Commissioner's Decision
NON-STATUTORY, SECTION 2 Welder Control System
A digital welder control system for an automotive assembly line where
the steps of manually setting the address selectors to the address
location of the memory and manually setting the data selector for the
maintenance interval counter and compensator is within a patentable field
of art.
Final Action Reversed.
This decision deals with Applicant's request for review by the
Commissioner of Patents of the Final Action on application 372,358 (class
327-105) filed March 5, 1981 and is a division of application 305,237 now
Canadian Patent 1,128,143. It is assigned to Square D. Company and is
entitled "Digital Welder Control System". The inventors are J.A. Dix,
M.A. Guettel and M. Aslin. The Examiner in charge issued a Final Action on
November 19, 1982 refusing to allow the application. A Hearing was
originally requested but it was subsequently withdrawn by Applicant's
letter dated October 8, 1985.
The subject matter of the application relates a digital welder control
system for the automotive industry on an assembly line. Figure 1 is shown
below.
(See formula 1)
Alternating current flows through L1 and L2 via circuit breaker 14 to the
primary of the welding transformer through thyristor contactor 16 and to
power panel 18 by cable 7PL. Logic panel 20 contains a microprocessor
board 22 and an input/output board 24. Sequence module 26 provides a means
for entering the weld schedule and interrogates the microprocessor. It
also displays a diagnostic message readout and includes the operator
controls of the welding controller.
In the Final Action the Examiner refused allowance of the claims for being
directed to a method of programming a computer (non-statutory subject
matter) and for being redundant in view of protection granted in the parent
application now patent 1,128,143. That action stated (in part):
Assuming, however, for the sake of argument, that the
process of claim 1 were not programming but only a
method of "entering parameters" into a digital system,
would it then be any more patentable? It would not,
because the operation of the switches and address
wheels is expected skill. There is nothing ingenious
or unobvious in the combination of the four steps
listed above. They are just as obvious to anyone
skilled in the art, as are the steps of operating the
above pre-programmed pocket calculator, illustrated on
the attached photocopy. Every student in school per-
forms these steps every day when he operates his cal-
culator or enters the necessary parameters to have the
calculator perform a specified pre-programmed func-
tion.
It is held again that the "programming" of a digital
welder control system or the "entering of parameters"
into its RAM, or just a plain straightforward
"operation" of the system, or whatever else one might
choose to call it, is obvious because "it represents
just some expected skill combined with mental
activity" as was pointed out at the end of paragraph 1
on page 2, of the last Office Action.
Claims 1 and 2 are therefore again refused.
In the last Office Action, claims 1 and 2 are also
rejected as being redundant. In his above letter,
applicant strongly objects to that rejection and
points out, that the claims in "the parent application
are apparatus claims... of a different scope" and the
"Applicant is entitled to such method claims and
entitled to protect his invention...". This, of
course may be so, but applicant obviously is unaware
of the fact that in the parent, now Canadian Patent
1,128,143, he was already granted protection for both
for the apparatus and for the method of controlling a
welding system.
It is therefore again held that applicant's invention,
including the method, is adequately protected by his
above patent and therefore present claims 1 and 2 are
rejected as redundant.
In response to the Final Action the Applicant added a new claim and stated
(in part):
Claim 1 clearly discloses data entering steps and not
program entering steps; the applicant is proposing a
method of entering data into the data memory and not
programming the microprocessor or any other part of
the apparatus. The program is already in the program
memory of the microprocessor and is not in any way
accessible to the operator, who is entering the data,
for the purposes of modification or change. The pro-
grammer is only capable of submitting timing period
and welding constants data are being submitted into
the data memory of the microprocessor.
It is also submitted that the combination of steps
defined in the present claim are not similar to the
steps performed on such apparatus as pre-programmed
calculators, as the examiner insists. The mental
operations of operating an apparatus such as a calcu-
lator are subject to unverifiable error; that is not
the case with the method as described in Claim 1. An
apparatus such as a pre-programmed calculator does not
have the capacity of verifying data between limits set
and distinguished by a program within the read-only
memory, and this has an effect upon the method of
entering data. The method of operating a pre-
programmed calculator is not the same as the method of
entering data into the welding apparatus as described
in claim 1.
