Griffin, David Charles. et al.

Patent Trials and Appeals Board

Jan 14, 2020

14488149 - (D) (P.T.A.B. Jan. 14, 2020)

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.
14/488,149 09/16/2014 David Charles Griffin 1485.0083C 6425
13866 7590 01/14/2020
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Boulevard
Suite 750
Gaithersburg, MD 20878
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
01/14/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID CHARLES GRIFFIN,
WAYNE STANELY SEVERENCE JR., DANIEL THAYER,
and SRIRAM RAMADURAI
____________

Appeal 2019-004060
Application 14/488,149
Technology Center 3700
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies The ESAB Group, Inc., as the
Applicant and real party in interest. Appeal Br. 3.
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Application 14/488,149
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THE INVENTION
Appellant’s invention relates to plasma torches. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of intentionally extinguishing a plasma arc in
a plasma arc torch, the method comprising:
providing the plasma arc emitted from an electrode of the
plasma arc torch; and
contacting a nozzle of the plasma arc torch with the
electrode to intentionally extinguish the plasma arc while
current is flowing through the electrode and while a gas is
flowing through the nozzle.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Yamaguchi US 5,225,658 July 6, 1993
Enyedy US 5,796,067 Aug. 18, 1998
Ulrich US 6,707,001 B1 Mar. 16, 2004
Adams US 2015/0105898 Al Apr. 16, 2015
The following rejections are before us for review:
1. Claims 1–3 and 5 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Enyedy.
2. Claims 4 and 6–12 are rejected under 35 U.S.C. § 103 as
unpatentable over Enyedy and Yamaguchi.
3. Claims 13, 14, 16, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Enyedy, Adams, and Ulrich.
4. Claims 15 and 18–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Enyedy, either Adams or Ulrich, and Yamaguchi.
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OPINION
Anticipation of Claims 1–3 and 5
by Enyedy
The Examiner finds that Enyedy discloses each and every limitation
of claim 1. Final Action 2–3. In particular, the Examiner finds that making
contact between the electrode and nozzle extinguishes an existing arc. Id.
at 3.
Appellant argues that Enyedy fails to disclose contacting the nozzle
and electrode to “intentionally” extinguish the plasma arc as claimed.
Appeal Br. 19. According to Appellant, Enyedy only discloses contacting
the electrode with the nozzle for cleaning purposes or to restart a plasma arc
after the plasma arc is extinguished “unintentionally.” Id. Appellant argues
that cycling the nozzle and electrode in and out of contact with each other
for cleaning purposes is performed when current is not flowing through the
nozzle or electrode. Id.
In response, the Examiner states that Enyedy “shows that the
electrode is displaced downwardly to contact the nozzle and is moved back
to generate a pilot arc.” Ans. 7. The Examiner finds that such teaching
establishes that an arc is intentionally generated and extinguished when the
electrode and nozzle come in and out of contact with each other. Id.
Furthermore, the Examiner finds that an arc is created and extinguished as
the nozzle and electrode come in and out of contact with each other during a
cleaning procedure. Id. The Examiner further finds that Enyedy discloses
cycling the nozzle and electrode in and out of contact with each other while
current and gas are flowing through the nozzle. Id. (citing Enyedy, col. 8,
ll. 51–57).
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In reply, Appellant disputes the Examiner’s finding that Enyedy
passes current through the electrode during the cleaning process. Reply
Br. 2 (“[C]urrent does not flow through the nozzle and/or electrode when the
nozzle and electrode are brought into contact with each other for cleaning
purposes.”).
Enyedy discloses a plasma arc torch with displaceable electrode and
nozzle components that have first and second positions relative to each
other. Enyedy, Abstract. In a first position, the electrode contacts the nozzle
and, in the second position, the electrode is spaced an operating distance
from the nozzle. Id. Enyedy discloses an arrangement for displacing the
electrode and nozzle between such first and second positions without having
to interrupt the flow of arc gas or the flow of arc current during such relative
displacement. Id.
More particularly, Enyedy discloses piston chamber 30 that is co-axial
with the electrode and nozzle. Id. col. 8, ll. 3–4. Electrode 14 is secured to
the lower end of piston member 32 for displacement with the piston
member. Id. col. 8, ll. 7–9. Passageway 48 is connected to a source of
operating air for displacing piston member 32 and electrode 14 downwardly
relative to nozzle 16. Id. col. 8, ll. 20–23. Displacement of the electrode
from contact with nozzle 16 back to its previous position is achieved by
flowing arc gas against the underside of piston member 32. Id. col. 8,
ll. 41–51. Electrode 14 and nozzle 16 are adapted to be connected across a
source of current so that when electrode 14 is displaced downwardly to
contact nozzle and then moved back to its previous position, a pilot arc is
generated between the nozzle and the electrode. Id. col. 8, ll. 34–40.
Displacement of electrode 14 to contact nozzle 16 is accomplished without
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interrupting the supply of arc air. Id. col. 8, ll. 51–57. This feature enables
restarting of the torch without interrupting the arc current power supply or
arc air flow in the event of “unintentional” extinguishment of the arc. Id.
col. 9, ll. 1–5. Such displacement capability allows a pre-flow of arc air to
the nozzle so as to blow dirt out of the pilot arc chamber. Id. col. 9, ll. 5–10.
