Ex Parte Sickels

Patent Trial and Appeal Board

Mar 15, 2017

14012334 (P.T.A.B. Mar. 15, 2017)

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.
14/012,334 08/28/2013 Darrell L. Sickels 15008-A (ITWO:0325-1) 9479
52145 7590 03/17/2017
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
DANG, KET D
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
docket@fyiplaw.com
sinclair@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRELL L. SICKELS
Appeal 2015-003461
Application 14/012,3341
Technology Center 3700
Before STEFAN STAICOVICI, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darrell L. Sickels (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 23^42.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, Illinois Tool Works, Inc., is the real party in
interest. Appeal Br. 2 (filed Aug. 26, 2014).
2 Claims 1—22 are canceled. See Preliminary Amendment 3 (filed Aug. 8,
2013).
Appeal 2015-003461
Application 14/012,334
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellant’s invention relates to “a welder or wire feeder having a
single-knob control knob for inputting a single identifier of a welding
process from which all operating parameters of the welding process can be
automatically determined.” Spec. 1,11. 5—7.
Claims 23, 33, and 38 are independent. Claim 23 is illustrative of the
claimed invention and reads as follows:
23. A tungsten inert gas (TIG) welding system, comprising:
an enclosure comprising:
a power input on the enclosure and configured to receive
an input power into the enclosure for power conversion;
a power output on the enclosure and configured to deliver
welding power from the enclosure to a welding torch to
perform a TIG welding process on a workpiece;
a control panel on the enclosure and having a single input
device configured to allow a user to select a characteristic of the
workpiece; and
circuitry within the enclosure and configured to establish
operating parameters for the TIG welding process based on the
selected characteristic of the workpiece.
REJECTIONS
The following rejections are before us for review:3
3 The Examiner has withdrawn the rejection of claims 23—30 and 33—42
under the ground of non-statutory, obviousness-type double patenting as
being unpatentable over claims 1—5, 8, and 10-22 of U.S. Application No.
14/012,334 (now US 8,546,728 B2, iss. Oct. 1, 2013). Ans. 2 (mailed Nov.
12,2014).
2
Appeal 2015-003461
Application 14/012,334
I. The Examiner rejected claims 23—31 and 33—41 under 35
U.S.C. § 103(a) as being unpatentable over Martin (US
4,973,821, iss. Nov. 27, 1990) and Cigelske (US 2004/0095704
Al, pub. May 20, 2004).
II. The Examiner rejected claims 32 and 42 under 35 U.S.C.
§ 103(a) as being unpatentable over Martin, Cigelske, and
Nowak (US 2001/0047987 Al, pub. Dec. 6, 2001).
ANALYSIS
Rejection I
Claim 23—31
Independent claim 23 requires, inter alia, “a control panel. . . having
a single input device configured to allow a user to select a characteristic of
the workpiece.'” Appeal Br. 26 (Claims App.) (emphasis added).
The Examiner finds that Martin discloses a welding apparatus
including “a control panel 10 (figures 3 and/or 4) having a single input
device (col. 2, lines 3-27) configured to allow a user to select a characteristic
of the workpiece (col. 4, lines 65- col. 5, lines 2).” Final Act. 5 (mailed Mar.
26, 2014). According to the Examiner, the phrase “characteristic of a
workpiece” is not defined in the claim, but is construed in light of
Appellant’s Specification. Id. at 3. We note that Appellant’s Specification
describes a “characteristic of a workpiece” as a material thickness or a range
of material thicknesses to be welded. See, e.g., Spec. 10. Thus, the
Examiner finds that because Martin discloses a relationship between heat
input and workpiece type and thickness, Martin discloses a “characteristic of
3
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Application 14/012,334
a workpiece,” as called for by independent claim 23. Ans. 7 (citing Martin,
col. 4,1. 65—col. 5,1. 9).
Appellant argues that in contrast to claim 23, “Martin clearly
illustrates more than a single input device (e.g., a control knob 24 and a trim
dial 40) on the control unit 10.” Appeal Br. 7. Furthermore, Appellant
contends that “there is no suggestion in Martin of any input devices that are
configured to allow a user to select a characteristic of a workpiece.” Id.
According to Appellant, merely because heat input depends on a wide
variety of parameters, including, inter alia, workpiece thickness, this does
not mean that setting the heat input using trim dial 40 means selecting a
characteristic of the workpiece, as called for by independent claim 23.
Reply Br. 4—5 (filed Jan. 12, 2015). Appellant asserts that none of Martin’s
wire feed rate or heat input “may reasonably be interpreted as a
characteristic of a workpiece.” Appeal Br. 8.
