Ex Parte Schneider

Board of Patent Appeals and Interferences

Jan 26, 2009

10905420 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH C. SCHNEIDER
____________

Appeal 2008-4677
Application 10/905,420
Technology Center 3700
____________

Decided: January 26, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER and
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph C. Schneider (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
Appeal 2008-4677
Application 10/905,420

2
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant’s claimed invention is a plasma cutting system (Spec. 3:
¶8). Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A welding-type system comprising:
a plasma torch controlled by a trigger and
constructed to generate an arc;
an air supply connected to deliver an air flow
to the plasma torch; and
a controller configured to control the air
supply, monitor actuation of the trigger, and
continuously monitor for arc outage, and if arc
outage is detected while the trigger is actuated,
cause (1) continued air flow through the plasma
torch for a predetermined period and (2) then
regenerate a pilot arc in the plasma torch.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sanders US 4,902,871 Feb. 20, 1990
Naor US 5,828,030 Oct. 27, 1998
Daniel US 5,831,237 Nov. 3, 1998
Hardwick US 6,677,551 B2 Jan. 13, 2004

Appeal 2008-4677
Application 10/905,420

3
Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 1, 5, 14, and 17-20 under 35 U.S.C.
§ 102(b) as anticipated by Naor.
2. The Examiner rejected claims 8 and 11-13 under 35 U.S.C. § 102(b)
as anticipated by Naor, and alternatively, under 35 U.S.C. § 103(a) as
unpatentable over Naor and Hardwick.1
3. The Examiner rejected claims 2-4, 9, 10, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Naor and Hardwick.
4. The Examiner rejected claims 6, 7, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Naor and Daniel.

ISSUES
The Examiner found claims 1, 5, 14, and 17-20 were anticipated by
Naor (Ans. 3-5). Appellant contends Naor does not teach each element of
the claim because it does not disclose a device that will cause continued air
flow for a predetermined period (Reply Br. 2).
The first issue before us is:
Has Appellant shown the Examiner erred in the rejection of claims 1,
5, 14, and 17-20 because Naor does not disclose a controller that causes
continued air flow for a predetermined period?

1 Although the Examiner’s statement of the grounds of rejection states that
claims 8 and 11-13 are rejected under 35 U.S.C. § 103(a) as obvious over
Naor alone (Ans. 6), it is clear from the Examiner’s further explanation of
the rejection, that the rejection was intended to be over Naor in combination
with Hardwick (Ans. 7). The Appellant has responded to the rejection as
based on the combined teachings of Naor and Hardwick (App. Br. 12-13;
Reply Br. 5).
Appeal 2008-4677
Application 10/905,420

4
The Examiner found claims 8 and 11-13 were anticipated by Naor
(Ans. 6-7). Appellant contends Naor does not teach each element of the
claim because when the arc extinguishes and the trigger remains actuated,
Naor’s device does not generate a second arc only after a portion of the
electrode cools and solidifies (App. Br. 10-12).
The second issue before us is:
Has Appellant shown the Examiner erred in the rejection of claims 8
and 11-13 because Naor fails to teach a controller that does not generate a
second arc until after a portion of the electrode cools and solidifies when the
first arc extinguishes and the trigger remains actuated?
The Examiner found claims 2-4, 8-13, and 15 were obvious in view of
Naor and Hardwick (Ans. 7-9). Appellant contends there is no reason to
combine Naor and Hardwick because Naor teaches away from the proposed
combination (App. Br. 12-14; Reply Br. 5).
The third issue before us is:
Has Appellant shown the Examiner erred in rejecting claims 2-4, 8-
13, and 15 because Naor teaches away from the proposed combination?
The Examiner found claims 6, 7, and 16 were obvious in view of Naor
and Daniel (Ans. 9-10). Appellant contends these claims are patentably
distinct because the references do not teach the required elements (App. Br.
15; Reply Br. 6).
The fourth issue before us is:
Has Appellant shown the Examiner erred in the rejection of claims 6,
7, and 16 because the references do not teach the required elements?
Appeal 2008-4677
Application 10/905,420

5
FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant’s Specification only describes the claimed “air flow”
as coming from the air supply (Spec., passim).
2. Naor discloses a method and apparatus used in contact start
plasma cutting (Naor, col. 1, ll. 9-11).
3. An objective of Naor’s device is to provide postarc cooling (to
extend part life and prevent torch damage) without interfering
with arc reignition (Naor, col. 3, ll. 9-16).
4. Another objective of Naor’s device is to allow arc reignition
without recycling the trigger by including a mechanism to vent
the hose to overcome the disadvantage of prior art devices that
ignition could not be reinitiated until air pressure in the hose
leading to the torch dissipated (Naor, col. 2, ll. 54-65).
5. Naor discloses the device includes a torch, an air source, a three
way solenoid valve, and a controller (Naor, col. 3, ll. 20-22; col.
5, ll. 4-6; col. 6, ll. 35-36).
6. Naor discloses the torch 306 includes torch tip 310 (also called
a nozzle) and electrode 309 (Naor, col. 6, ll. 17-22; col. 6,
l. 31).
Appeal 2008-4677
Application 10/905,420

