Ex Parte 6320156 et al

Patent Trial and Appeal Board

Dec 27, 2016

95002300 (P.T.A.B. Dec. 27, 2016)

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.
95/002,300 09/14/2012 6320156 KL-US125421 6706
22919 7590 12/27/2016
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/27/2016 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
________________

THE AMERICAN TORCH TIP CO.
Respondent, Requester

v.

Patent of KOMATSU LTD.
Appellant, Patent Owner
________________

Appeal 2015-004987
Inter partes Reexamination Control 95/002,300
Patent US 6,320,156 B11
Technology Center 3900
________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
DANIEL S. SONG, Administrative Patent Judges.

Opinion of the Board filed by McCARTHY, Administrative Patent Judge.

Opinion dissenting-in-part, filed by SONG, Administrative Patent Judge.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued November 20, 2001 to Yoshihiro Yamaguchi and Kazuhiro
Kuraoka (the “’156 patent”). The ’156 patent issued from Appl. 09/567,064,
filed May 8, 2000. The parties have not identified any related proceedings
involving the ʼ156 patent.

STATEMENT OF THE CASE
The claims of the ʼ156 patent are directed to consumable electrodes
and nozzles for plasma torches. The Patent Owner appeals the Examiner’s
decision rejecting:
Ground 1: newly-added, independent claims 25–27, 38, 45 and
50, along with newly-added, dependent claims 29, 31–33, 39–42, 46
and 51, under pre-AIA 35 U.S.C. § 112, second paragraph, as being
indefinite (see Right of Appeal Notice, mailed April 16, 2014
(“RAN”) at 12–21);
Ground 2: independent claim 45 and its dependent claim 46
under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Couch ʼ126
(US 5,317,126, issued May 31, 1994) (see RAN 22 & 23);
Ground 3: amended, independent claim 13 and newly-added,
dependent claim 34 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sperling (US 5,473,131, issued Dec. 5, 1995), Sobr
(US 5,624,586, issued Apr. 29, 1977) and Luo (US 5,856,647, issued
Jan. 5, 1999) (see RAN 23 & 24);
Ground 4: independent claim 13 and its dependent claim 34;
independent claim 25 and its dependent claim 29; and independent
claim 27 under § 103(a) as being unpatentable over Couch ʼ126, Sobr,
Luo and Reed (US 5,308,949, issued May 3, 1994) (see RAN 24–27);
Ground 5: independent claim 45 and its dependent claim 46
under § 103(a) as being unpatentable over Couch ʼ126 and Couch
ʼ308 (US 3,641,308, issued Feb. 8, 1972) (see RAN 27 & 28);
Ground 6: independent claim 50 and its dependent claim 51
under § 103(a) as being unpatentable over Couch ʼ126, Couch ʼ308,
Sobr, Luo and Reed (see RAN 29–31);

Ground 7: newly-added, independent claim 48 under § 103(a)
as being unpatentable over Tsurumaki and Couch ʼ126 (see RAN
31–34); and
Ground 8: newly-added claims 25–27, 29, 31–33, 38–42, 45,
46, 50 and 51 under pre-AIA 35 U.S.C. § 314(a) as enlarging the
scope of the claims of the patent undergoing reexamination (see RAN
34 & 35).
Claims 1–8 are not subject to reexamination. Original claims 9–12 and
14–24, as well as newly-added claims 28, 30, 35–37, 43, 44, 47, 49, 52 and
53, are cancelled. (See RAN, cover page).
The Patent Owner has withdrawn the appeal with respect to claim 48.
(See “Appeal Brief by Patent Owner,” dated July 11, 2014 (“Appeal Brief”
or “App. Br. PO”), at 1 (omitting claim 48 from the list of appealed claims)
& 13 (“Claim 48 is not subject to this appeal.”); see also “Examiner’s
Answer,” mailed November 4, 2014 (“Answer” or “Ans.”), at 2). Therefore,
we summarily AFFIRM the Examiner’s rejection of claim 48. See MANUAL
OF PATENT EXAMINING PROCEDURE § 1215.03.
We have jurisdiction under pre-AIA 35 U.S.C. § 134(b) and 35 U.S.C.
§ 315(a). We AFFIRM the Examiner’s decision adopting Grounds 4 and 6
(Ground 7 being summarily affirmed as to claim 48). We REVERSE the
Examiner’s decision to adopt Grounds 1, 2, 5 and 8. Because our affirmance
of the Examiner’s decision to adopt Ground 4 as to claims 13 and 34 is
dispositive of the appeal as to those claims, we do not reach Ground 3.
THE ʼ156 PATENT
Figure 3 of the ʼ156 patent, reproduced below with some reference
numerals moved, is a side sectional view of a detachable unit 101B for a
plasma torch.

The detachable unit as depicted in Figure 3 includes an electrode 103, an
insulating guide 105 and a nozzle 107 received inside a retainer cap 113.
(See ʼ156 patent, col. 16, ll. 17–19). An internally threaded rotating ring 139
couples the retainer cap 113 to the torch main unit 101A. (See ʼ156 patent,
col. 12, ll. 20–37; & Figs. 1 & 3).
The electrode 103 fits into a hollow in the insulating guide 105 and is
held in place by frictional contact with an elastic O-ring seal 193. The
insulating guide 105 fits into a hollow in the nozzle 107 and is held in place
by frictional contact with an elastic O-ring seal 195. (See ʼ156 patent, col.
16, ll. 23–31; & Figs. 3–5). The retainer cap 113 receives the nozzle 107,

which is held in place in the retainer cap by an elastic O-ring seal 197. (See
ʼ156 patent, col. 16, ll. 31–35 & 47–56; & Fig. 3).
As a consequence, the electrode 103, the insulating guide 105 and the
nozzle 107 may be received into the retaining cap 113 as a unit. (See ʼ156
patent, col. 16, ll. 19–23; & Fig. 4). Once the rotating ring 139 is unscrewed
from the torch main unit 101A, the entire detachable unit 101B may be
pulled off the torch main unit 101A as a unit. (See ʼ156 patent, col. 17, ll.
7–12). The insulating guide 105 and the nozzle 107 may be pulled apart and
independently replaced once the detachable unit 101B is separated from the
torch main unit 101A. (See ʼ156 patent, col. 16, ll. 19–23).
Figure 9 of the ʼ156 patent, reproduced on the next page, is a side
sectional view of the electrode 103. Figure 11, reproduced on the next page,
is a side sectional view of the electrode 103 received in an electrically
conductive inner sleeve 117 of the torch main unit; and fitted over and
around a water pipe 115.

Figure 9 depicts the electrode 103. The ʼ156 patent teaches that the
electrode 103 is fabricated from copper. (See ʼ156 patent, col. 20, l. 66 –
col. 21, l. 5). The electrode 103 is cylindrical in shape and hollow. A closed
front end section 103A of the electrode 103 receives an insert 104 of a heat-
resistant material such as hafnium. (See ʼ156 patent, col. 10, ll. 37–43). A
skirt section 173 near the axially opposite, open end of the electrode 103
includes a large diameter section 179. The large diameter section 179 has an
inner diameter greater than the outer diameter of the portion of the electrode
near the front end section 103A. The large diameter section 179 also

includes a plurality of slits 175 defining a plurality of elastic, inwardly
compressible tongues 177. (See ʼ156 patent, col. 20, l. 66 – col. 21, l. 15).
Figure 11 depicts the electrode 103 received in the electrically
conductive inner sleeve 117 of the torch main unit; and fitted over and
around the water pipe 115. When the detachable unit 101B is positioned on
the torch main unit 101A; and when the rotating ring 139 is threaded onto
the torch main unit and tightened, an electrically conductive inner sleeve 117
of the torch main unit receives and captures the skirt section 173 of the
electrode. The inwardly-compressible tongues 177 of the electrode 103 flex
inwardly to fit into the inner sleeve 117. The elasticity of the compressible
tongues 177, reinforced by a spring ring 181, presses the large diameter
section 173 of the electrode 103 into contact with the inner, circumferential
surface 223 of the inner sleeve 117. The ʼ156 patent teaches that the outer,
circumferential surface 179A of the large diameter section 173 defines an
electrical connection surface. The electrode 103 receives electrical power by
way of the inner sleeve 117 through its electrical connection surface. (See
ʼ156 patent, col. 21, ll. 15–31 & 48–50; & Figs. 1 & 9–11).
The water pipe 115, which is a part of the torch main unit 101A,
projects coaxially into the hollow of the electrode 103 within the inner
sleeve 117 when the electrode is captured in the inner sleeve. (See ʼ156
patent, col. 10, ll. 32–51; & Figs. 1 & 11). When the detachable unit 101B is
coupled to the torch main unit 110A, cooling water flows through a passage
119 within the water pipe 115 into the interior of the electrode 103. The
cooling water flowing through a passage 119 contacts and cools the
electrode 103 and the insert 104. As depicted in Figure 11, the water then
turns and flows in the opposite axial direction through an annular passage
121 between the outer, circumferential surface of the electrode 103 and the

inner, circumferential surface 223 of the inner sleeve 117. The cooling
water exits this annular passage 121 through the slits 175 in the skirt section
173 of the electrode 103. The cooling water then flows through a series of
connected passageways toward the exterior surface of the nozzle 107. (See
col. 11, ll. 15–22; col. 13, ll. 3–8 & 25–31; col. 22, ll. 49–65; & Figs. 1 &
11).
Claim 13 is illustrative:
13. An electrode for a plasma torch which is retained by
coupling detachably with an electrode seating of the plasma
torch, and which receives a supply of arc current by being
connected electrically to said electrode seating, said electrode
having an approximately cylindrical shape, and comprising:
an electrical connection surface which contacts an
electrical connection surface on said electrode seating, thereby
forming an electrical connection between said electrode and said
electrode seating, when the electrode is coupled to said electrode
seating;
an elastic member which presses the electrical connection
surface of said electrode against the electrical connection surface
of said electrode seating by elastic force generated by elastic
deformation, when the electrode is coupled to said electrode
seating;
a heat resistant insert forming an arc generating point at
the front end portion thereof; and
a skirt section which is inserted into said electrode seating
at the base end portion thereof, said skirt section being divided
by a plurality of slits into a plurality of said elastic members
which are tongue-shaped and capable of elastic deformation in
the inward direction, and these tongue-shaped elastic members
having said electrical connection surface on the outer
circumference thereof.
(App. Br. PO 31 (Claims App’x)).

THE RECORD
The Examiner’s findings, conclusions and reasoning are explained
primarily in the RAN. The Examiner uses the Answer to respond to the
Patent Owner’s arguments addressing Grounds 1 and 8. (See Ans. 2). The
Patent Owner’s contentions appear in the Appeal Brief and the “Rebuttal
Brief by Patent Owner,” dated December 3, 2014 (“Reb. Br. PO”). The
Requester’s position appears in the “Third Party Requester’s Response to
Patent Owner’s Appeal Brief,” dated August 11, 2014 (“Respondent Brief”
or “Resp. Br. Req’r”). Neither party appears to rely on any affidavits or
other evidence extrinsic to the patent under reexamination and the teachings
of the cited references.
Only those arguments actually made by the Patent Owner have been
considered. We address the various arguments of the Patent Owner infra in
an order that differs from the order presented. Arguments that the Patent
Owner could have made but chose not to make have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). The record supports all
findings of fact by a preponderance of the evidence. See Rambus Inc. v.
Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013); Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988).

GROUND 1: INDEFINITENESS
In Ground 1, the Examiner rejects claims 25–27, 29, 31–33, 38–42,
45, 46, 50 and 51 under pre-AIA 35 U.S.C. § 112, second paragraph, as
indefinite. The second paragraph of § 112 requires that the specification of a
patent “conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the [patent owner] regards as the
invention.” Our reviewing court instructs us that “how much clarity is
required necessarily invokes some standard of reasonable precision in the
use of language in the context of the circumstances.” In re Packard, 751
F.3d 1307, 1312 (Fed. Cir. 2014).
In Orthokinetics Inc. v. Safety Travel Chairs Inc., 806 F.2d 1565,
(Fed. Cir. 1986), the patent undergoing litigation claimed a wheel chair
having a front portion “so dimensioned as to be insertable through the space
between the doorframe of an automobile and one of the seats thereof.” Id. at
1568. Our reviewing court reversed a district court’s conclusion that the
claim was indefinite, observing that:
It is undisputed that the claims require that one desiring to build
and use a travel chair must measure the space between the
selected automobile’s doorframe and its seat and then dimension
the front legs of the travel chair so that they will fit in that
particular space in that particular automobile. Orthokinetics’
witnesses, who were skilled in the art, testified that such a task is
evident from the specification and that one of ordinary skill in
the art would easily have been able to determine the appropriate
dimensions.
Orthokinetics at 1576. Our reviewing court also concluded that the “phrase
‘so dimensioned’ is as accurate as the subject matter permits, automobiles
being of various sizes.” Id. Although Orthokinetics arose out of a litigation
context, where a presumption of validity applies, rather than out of a

reexamination, its holding provides some guidance for applying § 112 in the
context of the present reexamination.

“Circumference Surface”
The Examiner rejects claims 25–27, 38, 45 and 50 on the basis that
the term “circumference surface” as used in those claims is indefinite. (See
Ans. 2 & 3; RAN 12–14 & 35–37). In addition, the Examiner rejects claims
25 and 50 on the basis that the relationship between the “outer
circumference surface of the electrode” and the “one of [the] outer
circumference surfaces of the tongue-shaped elastic members,” as recited in
claim 25, is unclear. (See RAN 14 & 15; see also RAN 21).
The Examiner concludes that the ordinary meaning of the term
“circumference surface” is a “continuous” surface (by which the Examiner
appears to imply a surface that is, loosely speaking, convex in a topological
sense) that coincides with the external boundary or periphery of an object.
(See RAN 35 & 36 (“Indeed, according to Merriam-Webster.com, the word
‘circumference’ is defined as ‘the external boundary or surface of a figure or
object: PERIPHERY’. However, [this dictionary definition] would appear
to require at least a continuous structure, which is entirely consistent with
the geometric meaning of ‘circumference’.”); see also id. at 12). While
traversing the rejection of claim 25 under the second paragraph of § 112, the
Patent Owner asserted before the Examiner that “a surface [could] be
divided into several sections by slits, but [could] still be considered one
surface since these sections [were] connected at the base portions thereof,
and, thus, form[ed] a continuous surface.” (“Patent Owner’s Response to
Non-Final Office Action in Inter partes Reexamination,” dated Oct. 18,
2013 (“October 2013 Amendment”), at 24). The Examiner interprets this

argument as advocating a broader definition of the term “circumference
surface,” inconsistent with the Examiner’s conclusion as to the term’s
ordinary meaning. (See RAN 13).
The Patent Owner correctly argues that “one of ordinary skill in the
art . . . reasonably [would have ascertained] that the term ‘circumference’ is
used throughout the specification of the ʼ156 patent to mean ‘peripheral
surface’ or, in some context[s], ‘a portion of the peripheral surface.’” (App.
Br. PO 7; see also Reb. Br. PO 2). This interpretation is demanded at least
by the claim language itself. For example, claim 25 recites:
a skirt section divided by a plurality of slits into a plurality of
said elastic members which are tongue-shaped and capable of
elastic deformation in the inward direction . . . , and one of [the]
outer circumference surfaces of the tongue-shaped elastic
members defining the at least one electrical connection surface.
Claim 50 similarly recites an electrode “comprising: . . . a skirt section
divided by a plurality of slits into a plurality of tongue-shaped members
capable of plastic deformation in the inward direction, with one of [the]
outer circumference surfaces of the tongue-shaped members defining the at
least one electrical connection surface.” In these cases, the tongue-shaped
elastic members do not have any surface that extends continuously around
the entire outer periphery of the electrode. One of ordinary skill in the art
would have recognized that the words “circumference surface” as used in
these limitations referred to portions of the outer peripheral surface of the
electrode rather than to the entire peripheral surface of the electrode. In
other words, one of ordinary skill could have ascertained with reasonable
precision whether the words “circumference surface” in context read on an
entire peripheral surface or only a part of such a surface. The Examiner has

not shown that the words “circumference surface” render the rejected claims
indefinite.

“Provided on” and “Located on”
In the RAN, the Examiner also rejects claims 25, 26 and 50 on the
basis that the words “located on” and “provided on” as used in those claims
are indefinite. (See Ans. 3 & 4; RAN 14). For example, claim 25 and claim
50 each recites an electrode, “the at least one electrical connection surface of
the electrode being located on an outer circumference surface of the
electrode.” Claim 26 also recites an electrode, “the electrical connection
surface of the electrode being located on an outer circumference surface of
the electrode.” In the RAN, the Examiner concludes that it “is unclear as to
how the ‘electrical connection surface’ . . . can be ‘located on’ an outer
circumference surface of the electrode . . . , when the electrical surface is
actually defined by the electrode outer circumference.” (RAN 14 (citations
omitted), citing ʼ156 patent, Fig. 9). For similar reasons, the Examiner also
concludes in the RAN that the limitation “a flange located on the outer
circumference surface of the electrode” as recited in claims 27 and 32; and
the limitations, “a second elastic member installing section provided on the
outer circumference surface of the guide” and “a plurality of grooves located
on the outer circumferential surface of the guide,” as recited in claim 38, are
indefinite. (See RAN 18).
On the other hand, on page 4 of the Answer, the Examiner “does not
necessarily disagree” with the Patent Owner’s assertion that one of ordinary
skill in the art would have understood the words “located on” to be
synonymous with “defined by” (see App. Br. PO 8). This statement
indicates that the Examiner no longer relies on the words “located on” or

“provided on” as a basis for concluding that these claims are indefinite. (See
Reb. Br. PO 2 & 3).
Claim 38 recites a cylindrical guide including “a first elastic member
installing section provided on the inner circumference surface of the guide.”
The Examiner concludes that:
Claim 38 is unclear as to how the first elastic member installing
section can be “provided on” the inner circumference of the
guide . . ., when the installing section is actually defined by an
inner circumference surface of the guide which does not appear
to confront an outer circumference surface of the electrode due
to the O-ring 193.
(RAN 17 & 18 (citations to line numbers in claim 38 omitted), citing ʼ156
patent, Figs. 3 & 4). Claim 45 recites a nozzle including “an elastic member
contacting section provided on the inner circumference surface of the nozzle,
and configured to contact an elastic member.” The Examiner concludes
with respect to the first of these limitations that:
Claim 45 is unclear as to how the elastic member contacting
section can be “provided on” the inner circumference surface of
the nozzle, when the contacting section is actually defined by
three inner nozzle surfaces, none of which appear to confront an
outer circumference surface of the guide due to relative
orientations and the O-ring 195.
(RAN 19, citing ʼ156 patent, Figs. 3 & 4).
The Examiner has not persuasively explained why one of ordinary
skill in the art might have understood the words “inner circumference
surface,” read in context, to be limited to a smooth surface rather than to
encompass a surface having grooves or facets. Neither has the Examiner
identified anything in the claim language or the written description of the
ʼ156 patent limiting the words “circumference surface” in such a fashion.
The first elastic member installing section of the insulating guide 105 as

depicted in Figures 3 and 4 of the ʼ156 patent, as well as the elastic member
contacting section of the nozzle 107 as depicted in those drawing figures,
take the form of grooves of rectangular cross-section bounded on three sides
by facets extending circumferentially with respect to the insulating guide
and the nozzle, respectively. The Examiner has not explained in a
persuasive manner why the claim language would have been understood to
be limited to a smooth surface so as to exclude these preferred embodiments.
The Examiner’s statements that the first elastic member installing
section recited in claim 38 does not “appear to confront an outer
circumference surface of the electrode guide” (RAN 17 & 18); and that the
elastic member contacting section recited in claim 45 does not “appear to
confront an outer circumference surface of the guide” (RAN 19), are not
commensurate with the language of the claims. Both quoted limitations
specify the function of the respective sections in terms of their interactions
with elastic members such as O-rings. Neither quoted limitation specifies
that the recited section “confronts” the outer circumference surface of any
other component of a plasma torch. In short, the Examiner has not explained
persuasively why the quoted limitations from claim 38 and 45 render those
claims indefinite.

“The Inner Circumference Surface Tapering in Accordance with a Changing
Diameter of the Water Pipe”
Claims 26 and 31 recite electrodes. The Examiner rejects the two
claims on the basis that the limitation, “the inner circumference surface [of
the electrode] tapering in accordance with a changing diameter of the water
pipe,” as used in those claims is indefinite. The Examiner concludes that
this language is indefinite because it is unclear whether the claim is
sufficiently broad to include an electrode alone or whether the claim is
limited to the combination of the electrode with a water pipe having a
tapered shape. (See RAN 15, 38 & 39). In addition, the Examiner
concludes that the limitation “tapering in accordance with a changing
diameter of the water pipe” fails to define the relationship between the inner
surface of the electrode and the outer surface of the water pipe with
reasonable precision. (See RAN 15, 16 & 38).
Neither claim 26 nor claim 31 recites an electrode in combination
with a water pipe. Instead, claim 26 recites an electrode having “an inner
circumference surface configured to surround a water pipe . . . when the
electrode is coupled to the electrode seating and the water pipe is inserted
into the electrode.” Claim 31 recites an electrode “wherein the inner
circumference surface of the electrode is configured to surround a water pipe
. . . when the electrode is coupled to the electrode seating and the water pipe
is inserted into the electrode.” (See App. Br. PO 10). The words “is
configured to” imply that the water pipe is part of the environment or
background against which the structural properties of the claimed electrodes
are defined.
The ʼ156 patent describes electrodes as consumable parts that are
subject to wear over time and that may be replaced several times during a

day’s processing work. (ʼ156 patent, col. 1, ll. 25–29). Just as in the case of
the wheel chairs at issue in Orthokinetics, one of ordinary skill in the art
seeking to interpret the limitations imposed on the dimensions of the
electrodes could have determined those dimensions based on the geometry
of the plasma torches onto which the electrodes were to be installed. (See
App. Br. PO 9). The Examiner has not shown that the limitation, “the inner
circumference surface [of the electrode] tapering in accordance with a
changing diameter of the water pipe,” renders claims 26 and 31 indefinite.

“An O-Ring Contacting Section Provided on the Outer Circumference
Surface of the Electrode . . .”
Claims 27 and 32 likewise recite electrodes. The Examiner rejects the
two claims on the basis that the limitation, “an O-ring contacting section
provided on the outer circumferential surface of the electrode and configured
to contact an O-ring, which is interposed between an inner circumference
surface of a cylindrical guide and the outer circumference surface of the
electrode,” as used in those claims is indefinite. The Examiner concludes
that this language is indefinite because it is unclear whether the claim is
sufficiently broad to include an electrode alone or whether the claim is
limited to the combination of the electrode with an O-ring or a cylindrical
guide, or both. (See RAN 16). The Examiner also concludes that the phrase
“an inner circumference surface of a cylindrical guide” lacks “antecedent
basis” because “a ‘cylindrical structure does not inherently exhibit an inner
circumference surface” (RAN 17; see also Ans. 5) and “a cylindrical
structure with an inner circumference surface could relate to a cavity rather
than a tubular structure” (RAN 39).

Much the same thing may be said here as of the contested language of
claim 26. Neither claim 27 nor claim 32 recites an electrode in combination
with either an O-ring or a cylindrical guide. Each claim recites an electrode
including “an O-ring contacting section . . . configured to contact an
O-ring.” This language limits the structure of the electrode in terms of the
electrode’s contact with an O-ring, or the electrode’s capacity to contact
such an O-ring. (See App. Br. PO 10 & 11). Such a recitation may be
satisfied by a suitable electrode alone even without an associated O-ring or
cylindrical guide.
The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) provides
an example indicating that claim language is indefinite due to a lack of
antecedent basis:
where the claim refers to “said lever” or “the lever,” where the
claim contains no earlier recitation or limitation of a lever and
where it would be unclear as to what element the limitation was
making reference. Similarly, if two different levers are recited
earlier in the claim, the recitation of “said lever” in the same or
subsequent claim would be unclear where it is uncertain which
of the two levers was intended. A claim which refers to “said
aluminum lever,” but recites only “a lever” earlier in the claim,
is indefinite because it is uncertain as to the lever to which
reference is made.
MPEP § 2173.05(e). The phrase “an inner circumference surface of a
cylindrical guide” does not introduce either the inner circumference surface
or the cylindrical guide with a definite article such as “the” or “said.” As
such, any defect in the phrase is not due to lack of antecedent basis.
Claims 27 and 32 recite an electrode including “an O-ring contacting
section provided on the outer circumferential surface of the electrode and
configured to contact an O-ring, which is interposed between an inner
circumference surface of a cylindrical guide and the outer circumference

surface of the electrode.” In the context of claims 27 and 32, the phrase “an
inner circumference surface of a cylindrical guide” implies that the
cylindrical guide has an inner circumference surface. (See App. Br. 11).
Trying to “fix” this language, such as by reciting that “the cylindrical guide
has an inner circumferential surface,” could suggest that the cylindrical
guide is an element of the claimed combination, thereby changing the scope
of the claim. The Examiner has not shown that the limitation, “an O-ring
contacting section provided on the outer circumferential surface of the
electrode and configured to contact an O-ring, which is interposed between
an inner circumference surface of a cylindrical guide and the outer
circumference surface of the electrode,” renders claims 27 and 32 indefinite.

“A First Elastic Member Installing Section Provided on the Inner
Circumference Surface of the Guide and Configured to Accommodate a
First Elastic Member”
The Examiner rejects claim 38 on the basis that the following
limitations are indefinite:
a first elastic member installing section provided on the
inner circumference surface of the guide and configured to
accommodate a first elastic member, which is interposed
between the inner circumference surface of the guide and the
outer circumference surface of the electrode . . . ; [and]
a second elastic member installing section provided on the
outer circumference surface of the guide and configured to
accommodate a second elastic member, which is interposed
between the outer circumference surface of the guide and the
inner circumference surface of the nozzle.
The Examiner concludes that the words “configured to accommodate” are
indefinite, reasoning that a “surface would appear to be insufficient structure
to ‘accommodate’ an O-ring/elastic member, because a surface, as opposed

to a groove, would not ‘make room for’ an O-ring.” (RAN 18, citing
Merriam-Webster.com).
The Examiner correctly concludes that the word “accommodate” is
sufficiently broad to encompass “mak[ing] room for” the elastic member.
(See Ans. 5 & 6; RAN 18; see also App. Br. PO 12; Reb. Br. PO 5). The
recitation that the first and second elastic member installing sections are
“provided on” the inner and outer circumference surfaces of the guide limit
the relationship between the first and second elastic member installing
sections and the guide; and the recitation that each of the first and second
elastic member installing sections is “configured to accommodate” an elastic
member limits the structure of the elastic member installing section, for
example, dimensionally. The Examiner has not shown that claim 38 is
indefinite.

“The Elastic Member Contacting Section being Configured to be Disposed
at a Position Overlapping the Part of the Cooling Water Passage as Viewed
Along an Arbitrary Radial Cut Plane Extending Perpendicular to a Central
Axis of the Nozzle”
Claim 45 recites a nozzle including:
an outer circumference surface, with a part of the outer
circumference surface being configured to define a part of a
cooling water passage when the nozzle is disposed inside the
plasma torch,
the elastic member contacting section being configured to
be disposed at a position overlapping the part of the cooling
water passage as viewed along an arbitrary radial cut plane
extending perpendicular to a central axis of the nozzle and
passing through both of the elastic member contacting section
and the part of the cooling water passage.

The Examiner concludes that the phrase, “the part of the cooling water
passage” recited at the end of the second indented limitation lacks
antecedent basis. (See RAN 20, 39 & 40). The phrase has its antecedent
basis in the phrase “a part of a cooling water passage” appearing in the first
indented limitation. (See App. Br. PO 12). In other words, both “part[s] of
the cooling water passage” recited in the second indented limitation
reproduced above are the same “part of a cooling water passage” recited in
the second indented limitation. The language “as viewed along an arbitrary
radial cut plane extending perpendicular to a central axis of the nozzle”
modifies the participle “overlapping.” The language does not imply, as the
Examiner suggests (see RAN 41), that “the part of the cooling water
passage” recited in the last indented limitation of claim 45 is a part different
from that recited in the previous indented limitation.
The Examiner also concludes that the phrase “the elastic member
contacting section being configured to be disposed at a position overlapping
the part of the cooling water passage” is indefinite because it is unclear how
the elastic member contacting section, which is physically separated from
the cooling water passage, can “overlap” that passage. (See Ans. 7; RAN 20
& 40). Claim 45, in fact, defines the position in which the elastic member
contacting section is configured to be disposed in terms of the geometry of
nozzle and of the structure of the plasma torch that surrounds the nozzle
when the nozzle is installed in the torch. More specifically, claim 45 recites
that the elastic member contacting section overlaps the part of the cooling
water passage “as viewed along an arbitrary radial cut plane extending
perpendicular to a central axis of the nozzle and passing through both of the
elastic member contacting section and the part of the cooling water
passage.” The elastic member contacting section and the cooling water

passage will “overlap” if such an arbitrary radial cut plane intersects both.
(See App. Br. PO 13; see also Resp. Br. Req’r 4).2 The Examiner has not
shown that claim 45 is indefinite.

Conclusion
The Examiner has not shown that claims 25–27, 29, 31–33, 38–42, 45,
46, 50, and 51 are indefinite under the second paragraph of § 112. We do
not sustain Ground 1 as applied to those claims.

2 We recognize that this interpretation renders the word “overlapping”
somewhat superfluous, since similar positioning is conveyed by the
recitation that the arbitrary radial cut plane “pass[es] through both of the
elastic member contacting section and the part of the cooling water
passage.” Although claims ordinarily are interpreted so as to give meaning
to every limitation, see Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007), “no canon of construction is absolute in its
application,” Renishaw PLC v. Marposs S.p.A., 158 F.3d 1243, 1248 (Fed.
Cir. 1998).

GROUND 8: ENLARGEMENT OF THE SCOPE OF THE ORIGINAL
PATENT CLAIMS
In Ground 8, the Examiner rejects claims 25–27, 29, 31–33, 38–42,
45, 46, 50 and 51 under pre-AIA 35 U.S.C. § 314(a), as enlarging the scope
of the claims of the patent undergoing reexamination. “A claim is enlarged
if it includes within its scope any subject matter that would not have
infringed the original patent.” In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir.
1994). The Examiner concludes as follows:
All of original claims 12, 18, 21 and 24 reasonably required the
elements of the “plasma torch” (antecedently recited in claim
preambles) as part of the claimed combinations, because the
language of the claim bodies necessarily relied upon those
elements. However, all of new claims 25–27, 38, 45, 48 and 50
now [recite] (or appear to [recite]) those required plasma torch
elements either functionally or futuristically (“adapted to”,
“configured to”, “when”, etc.). Thus, the new claims are
considered to be broader in scope than the original forms,
because functional/futuristic claim limitations are less restrictive
than structural limitations.
(RAN 34 & 35; see also Ans. 8).
Claims 25–27 and 50 claim electrodes for plasma torches. Claim 38
claims a cylindrical guide. Claims 45 claims a nozzle. Independent claims
12, 18, 21 and 24, as issued in the ʼ156 patent, differ from appealed,
independent claims 25–27, 38, 45 and 50 in that issued claims 12, 18, 21 and
24 recite interactions between the claimed components and other
components of plasma torches; whereas appealed claims 25–27, 38, 45 and
50 recite that the claimed components are “adapted to,” “configured to” or
“capable of” interacting with such other components.
For example, independent claim 12, as issued in the ʼ156 patent,
recites, with italics added for emphasis:

12. An electrode for a plasma torch, which is retained
by coupling detachably with an electrode seating of a plasma
torch, and which receives a supply of arc current by being
connected electrically to said electrode seating, comprising:
an electrical connection surface which contacts an
electrical connection surface on said electrode
seating, thereby forming an electrical connection
between said electrode and said electrode seating,
when the electrode is coupled to the electrode
seating; and
an elastic member which presses the electrical connection
surface of said electrode against the electrical
connection surface of said electrode seating by
elastic forces generated by elastic deformation,
when the electrode is coupled to said electrode
seating.
(ʼ156 patent, col. 29, ll. 1–14). Appealed, independent claim 25 recites, also
with italics added for emphasis:
25. An electrode for a plasma torch, which is adapted to
be retained by coupling detachably with an electrode seating of
the plasma torch, and which is adapted to receive a supply of arc
current by being connected electrically to said electrode seating,
the electrode comprising:
at least one electrical connection surface configured to
contact an electrical connection surface on the electrode seating,
thereby forming an electrical connection between the electrode
and the electrode seating, when the electrode is coupled to the
electrode seating, . . . ; and
a skirt section divided by a plurality of slits into a plurality
of said elastic members which are . . . capable of elastic
deformation in the inward direction to press the at least one
electrical connection surface of the electrode against the
electrical connection surface of the electrode seating by elastic
force generated by the elastic deformation, when the electrode is
coupled to the electrode seating, . . . .

The two claims differ in that claim 12, as issued in the ʼ156 patent, recites
interactions between the claimed electrode and an electrode seating of a
plasma torch; whereas appealed claim 25 recites that the claimed electrode is
“adapted to,” “configured to” or “capable of” interacting with such an
electrode seating. This distinction provides some support for the Examiner’s
conclusion that “the new claims are considered to be broader in scope than
the original forms, because functional/futuristic claim limitations are less
restrictive than structural limitations.” (RAN 34 & 35).
Nevertheless, the Patent Owner correctly points out that issued claims
12 and 24 each recite an “electrode;” claim 18 recites a “cylindrical guide;”
and claim 21 recited a “nozzle.” The body of each of claims 12, 18, 21 and
24 recites only elements of the claimed electrode, cylindrical guide or nozzle
as the subject of each indented limitation. Components of a plasma torch
other than those claimed are introduced in the preamble and serve only as
objects with which the claimed electrode interacts. (See App. Br. PO 28 &
29). Considering the structure of issued claims 12, 18, 21 and 24 in the
context of the particular circumstances of this appeal as a whole, issued
claim 12 claims an electrode capable of interacting with an electrode seating
of a plasma torch, rather than an electrode in combination with the electrode
seating. Issued claim 18 claims a cylindrical guide capable of fitting
between a nozzle and an electrode; and installing first and second elastic
members, rather than a cylindrical guide in combination with either a nozzle
and an electrode; or first and second elastic members. Issued claim 21
claims a nozzle capable of covering an electrode by means of a cylindrical
guide, rather than a nozzle in combination with an electrode and a
cylindrical guide. Finally, issued claim 24 claims an electrode capable of

being covered by a nozzle by means of a cylindrical guide, rather than an
electrode in combination with a nozzle and a cylindrical guide.
As such, the Examiner has not shown that appealed claims 25–27, 29,
31–33, 38, 39, 45, 46, 50 and 51 are broader than issued claims 12, 18, 21
and 24. We do not sustain Ground 8 as applied to appealed claims 25–27,
29, 31–33, 38, 39, 45, 46, 50 and 51. Because we have not sustained either
Ground 1 or Ground 8, we REVERSE the Examiner’s decision rejecting
claims 26, 31–33, 38 and 39.

GROUNDS 2 AND 4–6: FINDINGS OF FACT
Couch ʼ126
1. The primary reference in Grounds 2 and 4–6 is Couch ʼ126.
Figure 5 of Couch ʼ126, reproduced in part below, is a side sectional view of
a plasma cutting torch 10.

The torch 10 as depicted in Figure 5 includes a body 24 supporting an
electrode 30 and a two piece nozzle 34 (not enumerated; see Fig. 7). (Couch
ʼ126, col. 4, ll. 17–24; see also Fig. 7).
2. Inner and outer nozzle pieces 36, 38 of the two piece nozzle
34 have upper portions 36a, 38a that are generally tubular. The inner nozzle
piece 36 includes an annular mounting flange 36d located at its upper end.
The mounting flange 36d defines a stepped recess 36e on the inner

circumference surface. Lower, generally conical portions 36b, 38b of the
nozzle pieces 36, 38 converge to a pre orifice 36c and a nozzle exit orifice
38c, respectively. (Couch ʼ126, col. 4, ll. 24–35 & Figs. 5 & 7). As
depicted in Figure 5 of Couch ʼ126, the outer surface of the outer nozzle
piece 38 defines the outer circumference surface of the nozzle 34. The inner
surface of the inner nozzle piece 36 defines the inner circumference surface
of the nozzle.
3. The electrode 30 described by Couch ʼ126 is hollow. As
depicted in Figures 4, 5 and 7, the electrode 30 includes a flange situated
between an upper end portion that engages the a cathode body 24b of the
torch body 24; and a substantially cylindrical lower portion (identified by the
reference numeral 30a in Figure 7) terminating in a chamfered lower end
(identified by the reference numeral 30a in Figure 7) and a lower end face
(identified by reference numeral 30c in Figure 7) extending transversely to
an axis of the electrode. A halfnium insert 32 is press fit into the lower end
face 30c. (Couch ʼ126, col. 4, ll. 17–20 & 58–61).
4. The electrode 30 threadedly engages the cathode body 24b of
the plasma torch 10 so as to bias the electrode to a negative voltage. (Couch
ʼ126, col. 6, ll. 16–19 & Fig. 5; see also App. Br. PO 20). As depicted in
Figures 4 and 5 of Couch ʼ126, the flange of the electrode 30 defines a
stepped recess on the outer circumference surface of the electrode that faces
toward the nozzle 34 after the electrode and the nozzle are installed on the
plasma torch 10. It appears from Figure 5 that an axial socket or bore in a
lower end of the cathode body 24b receives an upper end of the electrode
30 above the flange; and that an external thread on an upper end of the
electrode engages an internal thread in the socket or bore of the cathode
body to position the electrode relative to the torch body 24 and the nozzle.

5. Couch ʼ126 teaches biasing the nozzle 34 to a positive voltage,
at least during an arc-formation phase. (See Couch ʼ126, col. 6, ll. 19–22).
The Examiner correctly finds that one of ordinary skill in the art would have
recognized that the electrode 30 must be electrically insulated from the
nozzle 34. (See RAN 28).
6. As also depicted in Figures 4 and 5 of Couch ʼ126, a cylindrical
swirl ring 28 fits into the stepped recess on the outer circumference surface
the electrode 30 and into a stepped recess 36e on the inner circumference
surface of the nozzle 34. (See Couch ʼ126, col. 4, ll. 17–20). As depicted in
Figure 4, the swirl ring 28 acts as a cylindrical guide, spacing the inner
circumference surface of the nozzle 34 from the outer circumference surface
of the electrode 30 to define a plasma chamber 14. The plasma chamber 14
conducts a plasma gas flow 48 within the inner nozzle piece 36. Because
one of ordinary skill in the art would have recognized that the electrode 30
must be electrically insulated from the nozzle 34, one of ordinary skill in the
art would have had reason fabricate the swirl ring from an electrically
insulative material.
7. More specifically, the plasma gas flow 48 enters the plasma
chamber 14 from a gas inlet chamber 52 through canted holes 28a in the
swirl ring 28. The canted holes 28a impart a vortex motion to the gas to
help stabilize the arc formed by the plasma torch 10. The plasma gas flows
between the inner circumference surface of the nozzle 34 from the outer
circumference surface of the electrode 30; and exits the plasma chamber 14
through the pre-orifice 36c. (See Couch ʼ126, col. 4, ll. 46–64; see also id.,
col. 2, ll. 8–17).
8. As depicted in Figure 5, the swirl ring 28 defines an annular
channel on its outer circumference surface for receiving an O-ring 40. The

O-ring presses against a portion of the inner circumference surface of the
nozzle 34 to seal the interface between the swirl ring 28 and the nozzle. (See
Couch ʼ126, col. 4, ll. 33 & 34). Likewise, the flange on the electrode 30
defines an annular channel on its outer circumference surface for receiving
an O-ring. This O-ring, which has no reference numeral in Figure 5, presses
against an inner circumference surface defined by the torch body 24.
9. The space between the inner and outer nozzle pieces 36, 38
defines a bypass channel 18 that vents a portion of the swirling plasma gas
near the pre orifice 36c. The vented gas flow 16 enters the bypass channel
18 through vent holes 20a; flows over the inner nozzle piece 36; and exits
the bypass channel through a second gas outlet positioned between the pre
orifice 36c and the nozzle exit orifice 38c. The venting of the plasma gas
increases the flow of gas near the electrode 30 and helps to stabilize the
cutting arc. (Couch ʼ126, col. 4, ll. 12–17; col. 4, l. 65 – col. 5, l. 13;
& Figs. 5 & 7).
10. Annular channels on the outer surfaces of the inner and outer
nozzle portions 36, 38 mount O-rings 42, 44 press against facing surfaces of
the body 24 on opposite sides of the vent holes 20a. The O-rings 42, 44 help
to isolate an outlet gas chamber 46 from which the vent holes draw vent gas
into the bypass channel 18. (See Couch ʼ126, col. 4, ll. 37–40).
11. The torch 10 described by Couch ʼ126 includes a cooling pipe
received concentrically within the electrode 30 to circulate cooling water
within the electrode and thence to the nozzle 34. (Couch ʼ126, col. 5, ll.
47–49). More specifically, as depicted in Figures 5 and 7, water flows into
the interior of the electrode 30 through the cooling pipe 60 and then flows
upwardly through an annular passageway defined between the inner
circumference surface of the electrode and the outer circumference surface

of the cooling pipe. “The cooling water circulates through the torch via
internal passages to a water cooling chamber 62 where the water flows over
the lower portion 38b of the nozzle to cool the nozzle, particularly the walls
of the nozzle orifice 38c.” (Couch ʼ126, col. 5, ll. 49–54). Couch ʼ126
teaches that it is desirable to maintain a cool nozzle wall near the pre orifice
36c and the nozzle exit orifice 38c in order to constrict the thickness of the
arc and control gouging of the wall of the nozzle. (Couch ʼ126, col. 1, ll.
22–35).

Couch ʼ308
12. Couch ʼ308 describes a plasma arc cutting torch including a
cathode 15 mounted on the end of a heavy copper tube 17; and a two-piece
nozzle 31, 33. The heavy copper tube 17 is surrounded by a sleeve 21 of an
electrically insulative material which, in turn, fits into an insulative body
member 25. (See Couch ʼ308, col. 1, ll. 61–67; col. 1, l. 72 – col. 2, l. 3;
& Figs. 1–3).

Sobr
13. Sobr describes a high definition plasma arc torch system 10.
The system 10 includes a torch 24, 158. (See Sobr, col. 3, ll. 37–42 and Fig.
1). The front end 26 of the torch 24 described by Sobr is similar in
construction to the front end of the plasma cutting torch 10 described by
Couch ʼ126. (See, e.g., Sobr, col. 4, ll. 1–3 (referring the reader to Couch
ʼ126 for a further description of the two piece nozzle 34 in Sobr’s torch 24)).
Sobr does not describe in detail how the copper electrode 28 is affixed in the
front end 26 of the torch 24.

Luo
14. Luo describes a plasma arc torch 10 including body portion 12
supporting a nozzle 34 and an electrode 48. (See Luo, col. 3, ll. 2–6, 28–31
& 43–45; & Figs. 1 & 2). Luo’s torch 10 also includes a drag cap 124
removably mounted on the sleeve member 36 to assist an operator in
maintaining sufficient spacing between the distal end of the nozzle 34 and
the workpiece. (See Luo, col. 1, ll. 26–30; col. 5, ll. 29–32 & col. 7, l. 11–
17). The drag cap 124 is fabricated from copper or copper alloy; and has a
plurality of slots 150 defining resilient, spaced tabs 156. (See Luo, col. 5, l
61 – col. 6, l. 11 & Figs. 1, 3 & 4). When the torch 10 is assembled, the drag
cap 124 fits over a conical surface 166 of the sleeve member 36. The tabs
156 of the drag cap 124 deflect outwardly so as to fit over, and resiliently
engage, the cylindrical surface 164 of the sleeve member 36. In doing so,
the tabs 156 removably attach the drag cap 124 to the sleeve member 36.
The slots 150 in the drag cap 124 fit around projections 170 extending from
the surface 164 of the sleeve member 36 to restrict the drag cap from
rotating on the sleeve member 36. (See Luo, col. 8, ll. 47–60 and Fig. 2).

Reed
15. Reed describes a nozzle assembly 10 designed to surround an
electrode 12 in a plasma jet cutting torch. (See Reed, col. 3, ll. 40–52; &
Fig. 1). The nozzle assembly 10 includes a nozzle base 18 and an insulator
20. (See Reed, col. 3, ll. 65–68). The insulator 20 reduces the likelihood of
“double arcing,” a condition in which the plasma arc originating at the
electrode deflects to the nozzle wall before reaching the workpiece. In
addition, the space between the nozzle base 18 and the insulator 20 can
provide a chamber for conducting shield gas or a cooling fluid along the
outer circumference surface of the nozzle toward the nozzle orifice. (See
Reed, col. 1, ll. 28–38; & Figs. 1 & 7).
16. Reed teaches that it is important both that the insulator 20 be
positioned coaxially with the nozzle base 18; and that the gap between the
insulator and the nozzle base be maintained within close tolerances, in order
to assure a good quality cut and to extend the lives of consumable
components. (See Reed, col. 1, ll. 47–53). Nevertheless, the electrode 12
and the nozzle base 18 are consumable parts. In order to facilitate the
replacement of these parts without sacrificing the close tolerances between
the nozzle base 18 and the insulator 20, Reed teaches providing the nozzle
base with resilient fingers 54 for insertion into a bore 51 in the insulator.
(See Reed, col. 2, ll. 64–67).
17. More specifically, Figures 11a and 11b of Reed depict a
generally cylindrical nozzle assembly in which the nozzle base includes a
disc-like shoulder section and a neck section projecting from one side of the
shoulder section. The nozzle base also includes a cylindrical shroud 75 that
projects from the shoulder section and surrounds the neck section. Key-hole
like slits 76 divide the shroud into a plurality of resilient (that is, inwardly-

deflectable) fingers. (Compare Reed, col. 4, ll. 61–63 (describing an
“embodiment similar to that of FIG. 5”) with col. 4, ll. 26–36).
18. The insulator includes a bore coaxial with an insulator orifice.
When the neck portion of the nozzle base is pressed into the bore, the
resilient fingers deflect inwardly to create a resilient interference fit between
the nozzle base and the insulator. (Compare Reed, Figs. 11a & 11b with
Reed, col. 4, ll. 33–36).
19. The lengths of the resilient fingers as depicted in Figure 11a are
such as to limit how far the neck portion of the nozzle base may be pressed
into the bore in the insulator. In this manner, the resilient fingers serve to
precisely determine the gap between the nozzle base and the insulator. The
gap between the outer circumference surface of the neck portion and the
inner circumference surface of the bore defines a plenum for conducting a
coolant C over the nozzle base toward the insulator orifice. In particular, the
coolant C flows between the resilient fingers so as not to obstruct its
movement through the plenum. (Compare Reed, Figs. 11a & 11b with
Reed, col. 4, ll. 36–42).

GROUNDS 2 & 5 AS APPLIED TO CLAIMS 45 AND 46:
ANTICIPATION AND OBVIOUSNESS
In Grounds 2 and 5, the Examiner rejects claims 45 and 46 under
§ 102(b) as being anticipated by Couch ʼ126 or, in the alternative, under
§ 103(a) as being unpatentable over Couch ʼ126 and Couch ʼ308. We do not
agree with the Examiner’s finding that Couch ʼ126 anticipates these claims;
or the Examiner’s conclusion that the subject matter of these claims would
have been obvious from the combined teachings of Couch ʼ126 and Couch
ʼ308.

As discussed earlier, claim 45 recites a nozzle including:
an outer circumference surface, with a part of the outer
circumference surface being configured to define a part of a
cooling water passage when the nozzle is disposed inside the
plasma torch,
the elastic member contacting section being configured to
be disposed at a position overlapping the part of the cooling
water passage as viewed along an arbitrary radial cut plane
extending perpendicular to a central axis of the nozzle and
passing through both of the elastic member contacting section
and the part of the cooling water passage.
(Italics added for emphasis.) Despite the Examiner’s conclusion, and the
Requester’s argument, to the contrary (see RAN 20; Resp. Br. Req’r 3), the
phrase “the part of the cooling water passage” appearing twice in the second
quoted indented limitation refers to the same “part of a cooling water
passage” recited in the first indented limitation. As discussed earlier, the
definite article “the” indicates that “the part of the cooling water passage”
has an antecedent basis in the “part of a cooling water passage” recited
earlier in the claim. (See App. Br. PO 15).
The Patent Owner includes a marked up copy of the lower portion of
Figure 5 on page 14 of its Appeal Brief. The marked-up drawing shows that
one cannot draw an arbitrary radial cut plane that extends perpendicularly to
a central axis of the nozzle 34; and that passes through both the elastic
member contacting section (that is, the stepped section 36e) and the part of
the cooling water passage defined by (that is, adjacent to) the nozzle.
The Examiner finds that the step section 36e of the nozzle 34 of the
plasma torch 10 described in Couch ʼ126 corresponds to the elastic member
contacting section recited in claim 45. (See RAN 23; Resp. Br. Req’r 3; see
also FF 6). Couch ʼ126 describes cooling water passages leading from the

interior of the electrode 30 to the water cooling chamber 62; as well as the
passage of cooling water through the water cooling chamber itself. (See FF
11). The Requester correctly points out that additional water passages, not
shown in the particular sectional view of Figure 5, must be present in the
plasma torch 10 in order to drain the water cooling chamber 62. (See Resp.
Br. Req’r 3–5; see also Couch ʼ126, col. 6, ll. 24–28). Nevertheless, the
Requester has not shown by a preponderance of the evidence that the outer
circumference surface of the nozzle 34 is configured to define any part of
any such internal passage. In other words, the Requester has not shown that
any part of any such internal passage corresponds to “the part of the cooling
water passage” recited in claim 45.
The Examiner finds that:
the nozzle 34 disclosed by Couch ʼ126 is capable of being used
with a differently structured torch, . . . such that a non-threaded
part of the water chamber 62 would be disposed in a common
radial plane with O-ring 40. In this regard, the function of the
inventive two-piece nozzle 34 of Couch ʼ126 is not dependent
upon the axial location of the thread 66a.
(RAN 42). The Examiner has not proven this finding by a preponderance of
the evidence. As the Patent Owner points out on page 14 of its Appeal
Brief, the outer circumference surfaces of the upper portions 36a, 38a of the
inner and outer nozzle pieces 36, 38 as depicted in Figure 5 abut against the
body 24. The upper portions 36a, 38a also mount the O-rings 42, 44 that
seal the outlet gas chamber 46. (See FF 8 & 9). The Examiner has not
shown that one of ordinary skill in the art would have had reason to install
the nozzle 34 described by Couch ʼ126 in a plasma torch in which a part of a
cooling water passage would have been defined by the outer circumference
surface of the mounting flange 36d that defines a stepped recess 36e. (See

FF 2). To have attempted to do so might have compromised the bypass gas
flow 16 that Couch ʼ126 describes as “the main thrust of [its] invention.”
(See Reb. Br. PO 13 & 14; see also Couch ʼ126, col. 4, l. 65 – col. 5, l. 3).
Neither the Examiner nor the Requester has proven that Couch ʼ126
describes a nozzle satisfying every limitation of claims 45 and 46. Couch
ʼ126 does not anticipate claims 45 and 46 under § 102(b). Therefore, we do
not sustain Ground 2 as applied to appealed claims 45 and 46.
In Ground 5, the Examiner cites Couch ʼ308 for the teaching to
fabricate the cylindrical guide from an electrically insulative material. (See
RAN 28; see also FF 12). This teaching does not remedy the deficiencies in
the disclosure of Couch ʼ126 as applied to claims 45 and 46. Thus, the
Examiner has not established that the subject matter of claims 45 and 46
would not have been obvious under § 103(a) from the teachings of Couch
ʼ126 and Couch ʼ308. Therefore, we do not sustain Ground 5 as applied to
claims 45 and 46.

GROUNDS 4 AND 6: OBVIOUSNESS
In Ground 4, the Examiner rejects claims 13, 25, 27, 29 and 34 under
§ 103(a) as being unpatentable Couch ʼ126, Sobr, Luo and Reed. In Ground
6, the Examiner rejects claims 50 and 51 under § 103(a) as being
unpatentable over Couch ʼ126, Couch ʼ308, Sobr, Luo and Reed. We agree
with the Examiner’s conclusion that the subject matter of these claims would
have been obvious.

Claims 13 and 34
Claim 13 recites an electrode including:

an elastic member which presses the electrical connection
surface of said electrode against the electrical connection surface
of said electrode seating by elastic force generated by elastic
deformation, when the electrode is coupled to said electrode
seating; . . . and
a skirt section which is inserted into said electrode seating
at the base end portion thereof, said skirt section being divided
by a plurality of slits into a plurality of said elastic members
which are tongue-shaped and capable of elastic deformation in
the inward direction, and these tongue-shaped elastic members
having said electrical connection surface on the outer
circumference thereof.
The Examiner finds that Couch ʼ126 describes an electrode satisfying each
limitation of claim 13 except those quoted. (See RAN 25 (“Couch ʼ126
teaches all claimed elements except for the electrical connection surface
being a plurality of elastic tongue-shaped members.”). The Examiner
correctly concludes that it would have been obvious to substitute tongue-
shaped elastic members capable of deflecting inwardly in a manner
disclosed in Reed to create a resilient fit in the bore of the cathode body 24b,
in place of the threaded connection described by Couch ʼ126, to detachably
connect the electrode to the cathode body. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007)(“when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.”).3

3 Our holding is not dependent on finding that it would have been
obvious to fabricate the electrode from copper; or that copper is inherently
resilient. (See RAN 25; App. Br. PO 20). Reed teaches a type of connection
using inwardly-deflectable, resilient fingers. (See FF 16–18). The Patent
Owner does not dispute that one of ordinary skill in the art familiar with the
teachings of Reed had sufficient skill to fabricate an electrode having
resilient fingers.

The Examiner concludes that this substitution would have been
obvious because one of ordinary skill in the art would have recognized that
these two types of connection were interchangeable. (See RAN 26). The
Examiner correctly finds that a resilient fit effected by inserting resilient
fingers extending from one component into a bore in another component was
a type of connection known, if not common, in the pertinent art. Reed
teaches this, at least in the context of connecting a nozzle base to an
insulator in a nozzle assembly. (See FF 16–18). The Examiner also
correctly finds that one of ordinary skill in the art would have recognized
that a type of connection using a resilient fit effected by means of tongue-
shape elastic members or fingers, as taught by Reed, was interchangeable
with a type of connection using mating threads, as described in Couch ʼ126.
The type of connection taught by Reed is similar to the threaded
connection described in Couch ʼ126. Structurally, Couch ʼ126 teaches a
connection in which an upper portion of the electrode 30 is retained in a bore
in the cathode body 24b, albeit by means of mating threads. Reed teaches a
connection in which a portion of a nozzle body is retained in a bore in an
insulator. Functionally, there appears to be no dispute that the threaded
connection described by Couch ʼ126 is detachable so as to permit the
removal and replacement of spent electrodes. Reed says that a nozzle
assembly including a resilient fit type of connection it teaches “can be
quickly disassembled and assembled manually by a simple pulling, pushing
or twisting motion.” (Reed, col. 2, ll.
40–43). The Patent Owner asserts that it was “common knowledge among
[those] skilled in the plasma torch field that the threaded connection between
the electrode 30 and the electrode seating (i.e., the cathode body 24b) as
disclosed by Couch ʼ126 ensures proper alignment between the center axis

of the electrode 30 and the center axis of the electrode seating.” (App. Br.
PO 22 & 23). Reed teaches that the resilient fit connection it teaches
provides for “orifice concentricity,” among other forms of alignment,
between the nozzle base and the insulator into which the nozzle base is
inserted (see Reed, col. 5, ll. 20–24), even if other structure in the plasma
torch assures axial alignment of the nozzle orifices with the torch. Facts
such as these support the Examiner’s finding that the two types of
connection are interchangeable.
The Patent Owner argues that one of ordinary skill in the art would
not have had reason to substitute the resilient fit taught by Reed for the
threaded connection described in Couch ʼ126 because Reed’s teaching to use
resilient fingers was intended to address the problem of maintaining a
predetermined gap between a nozzle base and a surrounding insulator. The
Patent Owner contends that a solution to this problem would not have been
relevant to the design of an electrode. (See App. Br. 20 & 21; Reb. Br. 11 &
12). As the Supreme Court instructs us, “[c]ommon sense teaches . . . that
familiar items may have obvious uses beyond their primary purposes.” KSR
Int’l at 420. One having sufficient skill to understand the teachings of
Couch ʼ126 and Reed would have understood that the resilient fit taught by
Reed would have provided axial alignment between a nozzle base 18 and an
insulator 20 of a nozzle in a manner similar to that in which the threaded
connection provided axial alignment between an electrode 30 and the
cathode body 24b, while also providing the additional function of
maintaining a predetermined gap. In both cases, a cylindrical bore in one
body would have received and aligned a portion of the other body. Neither
the substitution of tongue-like elastic members for an external thread on the
upper end of the electrode, nor the substitution of a smooth bore wall for the

internal thread described by Couch ʼ126, would have proven unduly difficult
for one of ordinary skill to carry out.
In accordance with the teachings of Reed, the proposed substitution
would have provided at least some degree of axial alignment between the
electrode and the cathode body. Other structure in the torch described in
Couch ʼ126, such as the swirl ring 28 (see FF 6) and the O-ring mounted on
the flange of the electrode 30 (see RAN 43 & 44; see also FF 8) would have
cooperated to provide concentric axial alignment between the electrode and
the nozzle. As the Requester points out (see Resp. Br. Req’r 7), only an
ordinary level of skill would have been required to recognize that the
resilient fit taught by Reed could be applied to the electrode 30 and the
cathode body 24b described in Couch ʼ126, as opposed to the nozzle body
and an insulator described in Reed. See KSR Int’l at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
The Patent Owner also argues that the resilient fit taught by Reed is
inferior to the threaded connection described in Couch ʼ126 because the
resilient fit may not align the electrode as precisely along the axis of the
electrode seating as the threaded connection would; and because the resilient
fit might result in greater electrical impedance between the electrode and the
electrode seat than would the threaded connection. (See App. Br. 22–24).
The Patent Owner makes no representation regarding the degree to which
the resilient fit taught by Reed might be inferior. Despite the Patent
Owner’s arguments, we note that the resilient fit taught by Reed could be
connected or disconnected by merely pushing or pulling the electrode, as
opposed to the need to turn the threads of the connection described in Couch
ʼ126. (See Reed, col. 2, ll. 40–43; see also id., col. 5, ll. 20–24). “[A] given
course of action often has simultaneous advantages and disadvantages, and

this does not necessarily obviate motivation to combine.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Here, one of ordinary
skill in the art might have chosen to replace the threaded connection
described in Couch ʼ126 with the resilient fit taught by Reed in order to
secure faster and easier independent replacement of the electrode, despite the
possible detrimental effect on the axial alignment between the electrode and
the electrode seating; and the possible increase in electrical impedance that
might result.

Claims 25 and 29
Claim 25 recites an electrode in which “the slits defining a part of a
cooling water passage so that the at least one electrical connection surface is
located in the vicinity of the cooling water passage.” The plasma torch
described by Couch ʼ126 includes a cooling water passage defined by the
inner circumference surface of the electrode and an outer circumference
surface of a cooling pipe received inside the electrode. (See FF 11). Slits
dividing tongue-shaped elastic members substituted for the external thread
described in Couch ʼ126 would define, at least partially, an upper portion of
the inner circumference surface of the electrode 30. These facts
affirmatively prove, by a preponderance of the evidence, that those slits
would define a part of the annular cooling water passage between the inner
circumference surface of the electrode and the outer circumference surface
of a cooling pipe. (See RAN 26; Resp. Br. PO 8). The electrical connection
surfaces, that is, the outer circumference surface of each tongue-shaped
elastic member, would be in the vicinity of these slits that collectively define
a part of the cooling water passage. Despite the Patent Owner’s argument to

the contrary (see App. Br. PO 25), the proposed substitution would satisfy
the limitation.

Claim 27
Most pertinently, claim 27 recites an electrode including “an O-ring
contacting section provided on the outer circumference surface of the
electrode and configured to contact an O-ring, which is interposed between
an inner circumference surface of a cylindrical guide and the outer
circumference surface of the electrode.” The claim further recites “the O-
ring contacting section being disposed between the flange and a front end
portion of the electrode with respect to an axial direction of the electrode.”
The Requester correctly argues that Couch ʼ126 describes an electrode
satisfying these limitations. Therefore, we sustain the Examiner’s
conclusion that the subject matter of claim 27 would have been obvious.
The Requester correctly interprets the recitation “O-ring contacting
section” as sufficiently broad to encompass “nothing more than a
cylindrically machined section” of the electrode. (Resp. Br. Req’r 8). A
cylindrically machined section of the electrode would be configured to
contact an O-ring because its cross-section, like that of the inner
circumference surface of an O-ring, is circular. This interpretation is
consistent with the embodiments depicted in Figures 3 and 9 of the ʼ156
patent. In these embodiments, the electrode 103 includes a flange 183
extending radially from its outer circumference surface. The lower surface
of the flange 183 defines a stepped recess for engagement with the
cylindrical guide 105. The portion of the outer circumference surface of the
electrode 103 beneath the stepped recess is cylindrical. When the electrode
103 is assembled into a detachable unit 101B, the O-ring 193 presses against

this cylindrical surface. In order for the recitation “O-ring contacting
section” to read on the embodiment described in the ʼ156 patent, the
recitation must be sufficiently broad to encompass a cylindrical outer surface
of the electrode.
The electrode 30 depicted in Figures 5 and 7 of Couch ʼ126 includes a
lower portion 30a stretching from a flange having a stepped recess for
receiving the swirl ring, at an upper end of the lower portion, to a chamfered
lower end portion 30b. This lower portion 30 has a cylindrical outer
circumference surface. (See FF 3). The depiction of this cylindrical lower
portion 30a in Figures 5 and 7 affirmatively proves by a preponderance of
the evidence that the electrode 30 has “an O-ring contacting section provided
on the outer circumference surface of the electrode and configured to contact
an O-ring, . . . the O-ring contacting section being disposed between the
flange and a front end portion of the electrode with respect to an axial
direction of the electrode.” This finding is based on the disclosure of Couch
ʼ126 and does not rely on inherency. Nothing in the Examiner’s proposed
substitution of tongue-shaped elastic members for the threaded connection
described in Couch ʼ126 would have suggested eliminating the O-ring
contacting section of the electrode 30 as depicted in Figures 5 and 7.
The subject matter of claim 27 is an electrode. Claim 27 limits the
electrode to one having an O-ring contacting surface “configured to contact
an O-ring.” Claim 27 does not positively recite an O-ring; that is, the claim
is not limited to a combination of the recited electrode and an O-ring.
Therefore, the subject matter of claim 27 would have been obvious from the
disclosure of Couch ʼ126, as modified in view of the teachings of Reed, even
though Couch ʼ126 fails to disclose an O-ring interposed between the
electrode 30 and a cylindrical guide such as the swirl ring 28. The fact that

Couch ʼ126 describes an electrode 30 having an O-ring contacting surface as
recited in claim 27 is sufficient to satisfy the limitation.

Conclusion
Therefore, the Examiner correctly rejects claims 13, 25, 27, 29 and 34
under § 103(a) as being unpatentable over the combined teachings of Couch
ʼ126, Sobr, Luo and Reed. We sustain Ground 4 as applied to those claims.
The Patent Owner argues the patentability of claims 50 and 51 under
§103(a) over the combined teachings of Couch ʼ126, Couch ʼ308, Sobr, Luo
and Reed on the basis of the same arguments adduced in opposition to
Ground 4. Being unpersuaded by those arguments, we also sustain Ground
6 as applied to claims 50 and 51.
DECISION
We AFFIRM the Examiner’s decision adopting Grounds 4 and 6
(Ground 7 being summarily affirmed); and REVERSE the Examiner’s
decision as to Grounds 1, 2, 5 and 8. Because these seven grounds are
determinative of the appeal, we do not reach Ground 3.
Therefore, we AFFIRM the Examiner’s decision rejecting claims 13,
25, 27, 29, 34, 48, 50 and 51. We REVERSE the Examiner’s decision
rejecting claims 26, 31–33, 38–42, 45 and 46.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). No time
period for taking any subsequent action in connection with this appeal may
be extended under 37 C.F.R. § 1.136(a).
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A

request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section; for requesting further rehearing under paragraph (d) of this
section; and for submitting comments under paragraph (c) of this section,
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81; see
also MANUAL OF PATENT EXAMINING PROCEDURE § 2682. In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

THE AMERICAN TORCH TIP CO.
Respondent, Requester

v.

Patent of KOMATSU LTD.
Appellant, Patent Owner
________________

Appeal 2015-004987
Inter partes Reexamination Control 95/002,300
Patent US 6,320,156 B1
Technology Center 3900
________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge, dissenting-in-part.

I concur with my colleagues and join in the majority’s Decision in all
respects except for the disposition of Ground 8, and write separately to
respectfully dissent as to its disposition.
The Examiner rejected claims 25–27, 29, 31–33, 38–42, 45, 46, 50,
and 51 as enlarging the scope of the claims of the ’156 patent, which is
prohibited under 35 U.S.C. § 314(a) (RAN 34). The majority focused on
original claim 12, and new claim 25 in its analysis, and concluded that
“[c]onsidering the structure of issued claims 12, 18, 21, and 24 in the context
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of the particular circumstances of this appeal as a whole, issued claim 12
claims an electrode capable of interacting with an electrode seating of a
plasma torch, rather than an electrode in combination with the electrode
seating.” (Decision 25; see also Decision 23–24). Similar conclusions are
reached with respect to the other new claims that are directed to a cylindrical
guide or a nozzle (Decision 25).
I do not agree with the majority, and generally agree with the
Examiner. In view of the majority’s Decision, the discussion below also
generally focuses on claim 12. However, similar considerations are also
applicable to the other new claims at issue in Ground 8.
It is not clear to me that claim 12 does not include an electrode seating
as a limitation as the majority concludes, because the claim language
indicates the contrary. Claim 12 explicitly recites that the electrode: “is
retained by coupling detachably with an electrode seating”; “receives a
supply of arc current by being connected to said electrode seating”; includes
a connection surface that “contacts an electrical connection surface on said
electrode seating”; and “presses the electrical connection surface of said
electrode against the electrical connection surface of said electrode seating.”
The Specification of the ’156 patent provides adequate description for the
recitations in claim 12, including the components of the plasma torch and the
electrode retained therein (see Figs. 1–5 & 9–11 and disclosure in the
Specification related thereto). In my view, claim 12 should be interpreted to
give more weight to such claim language, and to require the explicitly
recited electrode seating, instead of being interpreted to merely require
“capability of interacting.”
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In further support of concluding that the electrode seating should be
considered to be part of claim 12, I observe that the electrode recited in
claim 24 also referenced by the majority, must include the electrode seating.
Specifically, similar to claim 12, claim 24 recites “[a]n electrode for a
plasma torch, disposed inside the plasma torch.” However, claim 24 further
specifically recites that the electrode “[has] a clearance between the inner
circumference of said guide and the outer circumference of said electrode,”
thereby positively reciting “a clearance” as an element of the electrode. It is
unclear to me how “a clearance” can be claimed as an element of an
electrode, without also requiring the very structure that defines the recited
clearance.
I also observe that some other claims, which are directed to a specific
apparatus, positively recite elements that appear to be beyond what a person
of ordinary skill would consider to be part of the apparatus to which the
claim is directed (see, e.g., claim 1: “A plasma cutting device comprising: …
a working table, and a movement mechanism”; claim 4: “A plasma torch
provided with a torch main unit having cooling water piping and plasma gas
piping.”).
As the majority opinion notes, “[a] claim is enlarged if it includes
within its scope any subject matter that would not have infringed the original
patent.” In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994). In this regard,
a claim is “broader in scope than the original claims if it contains within its
scope any conceivable apparatus or process which would not have infringed
the original patent.” Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374
(Fed. Cir. 2006); see also In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir.
1994)(same test for broadening in reexamination as in reissue).
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Hence, in order to infringe claim 12, the explicitly recited electrode
seating is required in order to attain the actual interaction (or interface), and
the corresponding functional result also explicitly recited, such as “thereby
forming an electrical connection between said electrode and said electrode
seating.” In contrast, because new claim 25 recites that the claimed
components are “adapted to,” “configured to,” or “capable of,” interacting
(or interfacing) with the other recited components, such recited components,
the recited interaction, and the cited corresponding functional result, need
not actually be present in order to establish infringement, as long as the
capability is present. Similar considerations are applicable to the other
claims at issue in Ground 8. Thus, I agree with the Examiner’s conclusion
that the new claims revise the language of the original claims of the ’156
patent in a manner that makes them broader, which is prohibited. 35 U.S.C.
§ 314(a).
I understand the majority’s reasoning for concluding that the original
claim 12 does not require the recited electrode seating, and that other claims
at issue do not require the structural components of the plasma torch recited
therein (Decision 25–26). Indeed, as to the elements recited, claim 12
includes the equivocating language “when the electrode is coupled to the
electrode seating,” which appears to support the majority’s reasoning.
However, in my view, such language is not dispositive as to claim
broadening, because even if claim 12 does not require the recited electrode
seating as concluded by the majority, claim 12 nonetheless recites that
“when the electrode is coupled to the electrode seating,” a particular
interaction and a corresponding functional result is attained. Specifically,
claim 12 states that the electrode “receives a supply of arc current by being
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connected electrically to said electrode seating,” and when coupled to the
electrode seating, that “an electrical connection surface [of the electrode] []
contacts . . . said electrode seating thereby forming an electrical connection
between said electrode and said electrode seating.” Thus, in order for an
electrode to infringe claim 12, this recited interaction, and the corresponding
functional result must occur “when the electrode is coupled to the electrode
seating,” even if the structure of the recited electrode seating is not required
by claim 12.
As noted, a claim is “broader in scope than the original claims if it
contains within its scope any conceivable apparatus or process which would
not have infringed the original patent.” Medtronic, 465 F.3d at 1374. In my
view, this test favors concluding that the new claim 25 is broader than
original claim 12. As discussed above, in contrast to claim 12, new claim 25
does not require actual interface/interaction and the corresponding functional
result, but rather, claims an electrode that is generally adapted to, or capable
of, such an interaction. Thus, new claim 25 not only encompasses an
electrode that, when coupled to the electrode seating, attains the recited
interaction and the corresponding functional result, but also encompasses an
electrode that does not attain them, as long as the electrode is capable of
attaining them.
For instance, in accordance with the test for broadening, it can be
conceived that an improved electrode may be designed for use with more
than one model of plasma torches. In this regard, it can be conceived that an
improved electrode may be designed for use with an improved plasma torch
in which the arc current is received through an electrical connection
established, not through the electrode seating, but through another structure
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elsewhere on the electrode. However, it can be conceived that for economic
reasons, such an improved electrode may also be further designed to allow
the electrode to alternatively receive the arc current through the electrode
seating in a certain model of a plasma torch, for example, an earlier,
unimproved model.
In such a scenario, even when the improved electrode is retained and
coupled in the improved plasma torch, such an improved electrode would
not infringe original claim 12 because the recited interaction and the recited
corresponding functional result are not attained. However, such an
improved electrode would infringe newly added claim 25 because the
improved electrode is still capable of being used with the unimproved
plasma torch, even though in the context of the improved plasma torch, none
of the recited interface/interaction or the corresponding functional result
would be attained, even “when the electrode is coupled to the electrode
seating.”4
While the Specification of the ’156 patent may have provided
adequate descriptive support for the new claims, that does not give the
Patent Owner the latitude to subsequently broaden the original claims during
reexamination to ensnare additional potential infringers. Such new claims
are prohibited by 35 U.S.C. § 314(a). Therefore, for the above reasons, I
would have affirmed the Examiner’s rejection set forth in Ground 8.
I respectfully dissent as to the disposition of Ground 8.

4 While indirect infringement theories may be applicable to the improved
electrode scenario conceived to establish infringement, I would consider any
amendments to the claims or new claims that would shift indirect
infringement to direct infringement as being indicative of claim broadening.
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PATENT OWNER:

GLOBAL IP COUNSELORS, LLP
DAVID TARNOFF
1233 20TH STREET, NW, SUITE 700
SUITE 700
WASHINGTON, DC 20036-2680

THIRD PARTY REQUESTER:

EMERSON, THOMSON & BENNETT, LLC
1914 AKRON-PENINSULA ROAD
AKRON, OH 44313

pgc