Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-8, 11-15, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, 8, 9, 11, 12, 14-17, 19, 20 of U.S. Patent No. 11,420,285. Although the claims at issue are not identical, they are not patentably distinct from each other because. Claims 1 and 3 contain the exact same limitations as claim 1 of the patent. Claim 1 of the present application add and alternative of “or output a signal to the wire feeder to stop feeding the welding wire forward for the first time period.” However, this alternative would not need to be considered.
Claims 4-7 of the present application contain the same limitations as claims 3, 5, 6, 8 of the patent.
Claims 8 and 11 contain the exact same limitations as claim 8 of the patent. Claim 8 of the present application add and alternative of “or output a signal to the wire feeder to stop feeding the welding wire forward for the first time period.” However, this alternative would not need to be considered.
Claims 12-14 of the present application contain the same limitations as claims 11, 12, 14 of the patent. The difference being the second and third time periods in claims 13 and 11. The patent does not contain a second time period, only a third and fourth time period. Therefore, the second and third time periods in the application are considered to be equivalent to the third and fourth time periods in the patent.
Claims 15 and 17 contain the exact same limitations as claim 8 of the patent. Claim 8 of the present application add and alternative of “or output a signal to the wire feeder to stop feeding the welding wire forward for the first time period.” However, this alternative would not need to be considered.
Claims 18-20 of the present application contain the same limitations as claims 16, 19, 20 of the patent.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 15, the claims recite “control circuitry configured to”. The specification fails discloses a positioning member in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claim subject matter at the time of filing. Structure from the specification that is “read into” the claims to support the claimed functional language includes the following: “In the example of FIGS. 1 and 2, the welding-type power supply 108 includes power conversion circuitry 132 configured to convert the input power to output power (e.g., welding-type output power and/or other power). In some examples, the power conversion circuitry 132 may include circuit elements (e.g., transformers, rectifiers, capacitors, inductors, diodes, transistors, switches, and so forth) capable of converting the input power to output power. In the example of FIG. 2, the power conversion circuitry 132 includes one or more controllable circuit elements 204. In some examples, the controllable circuit elements 204 may comprise circuitry configured to change states (e.g., fire, turn on/off, close/open, etc.) based on one or more control signals. In some examples, the state(s) of the controllable circuit elements 204 may impact the operation of the power conversion circuitry 132, and/or impact characteristics (e.g., current/voltage magnitude, frequency, waveform, etc.) of the output power provided by the power conversion circuitry 132. In some examples, the controllable circuit elements 204 may comprise, for example, switches, relays, transistors, etc. In examples where the controllable circuit elements 204 comprise transistors, the transistors may comprise any suitable transistors, such as, for example MOSFETs, JFETs, IGBTs, BJTs.” (See Paragraph [0020]). Also “weld controller”, “one or more sensors to monitor the current and/or voltage”. The specification must explain how the control circuitry is configured to achieve the claimed function. There are no limitations in the specification to indicate how the control circuitry is configured in order to perform the functional language. The specification fails to teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
Claims 1-7, 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 15, the claims recite “control circuitry configured to”. The specification fails discloses a positioning member in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claim subject matter at the time of filing. Limitations from the specification must be read into the claims in order to determine the metes and bounds of the claim. It is unclear how the control circuitry must be configured, and which elements are used, in order to perform the functional language. The specification must explain how the control circuitry is configured to achieve the claimed function. There are no limitations in the specification to indicate how the control circuitry is configured in order to perform the functional language. The specification fails to teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim limitation “welding-type power supply configured to” and “control circuitry configured to” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
In claims 1 and 15, the generic place holder is “welding type power supply” and the functional limitation attributed to the welding type power supply is, detect an end of a welding process, in response to detecting the end of the welding process, output a signal to control a current magnitude of the power to a magnitude above zero, and output a signal to the wire feeder to feed the welding wire forward, detect a contact between the welding wire and the workpiece, in response to detecting the contact, output a signal to the wire feeder to feed the welding wire forward for a first time period or first distance, and in response to the first time period or first distance expiring, retract the welding wire. The term ““welding type power supply” power supply is considered to lack structure as it is not clear what is meant by “welding-type”.