We appreciate Appellant’s position that the Specification’s
description of a material thickness or a range of material thicknesses of a
workpiece to be welded constitutes the claimed “characteristic of a
workpiece.” See Reply Br. 3^4 (“single input device ... to select a
characteristic of a workpiece, such as workpiece type, workpiece thickness,
or any other characteristic of a workpiece.”). However, we must be careful
not to read a particular embodiment appearing in the written description into
the claim if the claim language is broader than the embodiment. See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). Although the Specification should be used to interpret the meaning
of a claim, it is improper to confine the claims to the embodiments found in
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Application 14/012,334
the specification. In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299
(Fed. Cir. 2007).
In this case, although Martin’s control knob 24 and trim dial 40 are
not configured to select a material thickness or a range of material
thicknesses of a workpiece to be welded, we do not agree that Martin’s knob
24 and dial 40 are not configured to select a characteristic of the workpiece,
as called for by claim 23. See Appeal Br. 7—8. An ordinary and customary
meaning of the term “characteristic” is “a distinguishing trait, quality, or
property.” Merriam Webster’s Collegiate Dictionary (10th ed. 2005).
Martin discloses that
[o]nce the wire type has been selected for use with a given
workpiece using a specific shielding gas, and the power supply
parameters (including pulse level, background level, pulse and
background slope, inductance, and pulse width) are set, the only
two variables that have a major impact on the quality of the
weld are the wire feed rate and the heat input.
Martin, col. 5,11. 2—9. As welding of a given workpiece requires a specific
heat input, the heat input constitutes a “distinguishing . . . property,” i.e., a
characteristic, of that workpiece when welded. Similarly, because welding
of a given workpiece requires a specific wire feed rate, the wire feed rate
likewise constitutes a “distinguishing . . . property,” i.e., a characteristic, of
that workpiece when welded. As such, both of Martin’s trim dial 40 and
control knob 24 for selecting a heat input and a wire feed rate, respectively,
are “configured to allow a user to select a characteristic of the workpiece,”
as called for by claim 23.
Hence, in contrast to independent claim 23, which requires a “single
input device configured ... to select a characteristic of the workpiece,”
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Appeal 2015-003461
Application 14/012,334
Martin discloses two such input devices, namely, trim dial 40 and control
knob 24. Moreover, the “Examiner concurs with Applicant that Martin
clearly illustrates more than one single input device, i.e. [,] a control knob
(24) and a trim dial (40) on the control unit (10) which allows [a] user to
select input parameters] for [a] welding operation.” Ans. 6—7. Therefore,
we agree with Appellant that Martin does not disclose “a single input
device,” as called for by independent claim 23. See Appeal Br. 7.
The Examiner’s use of Cigelske’s disclosure does not remedy the
deficiency of Martin as discussed supra. See Final Act. 5. Accordingly, we
do not sustain the rejection under 35 U.S.C. § 103(a) of independent claim
23, and claims 24—31 that depend therefrom, as being unpatentable over
Martin and Cigelske. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(If an independent claim is nonobvious under 35 U.S.C. § 103, then any
claim dependent therefrom is nonobvious).
Claims 33—37
In contrast to independent claim 23, in which “a user . . . select[s] a
characteristic of the workpiece,” independent claim 33 is narrower in the
sense that the “user input identif[ies] a material thickness to be welded.”
Appeal Br. 27 (Claims App.).
The Examiner finds that because Martin discloses a relationship
between heat input and workpiece type and thickness, Martin discloses
“receiving user input identifying a material thickness to be welded.” See
Ans. 7 (citing Martin, col. 4,1. 65—col. 5,1. 9).
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Application 14/012,334
Appellant argues that “Martin does not teach or suggest an input
device that is configured to allow selection of a material thickness to be
welded.” Appeal Br. 10.
Although we appreciate the Examiner’s position that heat input is a
function of workpiece thickness and wire feed rate, we do not agree that
Martin’s control unit 10 is configured to “receive a user input identifying a
material thickness to be welded,” as called for by independent claim 33.
Appellant is correct in that material thickness is merely one of several
parameters that affects heat input. See Appeal Br. 10. Therefore, a user
selecting a heat input does not mean that the selection identifies a material
thickness to be welded, as called for by claim 33, as opposed to identifying
any of the other myriad of parameters that affect heat input as taught by
Martin. See Martin col. 4,1. 65—col. 5,1. 2. Rather, Martin’s control unit 10
is configured to receive a user input identifying a wire feed rate, via control
knob 24, and/or a heat input, via trim dial 40. See id., col. 4,11. 47—52, col.
6,11.31-38.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a)
of independent claim 33, and claims 34—37 that depend therefrom, as being
unpatentable over Martin and Cigelske.
Claims 38 and 39
Independent claim 38 requires, inter alia, “[a] tungsten inert gas (TIG)
welding power source [having] a single means for receiving a user input
identifying a value for an operating parameter relating to a material
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Application 14/012,334
thickness or a range of material thicknesses to be welded.” Appeal Br. 28
(Claims App.).
