Thomas Bunker et al.

Patent Trials and Appeals BoardJun 2, 2021

2020006411 (P.T.A.B. Jun. 2, 2021)

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. 13/538,835 06/29/2012 Thomas A. Bunker 62302US01 (60905-US) 1082 149749 7590 06/02/2021 ITW c/o MCANDREWS HELD & MALLOY 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER ROSARIO-APONTE, ALBA T ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS A. BUNKER, ALAN A. MANTHE, ANTHONY V. SALSICH, MICHAEL DAVID MADSEN, and BRUCE PATRICK ALBRECHT Appeal 2020-006411 Application 13/538,835 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and CARL M. DEFRANCO, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 7–11, 20–22 and 24–32. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Illinois Tool Works Inc. Appeal Br. 1. Appeal 2020-006411 Application 13/538,835 2 CLAIMED SUBJECT MATTER The claims are directed “to a DC-powered welding system.” Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system, comprising: a distributed direct current (DC) bus coupled to a plurality of power sources that provide power to the distributed DC bus; and a welding-type system comprising: a DC input plug comprising one or more contacts, wherein the DC input plug is configured to make and break a DC connection between the distributed DC bus and the welding-type system; a welding output configured to provide welding power; circuitry configured to condition DC power received from the distributed DC bus via the DC input plug into welding power, the circuitry comprising: a contactor configured to isolate the welding-type system from the distributed DC bus comprising a pre-charge relay configured to limit an incoming DC current into the welding type system during a power up condition to a threshold current limit; and a controller electrically coupled to the contactor via feedback and control lines, wherein the controller is configured to control operation of the contactor using feedback and control signals via the feedback and control lines. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ashton US 4,247,751 Jan. 27, 1981 Geissler US 6,329,636 B1 Dec. 11, 2001 Tezuka US 7,368,829 B2 May 6, 2008 Geissler US 2009/0101637 A1 Apr. 23, 2009 Beeson US 2010/0314181 A1 Dec. 16, 2010 Appeal 2020-006411 Application 13/538,835 3 REJECTIONS Claims 1–3, 7–11 and 32 are rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Beeson (US 2010/0314181) in view of Geissler (US 6,329,636). Final Act. 2. Claims 20–23 are rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Beeson in view of Geissler. Final Act. 6. Claims 24–26, 28 and 29 are rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Beeson in view of Tezuka (US 7,368,829), and further in view of Geissler. Final Act. 8. Claim 27 is rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Beeson, Tezuka and Geissler as set forth above, and further in view of Ashton (US 4,247,751). Final Act. 12. Claim 30 is rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Beeson and Geissler, as set forth above, and further in view of Sickels. Final Act. 12. OPINION Obviousness The Examiner finds that Beeson teaches all of the claimed limitations except for the claimed contactor. Final Act. 2. The Examiner then finds that Geissler teaches the claimed contactor, asserting that “a contactor/relay is inherently present to bypass the pre-charge resistor.” Final Act. 3. The Examiner further explains that according to “the broadest reasonable interpretation, Examiner construes contactor as a switch.” Ans. 16. Appellant takes issue with this interpretation of Geissler for at least two reasons. First, Appellant asserts that even if a switch were present in Geissler, “the Examiner still has not provided any reason why the allegedly Appeal 2020-006411 Application 13/538,835 4 inherent switch would also be ‘configured to isolate the welding-type system from the distributed DC bus’ and comprise a ‘pre-charge relay configured to limit an incoming DC current into the welding type system during a power up condition to a threshold current limit’” as claimed. Reply Br. 2. Appellant further argues that “[a] switch does not necessarily have these features, and accordingly even if a contactor was just a switch, Geissler would not inherently included the claimed features.” Id. We agree with Appellant that the Examiner has not adequately explained how the mere alleged presence of a switch in Geissler would meet the claimed features. Appellant also asserts that “even if a contactor was just a switch, as the Examiner alleges, Geissler still would not inherently include a switch.” Id. According to Appellant, “there are other ways to bypass a switch besides a contactor as claimed…such as a thermistor” and Geissler does not specifically disclose what is used to bypass the precharge resistor. Id. A thermistor is simply a resistor whose resistance is strongly dependent on temperature and is not a switch. Inherency requires that a certain element necessarily be present. As Appellant has shown, a switch is not the only way to bypass a precharge resistor, and because Geissler does not disclose the specific manner in which the resistor is bypassed, we cannot assume that Geissler necessarily has a switch. Accordingly, we do not sustain the Examiner’s rejection of claim 1. All of the rejections rely on this combination of Beeson and Geissler and the secondary references do not cure this deficiency. As such, we likewise do not sustain the Examiner’s remaining rejections. CONCLUSION The Examiner’s rejections are REVERSED. Appeal 2020-006411 Application 13/538,835 5 More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 7–11, 32 103(a) Beeson, Geissler 1–3, 7–11, 32 20–23 103(a) Beeson, Geissler 20–23 24–26, 28, 29 103(a) Beeson, Geissler, Tezuka 24–26, 28, 29 27 103(a) Beeson, Geissler, Tezuka, Ashton 27 30 103(a) Beeson, Geissler, Sickels 30 Overall Outcome 1–3, 7–11, 20–30, 32 REVERSED