It is also submitted that Claim 1 is not redundant
with Canadian Patent 1,128,143. This patent has
several claims that refer to the apparatus and only a
single method claim; the method claim does not
disclose a method of entering data into the data
memory and is therefore of a different scope.
Claim 2 discloses a method according to Claim 1 which
further includes a method of automatically increasing
the weld heat after a present number of welds. This
method is not a method of programming either, but is a
method of entering information that causes the
apparatus to pre-empt entered weld heat constants for
weld constants entered into the maintenance interval
counter and compensator memory location in the micro-
processor. The scope of the method as disclosed in
Claim 2 is not redundant with any of the claims in
Canadian Patent 1,128,143.
The issues before the Board are whether or not the claims are directed to
non-statutory subject matter and are redundant in view of the issued parent
application. Claim 1 reads:
In the digital welder control for controlling a
portable gun welder of the type used in automotive
industry in an assembly line having a microprocessor
with a data memory and a program memory as its main
control element, a sequence module including a
run/program key switch, address selectors manually
actuateable to select an address location in the data
memory, data selectors manually actuateable to select
timing period and weld constants data to be entered
into the selected address locations and an enter/reset
switch for entering the selected data into the
selected address locations, and a data entry worksheet
containing the timing period and welding heat
constants to be used in a weld sequence and address
locations associated therewith, a method of entering
data into the data memory, comprising the steps of:
setting the run/program key switch to the program
position;
manually setting the address selectors to an address
location of the memory associated with the timing
period and weld constants data desired to be entered;
manually setting the data selector to select the
timing period and weld constants data associated with
the address locations selected by the address selector
and which are associated therewith and actuating the
enter/reset switch to enter the selected data into the
data memory for controlling a weld sequence.
Refusal of the claims for being directed to non-statutory subject matter
namely to a method of programming a computer, was made in the Final
Action. The applicant responds that the claims clearly relate to data
entering steps into the data memory which is not programming the
microprocessor or any other part of the apparatus. Guidance in assessing
computer related subject matter is found in Schlumberger Canada Ltd. v.
Commissioner of Patents (1981) 56 C.P.R. 204 where Pratte J. stated:
In order to determine whether the application discloses
a patentable invention, it is first necessary to
determine what, according to the application, has been
discovered.
and
I am of opinion that the fact that a computer is or
should be used to implement discovery does not change
the nature of that discovery.
A review of claim 1 shows a recital of components in a digital welder con-
trol system and a method manipulating them for entering data into the data
memory which permits control of the apparatus for a weld sequence. We note
from the disclosure that the control system includes components responsive
to signals for detecting malfunction within the system and for generating
diagnostic signals corresponding to the detected malfunction. Six common
problems encountered by welding controllers which are difficult to diagnose
were selected and circuitry to highlight and identify each problem for the
operator is provided. This enables an operator to enter the desired times
and heat for the weld sequences into the controller by entering data into
the data memory as set out in claim 1. In assessing the subject matter of
the rejected claims, we are persuaded that the steps of manually setting
the address selectors to the address location of the memory and manually
setting the data selector for the maintenance interval counter and compen-
sator of the welder control system represents a type of subject matter that
falls within a patentable field of art. This also applies to newly sub-
mitted claim 3.
The Final Action refused the claims for being redundant in view of claims
allowed in the parent application now Canadian Patent 1,128,143. It states
that the patent granted protection "for the apparatus and for the method of
controlling a welding system". Responding to this refusal the Applicant
points out that the patent has several claims to the apparatus and only a
single method claim which sets out some steps relating to apparatus
control. We note that the claims in this application relate to a method of
manipulating the entry of data to provide weld constants data to be entered
into selected locations to be used in a weld sequence at the address
location associated therewith. Consequently we do not find an objection on
the basis of redundancy.
In summary, we recommend that the refusal of the claims for being directed
to non-statutory subject matter and for being redundant be withdrawn.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal
Board. Accordingly, I withdraw the rejection of the application and I
remand it for prosecution consistent with the recommendation.
J.H. A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 10th day of June 1987,
Fetherstonhaugh & Co.
439 University Avenue
Toronto, Ontario
M5G 1Y8