Such capability also allows post-flow of the arc gas following intentional
extinction of the arc, such as for cooling purposes. Id.
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008). Claim 1 recites a method claim. For purposes of an
unpatentability analysis, method claims are treated somewhat differently
than apparatus claims. An apparatus claim may be anticipated by a prior art
device that has structure that is merely “capable of” performing a claimed
function. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In
contrast, to anticipate a method claim, it must be shown that the allegedly
anticipating prior art reference actually teaches operating a device in the
manner claimed. See e.g., ParkerVision, Inc. v. Qualcomm Inc., 903
F.3d 1354, 1363 (Fed. Cir. 2018).
Having considered the competing positions of Appellant and the
Examiner, we think that the Appellant’s position is correct. Enyedy, at best,
is silent on whether the arc can be extinguished by contacting the nozzle to
the electrode. More importantly, whether or not Enyedy’s arc is capable of
being extinguished by contacting the nozzle and electrode, we agree with
Appellant that there is no actual teaching that Enyedy is “intentionally”
operated in the manner claimed. Appellant’s Specification explicitly teaches
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intentionally extinguishing the arc by contacting the nozzle with the
electrode so that the nozzle may be repositioned relative to the workpiece to
facilitate successive marking operations by the torch. Spec. ¶ 9. Having
reviewed the Enyedy reference, we determine that there is no analogous
teaching of a torch operation in Enyedy.
The Examiner’s reliance on the cleaning and cooling operations of
Enyedy misses the mark. Enyedy’s cleaning operation is performed without
any arc current flow to the electrode.
[T]he electrode and nozzle can be relatively displaced into and
out of contact with one another a number of times prior to
generating the starting arc, thus to optimize the cleaning
operation and, advantageously, such multiple displacement can
be achieved with a flow of arc gas to the pilot arc chamber so as
to carry particles of the broken up oxide out of the pilot arc
chamber through the plasma outlet opening in the nozzle. Such
displacement capability with the flow of arc gas to the pilot arc
chamber and without generating a starting arc upon relative
displacement of the electrode and nozzle out of engagement
with one another is enabled by providing for the relative
displacement between the electrode and nozzle to be
independent of the arc current power supply.
Enyedy, col. 4, 40–53 (emphasis added). Furthermore, Enyedy merely
teaches post-flow of arc air for cooling purposes “following intentional
extinction of the arc.” Id. col. 9, ll. 8–10. There is no explicit disclosure
that the arc is extinguished by touching the nozzle to the electrode.
Enyedy’s cooling procedure is perfectly consistent with intentionally
extinguishing the arc by shutting off power to the torch.
The Examiner’s findings of fact are not supported by a preponderance
of the evidence and, therefore, we do not sustain the Examiner’s anticipation
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rejection of claim 1. Claims 2, 3, and 5 depend, directly or indirectly, from
claim 1 and stand therewith.
Unpatentability of Claims 4 and 6–12
over Enyedy and Yamaguchi
Claims 4 and 6–8 depend, directly or indirectly, from claim 1. Claims
App. Claim 9 is an independent method claim that contains a limitation
directed to extinguishing a plasma arc that is substantially similar to the
limitation in claim 1 discussed hereinabove. Id. Claims 10–12 depend from
claim 9. Id.
The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. The Examiner
cites no evidence from Yamaguchi that cures such infirmity. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 4 and 6–12.
Unpatentability of Claims 13–20
over Combinations Based on Enyedy and Yamaguchi
Claim 13
Claim 13 is an independent system claim. Claims App. The
Examiner finds, among other things, that Enyedy discloses: (1) intentionally
extinguishing a plasma arc by bringing the nozzle into contact with the
electrode; and (2) Enyedy’s controller 74 is programmed to intentionally
enable or disable creation of an arc as the electrode is displaced with respect
to the nozzle as claimed. Final Action 5.
The Examiner’s finding regarding controller 74 constitutes reversible
error. Controller 74, in fact, is used in connection with a safety check
system that is provided to assure that nozzle 16 is properly mounted on the
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torch body relative to electrode 14 before enabling starting of the torch.
Enyedy, col. 9, ll. 40–62. During the safety check, if an open circuit
condition is sensed, controller 74 outputs a control signal through line 86 to
force generating unit 76 by which the latter responds to displace electrode 14
into contact with nozzle 16. Id. col. 10, ll. 23–27. However, it is clear from
the surrounding context that such occurs only in connection with a procedure
to start an arc where no arc otherwise has already been established. There is
no teaching that such procedure is used to extinguish an existing arc.
In view of the foregoing, we do not sustain the Examiner’s
unpatentability rejection of claim 13.
Claims 14–20
These claims depend, directly or indirectly, from claim 13. The
Examiner’s rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 13. Thus, for essentially the same
reason expressed above in connection with claim 13, we do not sustain the
rejection of claims 14–20.
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Bases Aff’d Rev’d
1-3, 5 102 Enyedy 1-3, 5
4, 6-12 103 Enyedy, Yamaguchi 4, 6-12
13, 14, 16, 17 103 Enyedy, Adams/Ulrich 13, 14, 16, 17
15, 18-20 103 Enyedy, Adams/Ulrich,
Yamaguchi
15, 18-20
Overall
Outcome
1-20
REVERSED