In claims 1 and 15, the generic place holder is “control circuitry” and the functional limitation attributed to the welding type power supply is, detect an end of a welding process, in response to detecting the end of the welding process, output a signal to control a current magnitude of the power to a magnitude above zero, and output a signal to the wire feeder to feed the welding wire forward, detect a contact between the welding wire and the workpiece, in response to detecting the contact, output a signal to the wire feeder to feed the welding wire forward for a first time period or first distance, and in response to the first time period or first distance expiring, retract the welding wire. The term “control circuitry does not imply and structure and is not modified by any structure in the claim which for performing the functional language.
Structure from the specification that is “read into” the claims to support the claimed functional language includes the following: “In the example of FIGS. 1 and 2, the welding-type power supply 108 includes power conversion circuitry 132 configured to convert the input power to output power (e.g., welding-type output power and/or other power). In some examples, the power conversion circuitry 132 may include circuit elements (e.g., transformers, rectifiers, capacitors, inductors, diodes, transistors, switches, and so forth) capable of converting the input power to output power. In the example of FIG. 2, the power conversion circuitry 132 includes one or more controllable circuit elements 204. In some examples, the controllable circuit elements 204 may comprise circuitry configured to change states (e.g., fire, turn on/off, close/open, etc.) based on one or more control signals. In some examples, the state(s) of the controllable circuit elements 204 may impact the operation of the power conversion circuitry 132, and/or impact characteristics (e.g., current/voltage magnitude, frequency, waveform, etc.) of the output power provided by the power conversion circuitry 132. In some examples, the controllable circuit elements 204 may comprise, for example, switches, relays, transistors, etc. In examples where the controllable circuit elements 204 comprise transistors, the transistors may comprise any suitable transistors, such as, for example MOSFETs, JFETs, IGBTs, BJTs.” (See Paragraph [0020]). Also “weld controller”, “one or more sensors to monitor the current and/or voltage”.
However, there are no limitations in the specification to indicate how the control circuitry is configured in order to perform the functional language.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-12, 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Henry et al (US 2016/0221105).
Henry discloses: regarding claims 1 and 3, a welding system (see figs), comprising: a welding-type power supply (110) configured to provide power to a welding torch (power is provided via power supply 110 to torch 220), the welding torch configured to receive welding wire from a wire feeder and provide the power to the welding wire to establish an electrical arc between the welding wire and a workpiece (Figs 1 and 2 show a welding wire being fed through the torch 220 via a wire feeder 130 and an arc is established between the wire and workpiece as shown in Fig 2), the welding-type power supply comprising control circuitry configured to (Fig 1 shows circuitry for performing functions of the welding device. See Paragraph [0017], [0037]: detect an end of a welding process, (an end of a welding process is detected at stage II, See Paragraph [0025]) in response to detecting the end of the welding process, output a signal to control a current magnitude of the power to a magnitude above zero, (a material transfer routine is executed which must involve an increase in current as shown in Fig. 4, See Paragraph [0027]) and output a signal to the wire feeder to feed the welding wire forward, detect a contact between the welding wire and the workpiece, in response to detecting the contact, output a signal to the wire feeder to feed the welding wire forward for a first time period or first distance, (Fig 3 shows the wire being advanced in response to contact with the workpiece being detected and is fed forward for a period of time.) in response to the first time period or first distance expiring, retract the welding wire. (Fig 3 at step VII shows the wire being retracted. The flow chart in Fig 5 also shows the claim. The wire is advanced forward at the end and touches the workpiece from 520 to 530, then will retract the wire at step 540.)
