Ex Parte 6841754 et al

Patent Trial and Appeal Board

Oct 31, 2017

95001979 (P.T.A.B. Oct. 31, 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.
95/001,979 04/25/2012 6841754 CTT-002RX 4722
42532 7590 10/31/2017
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

AMERICAN TORCH TIP CO.
Requester

v.

HYPERTHERM, INC.
Patent Owner
____________________

Appeal 2017-011045
Inter partes Reexamination Control 95/001,979
Patent US 6,841,754 B2
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

NEW DECISION UNDER 37 C.F.R. § 41.77(f)

In response to the Board’s Decision on Appeal entered July 30, 2015,1
the Patent Owner requested reopening of prosecution under 37 C.F.R.
§ 41.77(b)(1) in its Amendment and Response to Decision on Appeal, filed

1 Appeal 2015-001532, hereinafter “Original Decision” or “Orig. Dec.”
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August 31, 20152 (Reopen Req. 9). In the Original Decision, the Board,
inter alia, reversed the Examiner’s refusal to reject claims 70–80, 83–87,
and 101 as obvious over U.S. Patent No. 6,452,130 to Qian et al., and
denominated the reversal as a New Ground of Rejection under 37 C.F.R.
§ 41.77(b) (Orig. Dec. 22).
The Patent Owner’s Reopen Request amended claims 70, 71, 85–87,
and 101 (Reopen Req. 3–6, 10–11), and included arguments in support of
patentability of the amended claims relying on newly submitted evidence
consisting of Declaration of David J. Cook and Declaration of E. Smith
Reed. The remaining claims subject to the new ground of rejection in the
Original Decision ultimately depend from one of the amended independent
claims. In response to the Reopen Request, the Requester filed a Response
to Patent Owner’s Amendment and Response to Decision on Appeal, on
September 30, 2015, which disputes the Patent Owner’s assertions of
patentability.
The Reopen Request with its amendments and arguments, together
with the declarations, as well as the Requester’s Response, were entered for
consideration by the Examiner in the Order Remanding Inter Partes
Reexamination, mailed August 17, 2016. The Examiner issued the
Examiner’s Determination Pursuant to 37 C.F.R. § 41.77(d) on February 22,
2017 (hereinafter “Ex. Det.”), but neither the Patent Owner nor the
Requester filed any comments under 37 C.F.R. § 41.77(e) in response.
Accordingly, the reexamination proceeding has been returned to the Board
for issuance of a New Decision under 37 C.F.R. § 41.77(f). A New Decision

2 Hereinafter “Reopen Request” or “Reopen Req.”
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“is deemed to incorporate the earlier decision, except for those portions
specifically withdrawn.” 37 C.F.R. § 41.77(f).

ORIGINAL DECISION
The claims at issue in the Original Decision relative to claims 70–80,
83–87, and 101, recited that forward and aft portions of the electrode body
are “in direct contact with each other, the direct contact being formed by
direct welding,” or recited similar language. As noted, the Board reversed
the Examiner’s refusal to reject claims 70–80, 83–87, and 101 as obvious
over Qian in the Original Decision, concluding that “direct welding such as
ultrasonic welding was a known method of joining surfaces together.
Correspondingly . . . utilizing this technique of joining surfaces for the
electrode of Qian[] in order to join silver separator 32 with copper holder 16
would have been an obvious substitution of one known technique for
another.” (Orig. Dec. 15, citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
415–17 (2007)). In particular, the Board concluded that:
It would have been obvious for a person of ordinary skill in the
art to join silver separator 32 with copper holder 16 in Qian
using an alternative known method such as direct welding (e.g.,
ultrasonic welding). The use of direct welding would have
been a predictable variation of Qian’s teachings, which
included a brazing method making use of a secondary material
between the silver and copper portions.
(Orig. Dec. 15–16).
The Board further found the Patent Owner’s arguments based on
performance data shown in Figure 3 of the ’754 patent unpersuasive for a
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variety of reasons (Orig. Dec. 17–19), and found the Requester’s technical
arguments persuasive (Orig. Dec. 19–21).

ANALYSIS
Preliminarily, we note that only those arguments presented have been
considered in this decision. Arguments that could have been made have not
been considered and are deemed to be waived. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011); see also Ex parte Frye, 94 USPQ2d 1072,
1075–76 (BPAI 2010) (precedential). In addition, while we have fully
considered all of the evidence of record, including the declarations, we cite
to the Patent Owner’s Reopen Request in the analysis below, which cites to
specific portions of the evidence in support of the facts and contentions set
forth therein.
In the Reopen Request, the Patent Owner amended independent
claims 70, 71, 87, and 101, which were subject to the New Ground of
Rejection, to add the limitations specifically reciting “leak-proof joint,”
“liquid coolant,” and “friction welding.” (Reopen Req. 3–6, 10–11, 13).
For example, independent claim 70 has been amended to now recite:
the forward portion comprising a second metallic material and
having a second mating surface configured to form a leak-proof
joint by joining with the first mating surface such that an
interior surface of the forward portion is directly cooled by a
liquid coolant, the first and second mating surfaces being in
direct contact with each other, the direct contact being formed
by direct friction welding the first and second mating surfaces
to each other.
(Reopen Req. 3).

