Ex Parte SickelsDownload PDFPatent Trial and Appeal BoardMar 15, 201714012334 (P.T.A.B. Mar. 15, 2017) 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. 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 Appeal 2015-003461 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 4 Appeal 2015-003461 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,” 5 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). 6 Appeal 2015-003461 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 7 Appeal 2015-003461 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 8 Appeal 2015-003461 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). 9 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 10 Appeal 2015-003461 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 11 Copy with citationCopy as parenthetical citation