Regarding claim 2, Fig 4 shows the cessation of contact being detected via the lack of a short and the current magnitude is decreased as shown in ‘E’ in Fig 4. The wire transfer routine is for cleaning residue off the wire. See Paragraph [0038]) Regarding claims 4 and 6, detecting the cessation of contact between the welding wire and the workpiece comprises detecting an increase in voltage corresponding to cessation of a short circuit. (A current is increased until a voltage spike is sensed which indicates the clearing of the short. See Paragraph [0030]) Regarding claim 5, the wire is retracted for a specific time and distance. (See Paragraph [0029]) Regarding claim 7, the end of the welding may be detected by the release of a trigger. (See Paragraph [0019])
Henry discloses: regarding claim 8, 9, 11, a welding system (see figs), comprising: a welding-type power supply (110) configured to provide power to a welding torch (power is provided via power supply 110 to torch 220), the welding torch configured to receive welding wire from a wire feeder and provide the power to the welding wire to establish an electrical arc between the welding wire and a workpiece (Figs 1 and 2 show a welding wire being fed through the torch 220 via a wire feeder 130 and an arc is established between the wire and workpiece as shown in Fig 2), the welding-type power supply comprising control circuitry configured to (Fig 1 shows circuitry for performing functions of the welding device. See Paragraph [0017], [0037]: detect an end of a welding process, (an end of a welding process is detected at stage II, See Paragraph [0025]) in response to detecting the end of the welding process, output a signal to control a current magnitude of the power to a magnitude above zero, (a material transfer routine is executed which must involve an increase in current as shown in Fig. 4, See Paragraph [0027]) and output a signal to the wire feeder to feed the welding wire forward, detect a contact between the welding wire and the workpiece, in response to detecting the contact, output a signal to the wire feeder to feed the welding wire forward for a first time period or first distance, (Fig 3 shows the wire being advanced in response to contact with the workpiece being detected and is fed forward for a period of time.) in response to the first time period or first distance expiring, retract the welding wire. (Fig 3 at step VII shows the wire being retracted.)
Regarding claim 10, Fig 4 shows the cessation of contact being detected via the lack of a short and the current magnitude is decreased as shown in ‘E’ in Fig 4. The wire transfer routine is for cleaning residue off the wire. See Paragraph [0038]) Regarding claims 12, detecting the cessation of contact between the welding wire and the workpiece comprises detecting an increase in voltage corresponding to cessation of a short circuit. (A current is increased until a voltage spike is sensed which indicates the clearing of the short. See Paragraph [0030]). Regarding claim 14, the end of the welding may be detected by the release of a trigger. (See Paragraph [0019])
Henry discloses: regarding claim 15, 17 a welding system (see figs), comprising: a welding-type power supply (110) configured to provide power to a welding torch (power is provided via power supply 110 to torch 220), the welding torch configured to receive welding wire from a wire feeder and provide the power to the welding wire to establish an electrical arc between the welding wire and a workpiece (Figs 1 and 2 show a welding wire being fed through the torch 220 via a wire feeder 130 and an arc is established between the wire and workpiece as shown in Fig 2), the welding-type power supply comprising control circuitry configured to (Fig 1 shows circuitry for performing functions of the welding device. See Paragraph [0017], [0037]: detect an end of a welding process, (an end of a welding process is detected at stage II, See Paragraph [0025]) in response to detecting the end of the welding process, output a signal to control a current magnitude of the power to a magnitude above zero, (a material transfer routine is executed which must involve an increase in current as shown in Fig. 4, See Paragraph [0027]) and output a signal to the wire feeder to feed the welding wire forward, detect a contact between the welding wire and the workpiece, in response to detecting the contact, output a signal to the wire feeder to feed the welding wire forward for a first time period or first distance, (Fig 3 shows the wire being advanced in response to contact with the workpiece being detected and is fed forward for a period of time.) in response to the first time period or first distance expiring, retract the welding wire. (Fig 3 at step VII shows the wire being retracted.)
Regarding claim 16, Fig 4 shows the cessation of contact being detected via the lack of a short and the current magnitude is decreased as shown in ‘E’ in Fig 4. The wire transfer routine is for cleaning residue off the wire. See Paragraph [0038]) Regarding claims 18, 19, detecting the cessation of contact between the welding wire and the workpiece comprises detecting an increase in voltage corresponding to cessation of a short circuit. (A current is increased until a voltage spike is sensed which indicates the clearing of the short. See Paragraph [0030]). Regarding claim 20, the end of the welding may be detected by the release of a trigger. (See Paragraph [0019])
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN W JENNISON whose telephone number is (571)270-5930. The examiner can normally be reached M-Th 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at 571-270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN W JENNISON/Primary Examiner, Art Unit 3761 1/20/2026