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Qian
The Patent Owner’s arguments are generally directed to the newly
added “friction welding” recitation, and to the manufacturing technique
disclosed in Qian that uses brazing. The Patent Owner argues that
“[m]odifying Qian’s manufacturing technique to direct weld (e.g., friction
weld) the silver separator to the copper holder would have frustrated the
intended purpose/principle mode of operation of Qian’s invention,” and
applying friction welding “would have required a complete redesign and
reconfiguration that would have made Qian’s process more complex/costly.”
(Reopen Req. 18, 19). According to the Patent Owner, the suggested
modification “would have changed the principle purpose and operation of
Qian’s invention. Qian’s manufacturing method describes a connection and
sealing technique (i.e., brazing) that cannot be replicated by friction welding
alone without contradicting the intended purpose and design goals of Qian,”
which includes “independently positioning and aligning the emitter into the
blank (prior to and without influence of the separator) and brazing the
separator into the blank to effectively braze joints between all components.”
(Reopen Req. 19; see also Decl. Reed ¶¶ 17–19; Reopen Req. 32–34).
This line of argument is not persuasive because Qian is not limited to
a particular method of manufacturing an electrode, but is also directed to the
electrode device (see Qian, Abstract; col. 5, l. 7–col. 7, l. 45). In fact,
majority of the claims of Qian are actually directed to an electrode/plasma
arc torch device, most of these device claims not reciting any limitation
pertaining to brazing (see Qian, Claims). Indeed, even most of the method
claims of Qian do not recite any limitation pertaining to brazing. While the
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Detailed Specification of Qian may teach a preferred or best mode for
manufacturing the disclosed electrode/plasma arc torch utilizing brazing,
Qian is clearly not limited to such a technique. A person of ordinary skill in
the art in reviewing Qian would have recognized that the brazing technique
disclosed therein was a way to attain the ultimate goal of affixing the holder,
separator, and insert of the disclosed electrode/plasma arc torch together,
and that other techniques for affixing these components might be used in
manufacturing the electrode/plasma arc torch disclosed in Qian.
The Patent Owner further argues that modifying Qian to utilize
friction welding is not a simple substitution, but that it “would have required
a complete redesign and reconfiguration of Qian’s process steps and
components,” which in turn, “would have required undue experimentation
and would certainly not have been simple.” (Reopen Req. 22). The Patent
Owner’s argument is based on the disclosed geometry of Qian’s
components, which does not provide mating surfaces that can be axially
pressed together to frictionally weld the surfaces in their manufactured
forms (Reopen Req. 22–24; see also Qian, Fig. 10). According to the Patent
Owner, frictional welding would result in an inoperable device because the
resultant electrode would leak, have poor structural integrity, exhibit poor
heat transfer, and the emissive insert may potentially be misaligned (Reopen
Req. 27–28). In the context of the disclosed manufacturing technique, the
Patent Owner observes that all of the surfaces that could be frictionally
welded would be machined away such that there would be inadequate
bonding, thereby rendering the electrode inoperable (Reopen Req. 28–32).
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While the amended independent claims now require that the direct
contact is “formed by friction welding,” the Examiner is correct that such
product-by-process recitation does not overcome the entered rejection
because these claims are directed to a product, namely a “plasma arc torch”
or a “composite electrode.” (Ex. Det. 12). “The patentability of a product
does not depend on its method of production.” In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985) (citing In re Pilkington, 411 F.2d 1345, 1348 (CCPA
1969)). “If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” Thorpe, 777
F.2d at 697 (citing In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983);
Johnson & Johnson v. W.L. Gore, 436 F. Supp. 704, 726 (D. Del. 1977); and
In re Fessmann, 489 F.2d 742 (CCPA 1974)).
Therefore, we agree with the Examiner’s determination that:
the final product has the same structure regardless of whether
friction welding (as recited in product claims 70–80, 83–86 and
101) or ultrasonic welding (as found by the PTAB to be
obvious in view of Qian et al.) is employed as the process for
producing the product. For these reasons, amending product
claims 70–80, 83–86 and 101 to recite the product-by-process
limitation “formed by friction welding” does not overcome the
PTAB's new ground of rejection.
(Ex. Det. 12).
As the Examiner further observes:
the [P]atent [O]wner’s arguments and new evidence are limited
to specific embodiments having “similar surface-mating
profiles that are capable of full surface contact with each other
in the areas intended to be welded” and having mating surfaces
that “must be enough perpendicular to the welding axis of
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rotation ... to generate the friction heat necessary to accomplish
the desired weld”. (Reed declaration, ¶¶ 13-14.)
(Ex. Det. 13).
The Patent Owner has not responded to these determinations in a
persuasive manner. Moreover, as the Examiner points out, the amendments
do not include limitations corresponding to such arguments and evidence
(Ex. Det. 13).
Therefore, in view of the above considerations, we maintain the
rejection of claims 70–80, 83–87, and 101 as obvious over Qian.

