menard. (E.g., App. Br. 13). Feichtinger describes a system for 20 running a welding process which includes a power source in the form of a 21 current source 2; a wire feed device 11; and a welding torch 10. (FF 1). 22 Each of these welding-type devices has an associated communication 23 module 29 including a data storage unit in the form of a memory unit 43; 24 and a wireless communication unit in the form of a transmitter and/or 25 receiver system 38. (FF 2). Each communication module 29 is assigned a 26 Appeal 2012-003612 Application 11/163, 161 8 code. (FF 3). The memory unit 43 of each welding-type device would have 1 provided an obvious medium for storing the code associated with each 2 welding-type device. 3 The Examiner reasons that, “[e]ven if Feichtinger in view of Adachi 4 fails to disclose the system device type, it would have been obvious to one 5 having ordinary skill in the art to provide the system type information since 6 the code transmitted (see Paragraph [0073] of Feichtinger) is device specific 7 and the system type information is merely a signal containing information 8 and sending this information only requires routine skill in the art.” (Ans. 6–9 7). Each code of the type described in paragraph 73 of Feichtinger is unique 10 to a particular welding-type device in Feichtinger’s system. In addition, 11 each welding-type device in Feichtinger’s system is of a different system 12 type. Therefore, each code represents a system type. It would have been 13 obvious to store the system type, that is, the code, on the data storage unit or 14 memory unit 43 associated with each welding-type device. 15 Menard teaches a method for remotely operating an apparatus such as 16 a portable sanitary unit 115. The method entails the apparatus transmitting 17 data in response to an inquiry command wirelessly received from a remote 18 location. (FF 7). The Examiner concludes that it would have been obvious 19 “to modify Feichtinger as modified by Adachi in further view of Menard for 20 [a] monitoring device to request information from the wireless 21 communication device for providing updated device specific data along with 22 location and identification information.” (Ans. 8). The Appellants do not 23 appear to challenge this reasoning in this appeal. 24 Assuming for purposes of this appeal only that the “identification 25 information” recited in claim 1 differs from the “system type” recited in the 26 Appeal 2012-003612 Application 11/163, 161 9 claim (contra Spec., para. 33 (describing the system type as one variety of 1 identification information)), one of ordinary skill in the art would have 2 recognized that system type (that is, the code described in paragraph 73 of 3 Feichtinger), ownership information and location information could have 4 been transmitted together in separate fields of the same data transfer. (See 5 FF 6). One of ordinary skill in the art would have had reason to store 6 ownership information in the memory unit 43 of a leased welding-type 7 device and forward the information to a user on demand in order to identify 8 a registered owner or lessee. (See id.) The ownership information would 9 have constituted identification information. (See App. Br. 18 (claim 3)). 10 Therefore, an apparatus including “a data storage unit . . . having 11 identification information of the welding-type device, system type of the 12 welding-type device, and location information of the welding-type device 13 within a network stored thereon” in combination with a “wireless 14 communication unit configured to emit a signal carrying the identification 15 information and the location information from the data storage unit in 16 response to a system-type identification request from a monitoring device 17 and based on the system type stored in the data storage unit” would have 18 been obvious from the combined teachings of Feichtinger, Adachi, and 19 Menard. 20 We sustain the rejections of claims 1–6, 8–11, 57, and 58 under 21 § 103(a) as being unpatentable over Feichtinger, Adachi, and Menard. The 22 Appellants do not present any arguments why claim 7 might be patentable 23 over Feichtinger, Adachi, Menard, and Blankenship if claim 1 is not 24 patentable over Feichtinger, Adachi, and Menard. We also sustain the 25 Appeal 2012-003612 Application 11/163, 161 10 rejection of claim 7 under § 103(a) as being unpatentable over Feichtinger, 1 Adachi, Menard, and Blankenship. 2 DECISION 3 We AFFIRM the Examiner’s decision rejecting claims 1–11, 57, and 4 58. 5 No time period for taking any subsequent action in connection with 6 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). 7 8 AFFIRMED 9 10 11 12 Klh 13