Appellant argues that:
First, there is no discussion of TIG welding systems in Martin,
and there is no suggestion that the techniques described in
Martin may be extended to TIG welding systems. Second,
Martin clearly illustrates more than a single input device (e.g., a
control knob 24 and a trim dial 40) on the control unit 10.
Third, there is no suggestion in Martin of any means for
receiving a user input identifying a value for an operating
parameter relating to a material thickness or range of material
thicknesses to be welded.
Appeal Br. 11—12.
In regards to Appellant’s first argument, we agree with the Examiner
that
even though Martin does not specifically disclose TIG
welding[,] Martin’s teaching can be extended to TIG welding
system due to Martin teaching] all the requirements which can
be used to perform TIG welding such as electrode, shielding
gas like argon or helium, type of welding wires, type and
thickness of workpieces and material being welded (col. 1, lines
15-68; col. 10, lines 25-32).
Ans. 6. Appellant does not persuasively show error in the Examiner’s
findings and reasoning.
As to Appellant’s second and third arguments, although we appreciate
that Martin’s control unit 10 includes both control knob 24 and trim dial 40,
we note that only trim dial 40 constitutes a “single means for receiving a
user input identifying a value for an operating parameter relating to a
material thickness or a range of material thicknesses to be welded,” because
control knob 24 selects a wire feed rate, which is Martin does not disclose as
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Application 14/012,334
relating to a material thickness. See, e.g., Martin, col. 4,1.47—52. We do not
agree with Appellant’s position that claim 38 requires “a user to input a
‘material thickness or a range of material thicknesses to be welded.’”
Appeal Br. 13. It is well established that limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). Here, claim 38 requires a user to input “a value for an
operating parameter relating to a material thickness or a range of material
thicknesses to be welded.” See Appeal Br. 28 (Claims App.). Using
Martin’s trim dial 40, a user inputs a value of the heat input, which is an
operating parameter for Martin’s welding process, and as Martin discloses
that the heat input is a function of the workpiece thickness, the heat input
value in Martin relates4 to the material thickness. See Martin, col. 4,1. 65-
col. 5,1. 2, col. 6,11.31-38.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 38 as being unpatentable
over Martin and Cigelske.
With respect to the rejection of claim 39, Appellant does not set forth
any other substantive arguments. See Appeal Br. 11—24. Therefore, we also
sustain the rejection of claim 39 over the combined teachings of Martin and
Cigelske.
4 An ordinary and customary meaning of the term “relate” is “to show or
establish logical or causal connection between.” Merriam Webster’s
Collegiate Dictionary (10th ed. 2005).
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Appeal 2015-003461
Application 14/012,334
Claims 40 and 41
Appellant argues that Martin fails to disclose a multi-positional knob
that is rotatable between input positions that identify a “material thickness to
be welded,” as per claim 40, or a “range of material thicknesses,” as per
claim 41. See Appeal Br. 14, 20.
Martin’s control unit 10 is configured to receive a user input
identifying a wire feed rate, via control knob 24, and a heat input, via trim
dial 40. See Martin, col. 4,11. 47—52, col. 6,11. 31—38. As such, neither
control knob 24 nor trim dial 40 identify a “material thickness to be
welded,” as per claim 40, or a “range of material thicknesses,” as per claim
41.
Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 40 and 41 as being unpatentable over Martin and Cigelske.
Rejection II
In regards to claim 32, the Examiner’s use of Nowak’s disclosure does
not remedy the deficiency of the Examiner’s rejection based upon the
combined teachings of Martin and Cigelske discussed supra. See Final Act.
7-8.
As to the rejection of claim 42, we note that similar to claims 40 and
41 discussed supra, claim 42 requires, inter alia, a “knob position [that]
corresponds to the material thickness to be welded.” Appeal Br. 29 (Claims
App.). We thus agree with Appellant, for similar reasons as discussed
above, that “the cited references do not teach or suggest any input devices
that are configured to allow a user to select a material thickness to be
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Application 14/012,334
welded.” Appeal Br. 23. As Martin’s control unit 10 is configured to
receive a user input identifying a wire feed rate, via control knob 24, and a
heat input, via trim dial 40, neither control knob 24 nor trim dial 40 can be
located at a position that “corresponds to the material thickness to be
welded,” as called for by claim 42. See Martin, col. 4,11. 47—52, col. 6,11.
31-38.
In conclusion, for the foregoing reasons, we also do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 32 and 42 as unpatentable over
Martin, Cigelske, and Nowak.
SUMMARY
The Examiner’s decision to reject claims 23—31 and 33—41 is affirmed
as to claims 38 and 39, and reversed as to claims 23—31, 33—37, 40, and 41.
The Examiner’s decision to reject claims 32 and 42 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)(l)(iv).
AFFIRMED-IN-PART
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