Ex Parte Breitenbach et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201813179749 (P.T.A.B. Feb. 22, 2018) Copy Citation 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. 13/179,749 07/11/2011 Steven Louis Breitenbach 249330-1 1159 80944 7590 02/26/2018 Hoffman Warniok T T .P EXAMINER 540 Broadway 4th Floor SIMS III, JAMES F Albany, NY 12207 ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 02/26/2018 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): ptocommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN LOUIS BREITENBACH, WILLIAM EDWARD BABCOCK, JONATHAN TROPP SALKIN, ALAN SILVIA, and ANDREW BATTON WITNEY Appeal 2017-001561 Application 13/179,749 Technology Center 3700 Before JENNIFER D. BAHR, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steven Louis Breitenbach et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—12, 21—23, 25, 26, and 28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-001561 Application 13/179,749 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, with emphasis added, from the Claims Appendix on page 14 of the Appeal Brief, is illustrative of the claimed subject matter. 1. A welding system, comprising: a pair of torches positioned in an other than opposing arrangement to weld a substantially circular sealed component therebetween, wherein the substantially circular sealed component includes a purge hole linking an inert shielding gas within a cavity positioned within the substantially circular sealed component with an outer surface of the substantially circular sealed component; a rotatable support configured to rotate the substantially circular sealed component and the pair of torches relative to one another, allowing welding of the purge hole by one of the pair of torches; and a control system coupled to the pair of torches, wherein the control system automatically extinguishes one of the pair of torches in response to a single unwelded purge hole remaining on the substantially circular sealed component, such that a selected one of the pair of torches welds the single unwelded purge hole after the extinguishing. REJECTIONS I. Claims 1—12, 21—23, 25, 26, and 28 stand rejected under 35U.S.C. § 112, second paragraph, as indefinite. II. Claims 1—12, 21—23, 25, 26, and 28 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. III. Claims 1—4, 6—10, 21—23, 26, and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee (US 6,603,096 B2, 2 Appeal 2017-001561 Application 13/179,749 iss. Aug. 5, 2003), Lipnevicius (US 2004/0217096 Al, pub. Nov. 4, 2004), and Picard (US 6,947,802 B2, iss. Sept. 20, 2005). IV. Claims 5 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, Picard, and Blechinger (US 2005/0252898 Al, pub. Nov. 17, 2005). V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, Picard, and Merrick (US 4,283,617, Aug. 11, 1981). VI. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, Picard, and Amador (US 2009/0230109 Al, pub. Sept. 17, 2009). DISCUSSION Rejection I—Indefiniteness The stated basis for this rejection is that, in the “wherein” clause in the last paragraph of claim 1 (i.e., the language italicized above), “[i]t is unclear as to what structure the control system includes to perform the functional language as recited.” Ans. 3. Independent claim 7 includes substantially the same “wherein” clause. Appeal Br. 15—16 (Claims App.). The Examiner questions whether “the control system require[s] a preprogrammed weld path or sensors or both.” Ans. 3. The Examiner adds that “[t]he [Specification does not define or mention the word ‘automatically’ or cite structure that corresponds to automatically performing the function” and, thus, “[i]t is unclear if a processor, software and sensors are needed or just an operator monitoring and manipulating the torch.” Id. at 14. According to the Examiner, “the 3 Appeal 2017-001561 Application 13/179,749 control system is not structurally limited in the instant claim to meet [Appellants’] interpretation of a system that automatically perform[s] the function without an operator.” Id. In determining whether a claim is definite under 35U.S.C. § 112, second paragraph, “[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or phrases whose meaning is unclear.” Id. at 1322 (citing MPEP § 2173.05(e)). We understand the basis of the Examiner’s rejection to be that the claim language at issue lacks clarity as to whether structure for automatically extinguishing one of the torches in response to a single unwelded purge hole remaining is required, or whether an operator manually operating the torches in this manner would satisfy the claim language. We discern no such lack of clarity. The language “the control system automatically extinguishes” is unambiguous that the control system, not an operator, automatically performs the extinguishing function. Further, in accordance with the claim language, the control system automatically performs this function “in response to a single unwelded purge hole remaining” on the component. In other words, the condition that a single unwelded purge hole remains is the triggering event that causes the control system to extinguish one of the pair of torches. Thus, the claimed control system must include structure that either determines or receives an indication that a single unwelded purge hole remains so that the control system responds by extinguishing one of the torches. For the above reasons, the Examiner does not articulate a sustainable case that the language cited by the Examiner renders independent claim 1 or 4 Appeal 2017-001561 Application 13/179,749 independent claim 7, or their dependent claims 2—6, 8—12, 21—23, 25, or 26, indefinite. Independent claim 28 does not include the “wherein” clause of claim 1 cited by the Examiner as rendering the claims indefinite, and the Examiner does not articulate any separate basis for determining that claim 28 is indefinite. Accordingly, we do not sustain the rejection of claims 1—12, 21—23, 25, 26, and 28 under 35 U.S.C. § 112, second paragraph. Rejection II—Written Description The fundamental factual inquiry for ascertaining compliance with the written description requirement is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “This inquiry ... is a question of fact,” and “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. “[T]he specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The Examiner finds that the disclosure of the present application fails to provide written description support for a control system that “automatically extinguishes one of the pair of torches in response to a single unwelded purge hole remaining on the substantially circular sealed component, such that a selected one of the pair of torches welds the single 5 Appeal 2017-001561 Application 13/179,749 unwelded purge hole after the extinguishing” as recited in claims 1 and 7. Ans. 2. Appellants direct our attention to paragraphs 4, 26, and 32—38 of the Specification, and Figure 5, as supporting this limitation. Appeal Br. 5—6; Reply Br. 2. In particular, Appellants point out that paragraph 4 of the Specification provides some context of the problem addressed by Appellants’ invention, namely, that using a single torch welding system may beneficially reduce the heat transferred to the component during welding, thus reducing pressure in the cavity while welding the final purge hole, but also increases the amount of time to complete the weld and can create an uneven heat distribution along the weld seam. Appeal Br. 5. Further, according to Appellants, paragraph 33 discloses that, in the embodiment of Figure 5, the control system extinguishes lead torch 120 while the other torch continues to weld second length 148 including purge hole 134, which is the only remaining unwelded purge hole, as shown in Figure 5. Id. at 5—6. Additionally, Appellants emphasize that paragraphs 32 and 33 disclose that the control system controls igniting and extinguishing each torch, so the igniting and extinguishing is automatic, as opposed to manual. Id. at 6. In the embodiment depicted in Figures 5 and 6 of the present application, control system 132 may be configured to ignite lead torch 120 for a predetermined amount of time to weld first length 146, which begins at lead torch ignition point 142 and ends at trail torch ignition point 144, thereby allowing lead torch 120 to weld over, or “tie-in,” trail torch ignition point 144 just prior to extinguishing. Spec, 32, 33. As shown in Figure 5, this results in lead torch 120 being extinguished with a single unwelded 6 Appeal 2017-001561 Application 13/179,749 purge hole (first purge hole 134) remaining on the sealed component. Id. However, extinguishing lead torch 120 after a predetermined amount of time or amount of rotation of the sealed component or weld torches, thereby resulting in a single unwelded purge hole, does not constitute automatically extinguishing the lead torch in response to a single unwelded purge hole remaining. In other words, in the embodiment discussed with reference to Figures 5 and 6, the single unwelded purge hole remains at the time of the extinguishing, but the occurrence of the single unwelded purge hole remaining is not the triggering event for extinguishing lead torch 120. Appellants do not point to, nor do we find, any disclosure in the application as of its filing date of a control system that uses the occurrence or condition of a single unwelded purge hole remaining as the triggering event for extinguishing the lead torch. Thus, the Examiner correctly finds that the disclosure of the present application fails to reasonably convey to those skilled in the art that Appellants had possession of the claimed subject matter, in particular, a welding system comprising a control system that “automatically extinguishes one of the pair of torches in response to a single unwelded purge hole remaining on the substantially circular sealed component,” such that “a selected one of the pair of torches welds the single unwelded purge hole after the extinguishing,” as recited in claims 1 and 7. Ans. 2. Accordingly, we sustain the rejection of claims 1 and 7, and their dependent claims 2—6, 8—12, 21—23, 25, and 26, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We do not sustain the rejection of claim 28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description 7 Appeal 2017-001561 Application 13/179,749 requirement, because the language from claims 1 and 7 identified by the Examiner as lacking written description support is not in claim 28. See Appeal Br. 18—19. The Examiner does not specifically identify any subject matter in claim 28 lacking written description support. See Ans. 2. Rejection III—Obviousness (Lee, Lipnevicius, and Picard) Claims 1—4, 6—10, 21—23, and 26 Each of independent claims 1 and 7 recites, in pertinent part, a control system that “automatically extinguishes one of the pair of torches in response to a single unwelded purge hole remaining on the substantially circular sealed component,” such that “a selected one of the pair of torches welds the single unwelded purge hole after the extinguishing.” Appeal Br. 14, 15—16 (Claims App.). This limitation, as discussed above, requires a control system that uses the occurrence of a single unwelded purge hole remaining as the triggering event for extinguishing one of the pair of torches. The Examiner finds that Lee discloses a control means that includes a power supply, a current and voltage detecting unit, a welding condition setting unit, and a control unit controlling the torch, but “Lee does not give specific detailed functional information of control components.” Ans. 4 (citing Lee 2:66—3:10). The Examiner finds that Picard teaches “a computerized numeric controller (CNC) (12) with display screen (13), a power supply (14), an automatic process controller (16), a torch height controller (18), a drive system (20) and a plasma torch (24).” Id. (citing Picard 4:66—5:29). The Examiner finds that Picard’s controller “is capable of performing the functional language as recited in [claims 1 and 7].” Id. The Examiner determines it would have been obvious “to modify the control 8 Appeal 2017-001561 Application 13/179,749 means of Lee with the control system of Picard to be able to control the welding process to include the igniting and extinguishing of the torches and the controlling of the welding path.” Id. Appellants argue that Picard “does not disclose or suggest extinguishing one of a pair of torches in response to a single unwelded purge hole remaining on a substantially circular sealed component” and that Picard’s controller “is not structured to perform in this manner.” Appeal Br. 9—10. Further, Appellants contend: [T]he Examiner articulated no reasoning with a rational underpinning why one of skill in the art would modify the controller of Picard to be able to automatically extinguish one of a pair of torches in response to a single unwelded purge hole remaining on a substantially circular sealed component, let alone why one of skill in the art would modify Lee to have a control system that automatically extinguishes one of a pair of torches in response to a single unwelded purge hole remaining on a substantially circular sealed component. Id. at 10. According to Appellants, Picard’s controller “merely controls the motion of a single plasma arc torch 24 over a cutting table 22, and the timing of the cutting process as the process relates to motion.” Id. (citing Picard 5:4—6). In response, the Examiner reasons that since the modified control system of the prior art can control the welding process including movement, ignition and extinguishing of the torches, movement of the workpiece and other parameters of the welding system, it would have only required routine skill in the art to activate, program or operate the computerized numeric controller (CNC) (12) of Picard ignite and extinguish the torches in response to a single unwelded purge hole. 9 Appeal 2017-001561 Application 13/179,749 Ans. 16. In support of this reasoning, the Examiner cites In re Venner, 262 F.2d 91, 95 (CCPA 1958), in which “[t]he court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.” Ans. 17. The Examiner further explains that “[i]n this case, the control system of the prior art and an operator can manually extinguish the torches based on observations of the operator” and that “it would have only required routine skill in the art to fashion the control system to automatically perform the functions as required since the structure is capable.” Id. The flaw in the Examiner’s reliance on Venner is that the Examiner has not pointed to any evidence showing that extinguishing one of the torches in response to a single unwelded purge hole remaining was a manual activity known in the prior art; thus, the proposed modification is not simply automating a manual activity in the prior art. Nor has the Examiner otherwise articulated why, absent hindsight in view of Appellants’ disclosure, a person having ordinary skill in the art would have been prompted to fashion the control system of Lee and Picard to automatically extinguish one of the torches in response to a single unwelded purge hole remaining on the component. See Appeal Br. 10—11 (asserting the Examiner relied on information gleaned only from Appellants’ disclosure, thereby applying impermissible hindsight). For the above reasons, the Examiner does not establish a sustainable case of obviousness of the subject matter of independent claims 1 and 7, or of their dependent claims 2—4, 6, 8—10, 21—23, and 26. Accordingly, we do not sustain the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, and Picard. 10 Appeal 2017-001561 Application 13/179,749 Claim 28 In contesting the rejection of claim 28, Appellants rely on the aforementioned limitation of claims 1 and 7 as distinguishing over the combination of Lee, Lipnevicius, and Picard (i.e., a control system that automatically extinguishes one of the pair of torches in response to a single unwelded purge hole remaining on the substantially circular sealed component, such that a selected one of the pair of torches welds the single unwelded purge hole after the extinguishing). Appeal Br. 8—11. However, this limitation is not in claim 28 (see id. at 18—19 (Claims App.)) and, thus, cannot be relied upon to show nonobviousness of the subject matter of claim 28. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Appellants do not present any arguments commensurate with the scope of claim 28 and, thus, do not apprise us of error in the rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, and Picard, which we thus sustain. Rejections IV—VI—Obviousness (Claims 5, 11, 12, and 25) The rejections of claims 5 and 25, which depend from claim 1, and claims 11 and 12, which depend from claim 7, suffer from the same deficiency as the rejection of claims 1 and 7 under 35 U.S.C. § 103(a), discussed above. The Examiner does not articulate any findings or reasoning that would make up for this deficiency. Ans. 10—12. Accordingly, we do not sustain these rejections. 11 Appeal 2017-001561 Application 13/179,749 DECISION The Examiner’s decision rejecting claims 1—12, 21—23, 25, 26, and 28 under 35 U.S.C. § 112, second paragraph, is REVERSED. The Examiner’s decision rejecting claims 1—12, 21—23, 25, and 26, under 35 U.S.C. § 112, first paragraph, is AFFIRMED. The Examiner’s decision rejecting claim 28 under 35 U.S.C. § 112, first paragraph, is REVERSED. The Examiner’s decision rejecting claims 1—4, 6—10, 21—23, and 26 under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, and Picard is REVERSED. The Examiner’s decision rejecting claim 28 under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, and Picard is AFFIRMED. The Examiner’s decision rejecting claims 5 and 12 under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, Picard, and Blechinger is REVERSED. The Examiner’s decision rejecting claim 11 under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, Picard, and Merrick is REVERSED. The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as unpatentable over Lee, Lipnevicius, Picard, and Amador is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation