LINCOLN GLOBAL, INC.

Patent Trials and Appeals Board

Sep 30, 2020

2019003138 (P.T.A.B. Sep. 30, 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.
14/280,329 05/16/2014 Todd R. NOLAN 2010-036-US-CNT 5520
141825 7590 09/30/2020
The Lincoln Electric Company
22801 Saint Clair Avenue
Legal Department
Cleveland, OH 44117
EXAMINER
JONES, LOGAN P
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
desiree_cunin@lincolnelectric.com
ginger_mcghee@lincolnelectric.com
ip@lincolnelectric.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD R. NOLAN
Appeal 2019-003138
Application 14/280,329
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 21, 23–35, and 37–42. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a swirl combustion air fuel torch.
Claim 21, reproduced below, is illustrative of the claimed subject matter:
21. A torch, comprising:
a torch body having;
an upstream cavity,
a mixture cavity, and
a tube connection portion downstream of said
mixture cavity, where said mixture cavity has at least one
first bore through a sidewall of said mixture cavity to
permit a flow of air into said mixture cavity, and said tube
connection portion has a second bore to receive a flow
from said mixture cavity and direct said flow to an exit of
said tube connection portion;
a tip orifice structure inserted into said upstream cavity,
said tip orifice structure having a third bore through a center
thereof, said third bore having a first diameter and where said
third bore directs a fuel to said mixture cavity; and
a tube coupled to said tube connection portion which
receives said flow from said tube connection portion, and has an

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
August 30, 2018 (“Final Act.”) and Answer dated January 22, 2019
(“Ans.”), and (2) Appellant’s Appeal Brief dated November 7, 2018
(“Appeal Br.”) and Reply Brief dated February 11, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Lincoln Global, Inc.,
which is a subsidiary of The Lincoln Electric Company. Appeal Br. 3.
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inner diameter, where said tube delivers said flow to a flame at
an exit of said tube;
wherein a ratio of said first diameter to said inner diameter
of said tube is in a range of 5.4 to 6.6%,
wherein said fuel is acetylene, and wherein said second
bore in said tube connection portion has an expansion cavity in a
downstream portion of said second bore in said tube connection
portion.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hughey US 2,438,170 Mar. 23, 1948
Locke US 3,574,506 Apr. 13, 1971
Aske US 3,905,755 Sept. 16, 1975
Baranowski US 4,255,124 Mar. 10, 1981
Nelson US 4,666,399 May 19, 1987
Burdsall US 2011/0053103 A1 Mar. 3, 2011
Wolfinger US 2012/0034567 A1 Feb. 9, 2012
Ridley EP 0583941 A1 Feb. 23, 1994
REJECTIONS
The Examiner made the following rejections:
1. Claims 21, 24, 27, 28, and 30 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Ridley and Burdsall. Final Act. 4–8.
2. Claim 23 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ridley, Burdsall, and Locke. Final Act. 8–9.
3. Claims 25 and 26 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ridley, Burdsall, and Aske. Final Act. 9–12.
4. Claims 29 and 30 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ridley, Burdsall, and Wolfinger. Final Act. 12–
14.
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5. Claims 31, 32, 34, 35, and 37 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Baranowski, Nelson, and
Hughey. Final Act. 15–19.
6. Claim 33 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Baranowski, Nelson, Hughey, and Locke. Final
Act. 19–20.
7. Claim 38 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Baranowski, Nelson, Hughey, and Nelson. Final
Act. 20–21.
8. Claim 39 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Baranowski, Nelson, Hughey, and Wolfinger. Final
Act. 21–22.
9. Claim 40 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Nelson and Hughey. Final Act. 22–24.
10. Claims 41 and 42 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ridley, Burdsall, and Hughey. Final
Act. 24–26.
OPINION
Rejection 1: Claims 21, 24, 27, 28, and 30
as Unpatentable over Ridley and Burdsall
The Examiner concludes that claims 21, 24, 27, 28, and 30 are
unpatentable over Ridley and Burdsall. Final Act. 2, 4–8. The Examiner
finds that Ridley discloses all of the limitations in independent claims 21 and
30, except for the limitation requiring “a ratio of said first diameter to said
inner diameter of said tube is in a range of 5.4 to 6.6%.” Id. The Examiner
states that, although “Ridley does not explicitly disclose wherein a ratio of
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said first diameter to said inner diameter of said tube is in a range of 5.4 to
6.6%,” it has been held that “‘[w]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.’” Id. at 6 (citing MPEP
§ 2144.05(II)(A) (quoting In re Aller, 220 F.2d 454, 456, (CCPA 1955)).
The Examiner recognizes that “[a] particular parameter must first be
recognized as a result-effective variable, i.e. a variable which achieves a
recognized result, before determination of the optimum or workable ranges
of said variable might be characterized as routine experimentation.” Id.
(citing MPEP § 2144.05(II)(B) (quoting In re Antonie, 559 F.2d 618 (CCPA
1977)).
The Examiner finds that Ridley discloses that a ratio of the first
diameter of the tip orifice structure to the inner diameter of the tube
delivering the air flow to a flame is a result-effective variable. Final Act. 2,
4–5. A table from page 6 of Ridley is reproduced below:

This table presents examples of burn tip and venturi means combinations for
1/4, 3/8, and 1/2 inch flame sizes. Ridley, 6. According to the Examiner,
for “1/2 inch flame size, Ridley discloses approximately 0.5 inch tube
diameter and approximately .025 inch orifice diameter,” and “0.46 inches is
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proximate to 0.5 inches” so that “[v]alues of 0.025 and 0.46 yield a ratio of
5.4%.” Final Act. 2, 5. The Examiner also states that the table above
shows approximate burner tip clearances [diameter of the tube]
and approximate orifice clearances [diameter of the tip orifice]
for desired flame size. The graph below [provided by the
examiner] plots the diameters against each other and shows a
substantially linear relationship. Ridley states “Although
. . . relatively few variations of the burner tips and venturi means
[have been described], it will at once be apparent to those skilled
in the art that other variations may be made within the spirit and
scope of the invention.” Therefore, the values in the table are
examples illustrating a trend described by the equation
y=0.06*x-.005 [generated by Excel based on the data in the table]
where x is the diameter of the tube and y is the diameter of the
orifice. The claimed range exists on this line outside of the
explicitly given values. For example, when x is equal to 0.85
inches the corresponding y value is 0.046 inches and y/x is 0.054
or 5.4%. A burn tube with a diameter of 0.085 would be used for
a larger flame based on the data in the table of Ridley. Burdsall
teaches “The performance of a torch is based on the size and
quality of the generated flame. Typically, a larger burn tube
creates a larger flame with greater heat impact.”

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Final Act. 6–7; see also Ans. 3–5. The Examiner determines that “one
would modify the flame and tube size to modify the performance and/or heat
impact of the torch.” Final Act. 7.
Appellant argues that the Examiner’s rejection is erroneous because
Ridley omits “essential elements” as the Examiner “admits that Ridley does
not explicitly disclose wherein a ratio of said first diameter to said inner
diameter of said tube is in a range of 5.4 to 6.6%.” Appeal Br. 18 (emphasis
omitted). Appellant argues that the Examiner “attempts to linearly
extrapolate the example given in Ridley to arrive at a ratio of the first
diameter to the inner diameter that is 5.4% based on the claims of the present
application,” and the “linear extrapolation takes the inner diameter from 0.5
inches all the way up to 0.85 inches before a ratio of 5.4% is achieved.” Id.;
see also Reply Br. 5 (“The fact that the Examiner cannot rely on the cited
references by themselves as given and has to rely on his own made-up
graph, drawing, and biased interpretations, using the present application as a
blueprint, is a clear indication to the Appellant that the claims of the present
application are not obvious based on the cited art.”) (emphasis omitted).
According to Appellant, “[n]one of Ridley, Burdsall, or the present
application discusses a torch having such a large inner diameter,” and the
Examiner “has not shown that effective operation of a torch would be
achievable over such a large linear range of inner diameters, or even that the
linearity over such a large range of inner diameters would hold in reality.”
Appeal Br. 18. Appellant further argues that “it is also unknown whether or
not practical flow rates (SCFH) and practical pressures (PSI) could be
achieved at such large inner diameters and corresponding first diameters
while achieving the claimed ratios,” and the Examiner “is relying on pure
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speculation and an assumption of linearity over a wide range in an attempt to
make its argument, using the claims as a blueprint” and “hindsight
reconstruction.” Id. (emphasis omitted); see also Reply Br. 5.
Appellant’s arguments are not persuasive because Appellant does not
address, much less refute, the Examiner’s finding that the claimed ratio of
the first diameter of the tip orifice structure to the inner diameter of the tube
delivering the air flow to a flame is a “result-effective variable” and that the
determination of the optimum or workable ranges of a result-effective
variable is achievable by routine experimentation. Final Act. 4–5; Reply
Br. 5. Because Appellant does not address the conclusion of the rejection as
articulated by the Examiner, Appellant does not show error by the Examiner.
Appellant also argues that
it is not clear to the Appellant that what Ridley is calling burn tip
clearance and orifice clearance in a table of Ridley are related to,
respectively, the inner diameter of the tube and the first diameter
of a third bore of the tip orifice structure of independent claims
21 and 30 claims of the present application, as interpreted by the
Examiner.
Reply Br. 5–6. Appellant’s argument is not persuasive. Ridley’s use of
different terminology for the claimed “tube” and “tip orifice structure” does
not persuade us of error in the Examiner’s finding that Ridley’s burn tip and
orifice correspond to the claimed “tube” and “tip orifice structure,”
respectively. Final Act. 2, 5–6; Ans. 3–4; In re Bond, 910 F.2d 831, 832
(Fed. Cir. 1990) (explaining there is no ipsisimis verbis test for determining
whether a reference discloses a claim element, i.e., identity of terminology is
not required).
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For the reasons above, the rejection of independent claims 21 and 30
is sustained. Because Appellant does not argue claims 24, 27, and 28
separately from independent claim 21, from which they depend, the rejection
of claims 24, 27, and 28 is also sustained.

Rejections 2–4 and 10: Claims 23, 25, 26, 29, 30, 41, 42
In response to the Examiner’s rejections of claims 23, 25, 26, 29, 30,
41, and 42 over certain combinations of Ridley, Burdsall, Locke, Aske,
Wolfinger, and/or Hughey (Final Act. 8–14), Appellant argues that Locke,
Aske, Wolfinger, and Hughey do not remedy the deficiencies of Ridley and
Burdsall as discussed above in connection with Rejection 1. Appeal Br. 20–
22, 34–35. For the reasons discussed above in connection with Rejection 1,
we are not apprised of such deficiencies, and the rejections of claims 23, 25,
26, 29, 30, 41, and 42 are sustained.

Rejection 5: Claims 31, 32, 34, 35, and 37
as Unpatentable Over Baranowski, Nelson, and Hughey
Appellant argues claims 31, 32, 34, 35, and 37 as a group. Appeal
Br. 23–27. We select independent claim 31 as the representative claim, and
claims 32, 34, 35, and 37 stand or fall with claim 31. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Baranowski and Nelson disclose all of the
limitations of claim 31 except for those reciting “a fourth bore disposed
downstream of said upstream cavity” and “wherein said third bore directs a
fuel to said mixture cavity via said fourth bore, and wherein a diameter of
said fourth bore is same as said first diameter.” Final Act. 15–19. For these
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missing limitations, the Examiner finds that Hughey teaches a fourth bore
disposed downstream of said upstream cavity (e.g., “Figure 1, element 5'”);
wherein said third bore directs a fuel to said cavity via said fourth bore (e.g.,
the “bore of element 5 directs fuel to the cavity 2 via the bore 5'”); wherein a
diameter of said fourth bore is the same as said first diameter (e.g., the
“diameter of 5' is the same as the bore of 5 which is the first diameter [the
diameter of the tip orifice structure]”); and wherein said cavity separates said
fourth bore and said second bore (e.g., “[c]avity 2 separates bores 5'
and 17”). Id. at 17–18.
The Examiner states that Baranowski does not disclose the particular
claimed configuration of the tip orifice communicating with the downstream
chamber through a fourth bore, but “the court has held that changes in shape
are a matter of choice which a person of ordinary skill in the art would have
found obvious absent persuasive evidence that the particular configuration of
the claimed element were significant.” Final Act. 18–19 (citing In re Dailey,
357 F.2d 669 (CCPA 1966)). The Examiner explains that, in this case,
Appellant “has not provided any significance to the fourth bore,” and, to the
contrary, Appellant states “‘Figure 2 depicts a cross-section of a body 103 in
accordance with an exemplary embodiment of the present invention. In the
embodiment shown there is no upstream portion 114A of the bore 114 (as
discussed above), but the cavity 110 is directly coupled to the cavity 113.’”
Id. at 18 (citing Spec. ¶ 15). The Examiner further finds that the inclusion of
a fourth bore to be a matter of design choice and, thus, reasons that it would
have been obvious to one of ordinary skill in the art “to modify the shape of
the shape of the torch of Baranowski to include a fourth bore as taught by
Hughey.” Id. at 18.
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Appellant argues that the Examiner’s rejection is erroneous. Appeal
Br. 24–25. According to Appellant, “element 5 of Hughey is a nipple 5 that
is just a simple fitting that provides a gas mixture to a distribution header.”
Id. at 25. Appellant argues that characterizing “the passage 5' of Hughey as
a fourth bore disposed downstream of said upstream cavity” and “the nipple
5 of Hughey as having a third bore and the distributing chamber 2 of
Hughey as a mixture cavity, where the bore of element 5 directs fuel to the
cavity 2 via the bore 5'” is erroneous because there “appears to be only one
passage or bore 5' in the nipple 5 of Hughey” and there “does not appear to
be a third bore and a fourth bore as characterized by the [Examiner].” Id.
Appellant’s arguments are not persuasive because the Examiner relies
on Hughey for its teachings of a bore arrangement where a fuel supply
(nipple 5) encounters burner fitting 1 at the location where a bore is divided
and part of the bore belongs to the nipple and part of the bore belongs to the
fitting. Final Act. 18–19; Ans. 5–6. The Examiner’s reference to “third”
and “fourth” bores are merely naming or identifying conventions for certain
structures, as recited in claim 31. In addition, Appellant does not address,
much less refute, the Examiner’s finding that the inclusion of a fourth bore is
a matter of design choice and reasoning that it would have been obvious to
one of ordinary skill in the art “to modify the shape of the shape of the torch
of Baranowski to include a fourth bore as taught by Hughey.” Final Act. 19.
As the Examiner correctly states, “the difference between Baranowski or
Nelson and the claim language is how the spud or nipple meets the main
body” and the “results of switching the connection type would have been
predictable. Namely, a connection between the spud or nipple and the main
body that allows gas to flow through the spud or nipple and into the main
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body.” Ans. 5. Because Appellant does not address the rejection as
articulated by the Examiner, Appellant does not identify error.
For the reasons above, the rejection of independent claim 31 is
sustained. Because Appellant does not argue claims 32, 34, 35, and 37
separately from claim 31, from which they depend, the rejection of claims
32, 34, 35, and 37 is also sustained.

Rejections 6–9: Claims 33 and 38–40
In response to the Examiner’s rejections of claims 33 and 38–40 over
certain combinations of Baranowski, Nelson, Hughey, Locke, and Wolfinger
(Final Act. 19–24), Appellant argues that Locke, Aske, and Wolfinger do not
remedy the deficiencies of Baranowski, Nelson, and Hughey as discussed
above in connection with Rejection 5. Appeal Br. 27–40. For the reasons
discussed above in connection with Rejection 5, we are not apprised that the
combination of Baranowski, Nelson, and Hughey has any deficiencies, and
the rejections of claims 33 and 38–40 are sustained.

CONCLUSION
The Examiner’s rejections of claims 21, 23–35, 37–42 are
AFFIRMED.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 24, 27,
28, 30
103(a) Ridley, Burdsall 21, 24, 27,
28, 30

23 103(a) Ridley, Burdsall,
Locke
23
25, 26 103(a) Ridley, Burdsall,
Aske
25, 26
29, 30 103(a) Ridley, Burdsall,
Wolfinger
29, 30
31, 32, 34,
35, 37
103(a) Baranowski,
Nelson, Hughey
31, 32, 34,
35, 37

33 103(a) Baranowski,
Nelson, Hughey,
Locke
33
38 103(a) Baranowski,
Nelson, Hughey,
Nelson
38
39 103(a) Baranowski,
Nelson, Hughey,
Wolfinger
39
40 103(a) Nelson, Hughey 40
41, 42 103(a) Ridley, Burdsall,
Hughey
41, 42
Overall
Outcome
21, 23–35,
37–42

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED