10605931 (B.P.A.I. Aug. 21, 2012)

Ex Parte Matus

Board of Patent Appeals and InterferencesAug 21, 2012

10605931 (B.P.A.I. Aug. 21, 2012)

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. 10/605,931 11/06/2003 Tim A. Matus 14238 (ITWO:0335) 2930 52145 7590 08/22/2012 FLETCHER YODER (ILLINOIS TOOL WORKS INC.) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER PASCHALL, MARK H ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 08/22/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TIM A. MATUS ____________ Appeal 2010-008382 Application 10/605,931 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and HYUN J. JUNG, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tim A. Matus (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-27 under 35 U.S.C. § 103(a) as unpatentable over Luo (US 5,856,647; iss. Jan. 5, 1999) and Raney (US 4,967,055; iss. Oct. 30, 1990). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-008382 Application 10/605,931 2 THE CLAIMED SUBJECT MATTER The claimed subject matter “relates generally to plasma cutting systems” and “more particularly, to a one-piece consumable for use with such systems.” Spec. 1, para. [0001]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A plasma torch consumable assembly comprising: a shield cup; an electrode integrally connected to the shield cup; and a tip integrally connected with the shield cup and the electrode to form a one-piece assembly wherein the tip is constructed to secure the one- piece assembly to a torch body. Independent claim 12 recites a plasma cutter that includes “a one- piece consumable assembly comprising: a cap; a tip fixedly connected to the cap and constructed to snap-fit the consumable assembly to the torch; an electrode electrically . . . fixedly connected to the cap; and wherein the one- piece consumable assembly is assembled prior to being connected to the torch.” App. Br., Clms. App’x. Independent claim 17 recites a replacement plasma torch consumable kit “wherein at least two of the shield cup, electrode, and tip are press-fit to one another.” Id. Independent claim 22 recites a method of manufacturing a plasma torch consumable assembly including the step of “integrally connecting the electrode within a perimeter of the tip in a single unitary consumable structure.” Id. Appeal 2010-008382 Application 10/605,931 3 OPINION The Examiner determines that Luo teaches a plasma torch substantially as claimed with the exception of the cup, electrode, and tip being connected to form a one-piece assembly. Ans. 3. The Examiner cites Raney as teaching that parts can form an assembly which can be secured to a torch head and as providing motivation for pre-assembling the parts of Luo. Id. at 3-4. Appellant argues that the combination of Luo and Raney does not teach or suggest a plasma torch consumable assembly having a tip integrally connected with a shield cup and an electrode to form a one-piece assembly, as called for by claim 1; a one-piece consumable assembly that includes an electrode and a tip fixedly connected to a cap, as called for by claim 12; a replacement plasma torch consumable kit wherein at least two of a shield cup, an electrode, and a tip are press-fit to one another, as called for by claim 17; and a method that includes integrally connecting an electrode within a perimeter of a tip in a single unitary consumable structure. App. Br. 8. In particular, Appellant argues that Raney teaches a distinct and separate electrode, tip, and nozzle which are stacked and nested together. Id. at 9 (citing Raney, col. 3, ll. 11-14). Appellant also argues that the arrangement in Raney is different from the claimed invention, “in that the individual components are not affixed to each other or integrally connected in any way and are individually removable from the stacked configuration.” Id. and Reply Br. 7. Appellant then argues that Raney does not teach or suggest an electrode, tip, and nozzle formed as an integral, one-piece unit or unitary assembly, as claimed. Id. Appeal 2010-008382 Application 10/605,931 4 The Examiner responds that Raney teaches an assembly for a plasma torch that can be attached to the torch in an assembled manner. Ans. 6. The Examiner also states that nested elements form an integral pre-assembly and that the claims do not preclude components nested together before connecting to a torch as an assembly. Id. at 7. Appellant replies that Raney does not teach or suggest further combining its separate parts to form an integral one-piece assembly. Reply Br. 7. Although we appreciate that the Examiner attempts to discharge the duty of applying the broadest, reasonable interpretation of the term “integrally connected,” Appellant urges upon us a narrower interpretation than that of the Examiner so that the claims do not extend to Raney’s nesting arrangement to create a stacked configuration. Based on what persons of ordinary skill in the art would understand from reading Appellant’s disclosure, Appellant’s consistent arguing of “integrally connected” as patentably distinguishable, and the record before us, we accept Appellant’s argument that the claimed integrally connected components that form a one- piece assembly or a single unitary consumable structure does not include nesting of distinct and separate components as taught by Raney. See App. Br. 9. The Examiner does not identify any interconnection of these various components other than an apparent reliance on gravity to keep them nested together within each other when held in an upright manner. Ans. 3, 4. Because Appellant’s particular integral connection results in a one-piece assembly or a single structure beyond that resulting from the resting or nesting of components one within another, we agree with Appellant that Luo and Raney do not disclose “a tip integrally connected with the shield cup and the electrode to form a one-piece assembly,” as called for by independent Appeal 2010-008382 Application 10/605,931 5 claim 1, or a method of manufacturing a plasma torch consumable assembly that includes the step of “integrally connecting an electrode within a perimeter of a tip in a single unitary consumable structure,” as called for by independent claim 22. We also accept Appellant’s position that stacked and nested components do not disclose fixedly connecting components to form a one- piece structure in the manner argued by Appellant. See App. Br. 9. Thus, based on the record before us and because Appellant’s specific fixed connection results in a one-piece assembly that requires more than nesting of components, we agree with Appellant that Luo and Raney do not disclose “a one-piece consumable assembly” that includes a tip and an electrode fixedly connected to a cap, as called for by independent claim 12. As for independent claim 17, although Raney states at column 6, lines 4-5, that two elements are pressed fitted together to form an electrode 28, Raney does not disclose that the electrode is pressed fitted with a shield cup or tip. Thus, we agree with Appellant that Luo and Raney do not disclose a replacement plasma torch consumable kit “wherein at least two of a shield cup, an electrode, and a tip are press-fit to one another,” as required by claim 17. Accordingly, for the reasons supra, we are constrained to reverse the Examiner’s rejection of claims 1-27 under 35 U.S.C. § 103(a) as unpatentable over Luo and Raney. DECISION We reverse the Examiner’s rejection of claims 1-27 under 35 U.S.C. § 103(a) as unpatentable over Luo and Raney. Appeal 2010-008382 Application 10/605,931 6 REVERSED mls