Ex Parte Baker et al

Board of Patent Appeals and Interferences

Mar 9, 2009

10789854 (B.P.A.I. Mar. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN C. BAKER, SANTOSH K. DAS,
RICHARD F. HARAZ, WILLIAM F. HEHMANN,
VINCENT J. PAPOTTO, FEDERICO RENTERIA,
and GARY WINCHESTER
____________

Appeal 2008-4170
Application 10/789,854
Technology Center 1700
____________

Decided:1 March 9, 2009
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 16-19. We have jurisdiction pursuant to
35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic deliver).
Appeal 2008-4170
Application 10/789,854

STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a hand-held laser fusion
welding torch system including a body, handle, and nozzle. The nozzle
includes an aperture through which a laser beam may pass toward a focal
point. The nozzle includes a plurality of supply channels for a filler material
passing there through, with each channel including an outlet port arranged to
discharge filler material toward a focal point. The recited laser beam focal
point and a filler material focal point associated with the torch system are
recited as being independently adjustable.
Claim 16 is illustrative and reproduced below:
16. A hand-held laser fusion welding torch system, comprising:
a body having a first end and a second end, the body first end adapted
to couple to laser beam delivery system;
a handle coupled to the body and dimensioned to be grasped by a
hand;
a nozzle having a first end, a second end, and an outer surface, the
nozzle first end coupled to the body second end, the nozzle second end
including an aperture through which a laser beam from the laser beam
delivery system may pass through to laser beam focal point; and
a plurality of filler material supply channels, each filler supply
channel including an inlet port formed in the nozzle outer surface and an
outlet port formed in the nozzle second end, each inlet port configured to
receive filler material, each outlet port configured to discharge filler material
toward a filler material focal point,
wherein the laser beam focal point and the filler material focal point
are independently adjustable.
2
Appeal 2008-4170
Application 10/789,854

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Lemelson 4,237,364 Dec. 2, 1980
Krause 5,321,228 Jun. 14, 1994

The Examiner maintains the following ground of rejection:
Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krause in view of Lemelson.
Appellants argue the rejected claims together as a group.
Consequently, we select claim 16, the sole independent claim on appeal, as
the representative claim on which we decide this appeal.
Appellants do not dispute the Examiner’s determination that “[i]t
would have been obvious to one of ordinary skill in the art at the time the
applicant’s invention was made to have provided the laser fusion torch
system of Krause et al. with a handle or trigger as taught by Lemelson so
that the device can be hand held, manually operated, and the laser source can
be hand activated thereby allowing for localized spot welding to be
performed (Lemelson, col. 1, ll. 25-32)” (Ans. 5). See the Appeal Brief and
the Reply Brief in their entirety.
Rather, Appellants contest the Examiner’s obviousness rejection by
arguing that only Appellants, not Krause, taught or suggested “independent
adjustability of the laser beam focal point and the filler beam focal point”
(App. Br. 10).

ISSUE
Have Appellants established that the Examiner employed
impermissible hindsight and reversibly erred in concluding that the
3
Appeal 2008-4170
Application 10/789,854

independently adjustable focal points proviso of representative claim 16 is a
welding torch system attribute that would have been prima facie obvious,
from the perspective of one of ordinary skill in the art, to provide for (or
accord to) a welding torch system as taught or suggested by Krause?

SUMMARY DISPOSITION
We answer this question in the negative and we affirm the Examiner’s
obviousness rejection.

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-986
(Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
A claimed invention is unpatentable if the differences between
it and the prior art are “such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a) (2000).
“‘Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject
matter is determined.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1734
(2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
(1966)).
4
Appeal 2008-4170
Application 10/789,854

The question to be asked is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.” KSR, 127 S. Ct. at 1740. The Supreme Court also noted in KSR
that an obviousness analysis “need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 127 S. Ct. at 1741.
As to the specific question of "teaching away," our reviewing court in
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) stated:
[a] reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the
reference, or would be led in a direction divergent from
the path that was taken by the applicant.

It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

5
Appeal 2008-4170
Application 10/789,854

FINDINGS OF FACT
In addition to findings of fact set forth elsewhere in this Opinion, we
determine the following relevant findings of fact by a preponderance of the
evidence standard:
Appellants’ Specification discloses that “[t]o provide for such
independent adjustment of the laser and powder, the body 104 of the torch
100 may be interchangeable and provide a selectable variety of diameters,
and lengths as appropriate or useful for the welding activities, as indicated
above” (Specification 15, ll. 7-9).
The subject Specification further provides that “it is the intention that
the invention not be limited to particular embodiments disclosed herein for
carrying it out, but the invention includes all embodiments falling within the
scope of the appended claims” (Specification 23).
The Examiner has found that:
Krause et al. teaches a laser fusion welding torch system,
comprising: a laser beam delivery system or installation
including a laser source and a laser beam focusing mirror or
lens (column 2, lines 17-25); a nozzle assembly adapted to be
coupled or connected by a first end to said laser delivery system
(column 2, lines 22-25); a laser duct included in the nozzle
assembly through which a laser beam from the laser delivery
system passes and exit by an outlet aperture at a second end of
the nozzle to a laser beam focal point (18), (figure 1 and
column 4, lines 31-40). A plurality of powder or filler guide
duct or port (6), provided in the nozzle assembly to receive
powder or in fluid communication with a powder supply source
(figure 1, column 2, lines 18-22 and column 4, lines 31-40); an
outlet aperture (7), formed at the second end of the nozzle
through which the powder exits and delivered to approximately
the same focal point as the laser beam (figure 1 and column 4,
lines 15-25) (see, the line of trajectory of both the laser beam
6
Appeal 2008-4170
Application 10/789,854

