Ex Parte Breitenbach et al

Patent Trial and Appeal Board

Feb 22, 2018

13179749 (P.T.A.B. Feb. 22, 2018)

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,
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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
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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
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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
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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
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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
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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
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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.
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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.
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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.
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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
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