6
7. Electrode 309 is spring biased to the shorting position,
permitting pilot arc current to flow between electrode 309 and
tip 310 (Naor, col. 6, ll. 57 to col. 7, l. 1).
8. During cutting, when commanded by controller 109, three way
solenoid 307 closes, permitting air to flow from air source 108
through hose 303 to torch 306, separating electrode 309 and
torch tip 310 (Naor, col. 3, ll. 25-26; col. 6, ll. 59-63; Fig. 3).
9. If the operator keeps the trigger switch engaged and an arc
outage is sensed, then controller 109 immediately commands
three way solenoid 307 to interrupt air supply 108 and vents
hose 303 to torch 306 (Naor, col. 5, ll. 4-6; col. 6, l. 66 to col. 7,
l. 21).
10. Naor discloses that air solenoid 307 interrupts air flow from the
air supply without delay (“When an arc outage is sensed (and
the trigger remains pulled), air solenoid 307 interrupts the air
supply and vents the torch”) (Naor, col. 7, ll. 11-13; see also
col. 5, ll. 16-20).
11. This venting process permits the spring bias to reengage
quickly electrode 309 and tip 310, “nearly instantaneously
closing a pilot current path and reinitiating a pilot arc” (Naor,
col. 5, ll. 16-20).
12. This method permits the operator to “continuously cut” by
holding the trigger switch engaged (Naor, col. 7, ll. 7-11).
13. Naor does not describe controller 109 calculating (prior to loss
of arc so that it is predetermined) a period of air flow, nor
Appeal 2008-4677
Application 10/905,420

7
causing continued air flow for that predetermined period (Naor,
passim).
14. Naor does not describe this venting process as providing
cooling of torch 306 (Naor, passim).
15. Naor teaches post arc cooling occurs when the operator releases
the trigger switch to discontinue cutting, and then controller
109 commands solenoid 307 to remain “engaged momentarily”
permitting air to flow through hose 303 to torch 306 to cool
torch 306 (Naor, col. 7, ll. 27-34; col. 10, ll. 27-29).
16. Hardwick discloses a process for shut down of a plasma arc
torch that prolongs the life of the consumable parts by adjusting
the arc current and gas flow over a period of time (Hardwick,
col. 2, ll. 8-13; col. 4, ll. 56-57; Fig. 3).

PRINCIPLES OF LAW
Functional Limitations

A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). As stated in
Swinehart:
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
Appeal 2008-4677
Application 10/905,420

8
applicant to prove that the subject matter shown to
be in the prior art does not possess the
characteristic relied on.

439 F.2d at 213.
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
Inherency
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.“ In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.“ In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
Teaching Away
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001). “When a piece of prior art ‘suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
Appeal 2008-4677
Application 10/905,420

9
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 53 (Fed. Cir. 1994)). “[W]hen the prior art teaches away from
combining certain known elements, discovery of a successful means of
combining them is more likely to be nonobvious.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1740 (citing United States v.
Adams, 383 U.S. 39, 51-52 (1966)).

ANALYSIS
Rejection of claims 1, 5, 14, and 17-20 under 35 U.S.C. §102(b)
Claim 1
Our analysis begins with construction of the claim.
Claim 1 includes a controller that causes “continued air flow” through
the torch. The broadest reasonable construction consistent with the
remainder of the claim language and the Specification is that this “continued
air flow” is from the earlier-recited air supply. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). Reading the claim as a whole, the claim itself earlier
refers to air flow as being delivered from the air supply, i.e., “an air supply
connected to deliver an air flow to the plasma torch.” Thus, “continued air
flow” refers back to the air flow from the air supply. Consistent with this
reading of the claim, the Specification only describes “air flow” as coming
from the air supply (Fact 1). We conclude a person of skilled in the art
would understand “continued air flow” to refer to the air flow from the air
supply.
Appeal 2008-4677
Application 10/905,420

10
Claim 1 recites a controller “configured to” perform certain functions
(e.g., monitor actuation of the trigger). Claimants may define claim
elements using functional or structural language. In re Swinehart, 439 F.2d
210, 213 (CCPA 1971). In this case, claim 1 includes the following
functional requirements of the controller: when arc outage is detected while
the trigger is actuated, the controller causes continued air flow from the air
supply through the plasma torch for a predetermined period, and then
regenerates a pilot arc in the plasma torch.
The Examiner took the position that the functional limitations of the
controller, which the Appellant argues are critical for establishing novelty in
the claimed subject matter, are inherent characteristics of the prior art. This
shifted the burden to the Appellant to prove that the cited art does not
possess these characteristics. In re Swinehart, 439 F.2d 210, 213 (CCPA
1971). The Appellant contends that Naor does not vent with air from the air
supply, and that Naor does not vent for a predetermined period (App. Br. 7-
8; Reply Br. 2-3).
Naor’s device has two distinct modes of operation: when the trigger
is actuated, and when the trigger is not actuated. In the first mode, when the
trigger is actuated, because the user is commanding cutting, the controller
immediately commands reignition to provide continuous cutting without
regard for a cooling period (Facts 2, 4-12). In the second mode (postarc),
the user is no longer actuating the trigger switch, indicating cutting is
complete, and the priority of the controller switches from cutting to
preserving the consumable parts of the torch by providing air flow after the
arc is extinguished (Facts 3, 15).
Appeal 2008-4677
Application 10/905,420

11
In contrast to claim 1, when Naor’s plasma cutting device senses arc
outage while the trigger switch is engaged (first operating mode), the
controller immediately commands reignition of the arc. This is
accomplished by the controller commanding the solenoid to open, which
vents the hose leading to the torch (venting process), removing the air flow
that was separating the electrode from the torch tip, allowing the spring bias
to force the electrode and torch tip back together, and regenerating a pilot
arc (Facts 9-11). This process is not continued air flow from the air supply
for a predetermined period of time as required by claim 1, rather Naor’s
device immediately discontinues air flow from the air supply (Facts 10, 13).
Even if ambient air flows through the torch after the venting process, this is
not air flow from the air supply as required by claim 1.
In Naor’s device, when the trigger is actuated and arc outage is
detected, the controller causes air flow from the air supply to be interrupted
without delay (Fact 10). While Naor discloses that reignition is not
instantaneous (“nearly instantaneous”), this brief period of delay refers to
restart of the arc, not continuation of the air flow (Facts 9-11).
In the simplest terms, the claim requires the controller to cause
continued air flow for a predetermined period prior to reignition of the arc,
while Naor’s controller immediately causes reignition. Thus, the Appellants
have demonstrated that the claimed function of causing continued air flow
for a predetermined period prior to reignition of the arc is not an inherent
characteristic of Naor’s controller.
Because Naor does not teach each element of the claim, Naor does not
anticipate claim 1. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
Appeal 2008-4677
Application 10/905,420

12
628, 631 (Fed. Cir. 1987). Claim 5 also is not anticipated by Naor by virtue
of its dependence on claim 1.
Claim 14
Claim 14, similar to claim 1, requires that the controller “initiate a
delay2 prior to automatic generation of a subsequent arc” if the arc collapses
and the trigger remains activated.
As explained in detail in the analysis of claim 1, Naor’s controller
does not “initiate a delay prior to automatic generation of a subsequent arc,”
but rather, Naor’s controller initiates reignition without delay (Fact 10).
Because Naor does not teach each element of the claim, Naor does not
anticipate claim 14. Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Claims 17-20 also are not anticipated by
Naor by virtue of their dependence on claim 14.

Rejection of claims 8 and 11-13 under 35 U.S.C. §102(b) as anticipated by
Naor and alternatively under 35 U.S.C. §103(a) over Naor and Hardwick
Claim 8 recites “a controller configured to control the plasma torch to
generate a first arc upon actuation of the trigger and generate a second arc
after extinction of the first arc when the trigger remains actuated but only
after an insert of an electrode of the plasma torch cools to solidify a portion
of the insert that liquefies during operation.”

2 “Delay” is not defined in Appellant’s Specification and we give the word
its common meaning: a pause of a measurable duration of time.
Appeal 2008-4677
Application 10/905,420

13
35 U.S.C. §102(b) as anticipated by Naor
Regarding anticipation, Naor does not expressly or inherently disclose
each element of the claim.
First, Naor does not expressly disclose cooling to solidify a portion of
the insert prior to generation of the second arc (Fact 14). To the contrary,
Naor discloses a controller that immediately commands reignition (Facts 9-
10).
Second, Naor does not inherently disclose cooling a portion of the
insert as required by claim 8 for several reasons. First, Naor only describes
cooling of the insert postarc (the second mode of operation, when the trigger
is not actuated), and specifically provides that postarc cooling must not
interfere with reignition (Fact 3, 14, 15). Second, Naor discloses the period
of time to create the second arc (reignition) is so short as to permit
continuous cutting (Fact 12) suggesting a period too brief for cooling.
Third, a specific objective of Naor’s device is to vent the hose leading to the
torch to overcome the disadvantage of prior art devices that ignition could
not be reinitiated until air pressure in the hose leading to the torch dissipated
(Fact 4, 12).
While it is possible that some cooling may occur in Naor’s device
during the “nearly instantaneous” period following the controller’s
command to generate a second arc and actual generation of that second arc,
it is not necessarily the case that cooling occurs, and so that characteristic is
not inherent. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002).
Because Naor does not disclose each element of the claim, Naor does
not anticipate claim 8. Verdegaal Bros. v. Union Oil Co. of California, 814
Appeal 2008-4677
Application 10/905,420