Yoshimitsu and Qian
The Examiner also observes that Yoshimitsu and Qian were both
considered by the Board in the Original Decision, and determines that the
amendments to the claims, and the submitted evidence and arguments, do
not render claims 70–80, 83–87, and 101 patentable in view of the combined
teachings of Yoshimitsu and Qian (Ex. Det. 15; see also Orig. Dec. 5, 9–11
(addressing the combination of Yoshimitsu and Qian relative to the appeal of
the Patent Owner)). Specifically, the Examiner determines that:
In the embodiment of Fig. 2b [of Yoshimitsu], the
composite electrode 16 comprises: an electrode body having an
aft portion 14 made of copper and a forward portion 28A made
of silver; a hafnium insert 12 bonded within a central bore
disposed in a first end of the silver forward portion 28A; and
wherein axially opposed mating surfaces of the copper aft
portion 14 and the silver forward portion 28A are in direct
contact with each other and are joined by diffusion bonding.
See Fig. 2b; col. 4, ll. 47–50 and 53–57; col. 5, ll. 12–29 and
40–47; col. 5, 1. 60–col. 6, l. 14.
(Ex. Det. 15, emphasis added).
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As the Examiner correctly notes, diffusion bonding is a known type of
“direct welding, i.e., welding in which metals are directly joined without the
use of an intervening filler metal,” and that such welding “fuses the joined
metals together to form a leak-proof joint and hermetic seal.” (Ex. Det. 15).
As the Examiner determines, while Yoshimitsu “fails to teach that an
interior surface of the silver forward portion 28A is directly cooled by
water,” Qian clearly discloses an electrode configuration in which the
interior surface of the silver forward portion is directly cooled by water, and
the desirability of such a configuration for improving heat transfer (Ex. Det.
16; Qian, Fig. 10, col. 9, ll. 12–42). Accordingly, we agree with the
Examiner’s determination that:
Thus, Qian et al. teaches a POSITA that it would be
desirable to modify the Fig. 2b embodiment of Yoshimitsu et
al. by machining away a portion of the copper aft portion 14
such that an interior surface of the silver forward portion 28A is
exposed to the cooling water delivered by the central cooling
passage 22 because this improves heat transfer, thereby
improving the performance and increasing the service life of the
electrode.
(Ex. Det. 16).
While Yoshimitsu discloses diffusion welding, we again agree with
the Examiner’s determination that “formed by friction welding” added by
amendment is a product-by-process limitation that fails to distinguish the
device/product claimed (Ex. Det. 16), and that “the final product has the
same structure regardless of whether friction welding (as recited in product
claims 70–80, 83–86 and 101) or diffusion bonding (as disclosed by
Yoshimitsu et al.) is employed as the process for producing the product.”
(Ex. Det. 17).
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Furthermore, even if diffusion bonding disclosed in Yoshimitsu
resulted in a structure that is somehow different than that attained by friction
welding, the substitution with friction welding would have been obvious and
not confer patentability unless the result was unexpected to one of ordinary
skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415–17 (2007).
In that regard, we observe the geometric concerns raised by the Patent
Owner with respect to frictionally welding the electrode of Qian do not exist
for the electrode of Yoshimitsu. The Patent Owner has not challenged the
Examiner’s findings regarding the teachings of Yoshimitsu persuasively in
this appeal.
Therefore, in view of the above considerations, the Patent Owner’s
amendment fails to render claims 70–80, 83–87, and 101 patentable.

Sakuragi and Qian
The Examiner further determines that claims 70–80, 83–87, and 101
are also unpatentable over the combined teachings of Sakuragi and Qian
(Ex. Det. 18). The disclosure of Sakuragi and the Examiner’s determination
based thereon appears to be substantially the same as that of Yoshimitsu (Ex.
Det. 18). However, because we agree with the Examiner’s determination
with respect to the combination of Yoshimitsu and Qian for the reasons
discussed supra, we discern no need to address Sakuragi.

Miscellaneous Arguments
The Patent Owner further notes its disagreement with respect to
several findings and conclusions of the Board in the Original Decision, but
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states “[s]hould the Board present similar arguments based on the arguments
presented in this Amendment and Response, the Patent Owner reserves the
right to respond in a more greater detail” (Reopen Req. 36), and “[t]o the
extent that such statements are not rendered moot in view of the
amendments and arguments detailed here, the Patent Owner reserves the
right to address any specific rejections relating to this issue.” (Reopen Req.
37). However, to the extent that the Patent Owner is seeking to file at the
Board or the Patent Office, a response to the present New Decision, there are
no provisions under the rules for such a response. Moreover, while
37 C.F.R. § 41.77(e) does allow for the Patent Owner to submit comments
responding the Examiner’s Determination, the Patent Owner has chosen not
to do so.

CONCLUSION
In view of the above considerations, claims 70–80, 83–87, and 101
remain rejected.

msc

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Patent Owner:
PROSKAUER ROSE LLP
One International Place
Boston, MA 02110-2600

Third Party Requester:
Mark Rubio
6212 29th Street East
Brandenton, FL 34203