14
F.2d 628, 631 (Fed. Cir. 1987). Claims 11-13 also are not anticipated by
Naor by virtue of their dependence on claim 8.
35 U.S.C. §103(a)3 over Naor and Hardwick
The Examiner found Naor teaches the elements of claim 8 except that
Hardwick teaches the electrode being a consumable insert and duration of
time to cool the electrode (Ans. 16-18). The Examiner found that one
having ordinary skill in the art would have combined the teachings of these
references to extend the lifetime of the plasma electrode elements (Id.).
Appellant contends that Naor teaches away from the suggested
combination because Naor specifies that cooling should not interfere with
reignition of the arc (Reply Br. 4-5). Appellant elaborates that because
Hardwick causes a delay for cooling, the very thing Naor seeks to prevent, a
person of ordinary skill in the art would not consider the suggested
combination, and the combination would render Naor inoperable for its
intended purpose (Id.).
Appellant is correct that Naor teaches away from the suggested
combination. First, Naor quite specifically teaches, “cooling should not
interfere with reignition of the arc” (Naor, col. 3, ll. 15-16, see also Fact 3),
and Hardwick discloses a shut down cooling process involving a delay (Fact
16). Naor also teaches that venting of the hose leading to the torch is
designed to overcome the delay in restart of the arc found in the prior art
(Fact 4). In other words, while the trigger is actuated, Naor immediately
commands reignition so that the operator may continuously cut (Fact 12). A

3 Appellant argued, without support, that the Examiner may not use both an
anticipation rejection, and in the alternative an obviousness rejection. We
know of no such prohibition.
Appeal 2008-4677
Application 10/905,420

15
person of ordinary skill, upon reading Naor would be led in a direction
divergent from the path involving a cooling process that induces delay (such
as Hardwick’s). In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001).
Because Naor teaches away from combining Naor with the delay of
Hardwick, we cannot sustain the rejection of claim 8, or claims 11-13 which
depend therefrom.

Rejection of claims 2-4, 9, 10, and 15 under 35 U.S.C. §103(a) over Naor
and Hardwick
The Examiner found that it would have been obvious to combine Naor
and Hardwick to extend the lifetime of the plasma electrode elements (Ans.
8-9. As with claim 8, supra, Appellant contends there is no reason that
would have led a person of ordinary skill in the art to combine these
references in the manner claimed (App. Br. 13-14). For the reasons set forth
in the analysis of claim 8, Naor teaches away from making a modification to
add a delay as taught in Hardwick. Thus, we also cannot sustain this
rejection.
Rejection of claims 6, 7, and 16 under 35 U.S.C. §103(a) over Naor and
Daniel
The Examiner found Naor teaches the elements of claims 6, 7 and 16,
except that Daniel teaches a plasma arc system that operates on expanded
metal (Ans. 8-9).
Claims 6 and 7 depend from claim 1, and claim 16 depends from
claim 14. In the analysis of claims 1 and 14, supra, we determined, based on
Appellant’s arguments, that Naor does not meet all the elements of each
claim. The Examiner does not cite Daniel to correct those deficiencies. For
Appeal 2008-4677
Application 10/905,420

16
that reason, the Appellant has demonstrated the Examiner erred in the
rejection of claims 6, 7, and 16.
CONCLUSIONS
First, Appellant has shown that the Examiner erred in the rejection of
claims 1, 5, 14, and 17-20 because Naor does not disclose a controller that
causes continued air flow from the air supply for a predetermined period.
Second, Appellant has shown that the Examiner erred in the rejection of
claims 8 and 11-13 because Naor fails to teach a controller that does not
generate a second arc until after a portion of the electrode cools and
solidifies when the first arc extinguishes and the trigger remains actuated.
Third, Appellant has shown that the Examiner erred in rejecting claims 2-4,
8-13 and 15 because Naor teaches away from the proposed combination with
the teachings of Hardwick. Fourth, and finally, Appellant has shown that the
Examiner erred in the rejection of claims 6, 7, and 16 because Naor does not
teach the required elements of the combined references.
DECISION
We reverse the Examiner's rejections of claims 1-20.
REVERSED

vsh

ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ITW)
136 S WISCONSIN ST
PORT WASHINGTON WI 53074