and the powder or filler material intersecting at a focal point in
front of the nozzle).
Krause et al., teaches independent off-axis filler media
feed or powder feed assembly that is operable independent of
the laser beam. Note the powder is feed from an independent
source by a duct into the nozzle (column 2, lines 17-22).
Krause et al. teaches an off axis a gas flow delivery
system operable to transmit gas to an operating site of the torch
(gas duct "9", figure 1; column 2, lines 25-31 and column 4,
lines 31-43).
Krause et al. also teaches a removable gas cover or cap
(10) connected to the nozzle by the thread "17"; wherein said
gas cover or cap is detachably couple to the nozzle; the gas
cover having an aperture through which the laser beam from the
laser beam delivery system may pass when the gas cover is
coupled to the nozzle (column 4, lines 31-39).
Ans. 3-5.
Appellants do not dispute these factual findings of the Examiner (see
the Appeal Brief and Reply Brief in their entirety).
In addition to the removable cap (10), the Examiner has found that
“Krause teaches a powder guide cap separate or independent of the laser
guide part (see Krause col. 2, lines 39-42).” See FAO2; p. 4, para. 4. In this
regard, Krause teaches or suggests that powder guide cap (4) is shaped like a
truncated cone, attached by way of a threaded connection, and abuts the
laser means guide part (1) (col. 3, l. 68-col. 4, l. l. 7). Moreover, Krause
teaches or suggests that powder guide ducts (6) are distributed over the outer

2 Final Office action (FAO) dated April 24, 2007.
7
Appeal 2008-4170
Application 10/789,854

peripheral surface of the powder guide cap (4) and follow the truncated cone
shape and angle determined by the powder guide cap shape (col. 4, ll. 7-15).
On an outer side of the ducts (6), Krause discloses or suggests the use
of a truncated cone shaped inert gas guide (8) threaded in place that leaves
positive and non-positive connections between gas guide (8) and powder
guide cap (4) (col. 4, ll. 15-21). Krouse suggests that the angle of the
powder ducts and inert gas supply is determined, at least in part, by the
guide cap and gas guide shapes employed, which are tightened (or loosened)
with a threaded coupling ring (15) followed with addition of a removable
threaded gas cap (10) (col. 4, ll. 7-30; Fig. 1). Krause teaches or suggests a
range of angles (10-45 degrees) that are suitable for the powder outlet
apertures of the powder guide ducts (col. 3, ll. 6-12).
The aforementioned teachings/suggestions of Krause are reasonably
co-incident with and support the Examiner’s determination that the system
of Krause would have inferentially suggested and have been reasonably
expected to provide for independent adjustment of the filler material
(powder) focal point relative to the laser beam focal point of the welding
system (FAO; para. bridging p. 4-5).

ANALYSIS
Based on our findings above and giving representative claim 16 its
broadest reasonable construction consistent with the Specification, we
determine that the hand-held fusion welding torch system called for in claim
16 does not require that the laser torch body be coupled to a laser beam
source, much less carry a laser beam through an aperture thereof to a
particular focal point. Representative claim 16 does not specify particular
8
Appeal 2008-4170
Application 10/789,854

structure of the claimed laser fusion welding system that is responsible for
the argued and recited independent adjustability of the laser beam focal point
and the filler material focal point much less a structural feature that is
required by claim 16 but argued as not being taught or suggested by Krause.
Nor does representative claim 16 require any particular degree or
amount of independent adjustability of the respective focal points. In this
regard and as noted above, the subject Specification makes it clear that the
claim requirement for independent adjustment of focal points encompasses
using removable parts for the welding system so that the removed part can
be replaced with a substitute part, such as a substitute laser body, which
substitute part would allow for the respective focal point adjustment
(Specification 15, ll. 7-9).
Given the above claim construction, and the suggestions implicit in
the teachings of Krause with respect to employing a nozzle for the laser
welding system that includes threaded (removable) connections for the laser
beam guide part (1), powder guide cap (4), gas guide cap (8), gas cap (10),
and coupling ring (15) together with Krause’s teaching concerning the range
of powder duct angles that can be employed, we are not persuaded of
reversible error in the Examiner’s obviousness assessment by the argument
that Krause contains no suggestion for independently adjusting the filler
focal point and the laser beam focal point. After all, an ordinarily skilled
artisan is presumed to have some skill and ordinary insight. Here,
Appellants have not substantiated the argument made by merely pointing to
Krause’s teaching concerning the tightening of the coupling ring because
that same ring can also be loosened and allow for a substitute piece, such as
a replacement powder guide cap with a somewhat different truncated shape
9
Appeal 2008-4170
Application 10/789,854

and angular arrangement for installation. This type of focal point
adjustability is encompassed by representative claim 16, as note above; and,
such adjustability would have been well within the skill level of an
ordinarily skilled artisan to effectuate with a reasonable expectation of
success in so doing. We certainly find no discouragement from such a parts
replacement operation in the teachings of Krause.
Moreover, representative claim 16 is drawn to a hand-held laser
fusion welding torch system, not a process for independently adjusting focal
points. In this regard, Appellants have not fairly demonstrated a particular
patentable structural difference that is required by the claimed independent
focal point adjustability functionality.
As a final point, we note that no evidence of unexpected results
commensurate in scope with the claimed subject matter or other persuasive
secondary evidence has been adduced by Appellants, on this appeal record.

CONCLUSION
Appellants have not established that the Examiner used impermissible
hindsight and reversibly erred in concluding that the representative claim 16
subject matter, including the recited independently adjustable focal points
proviso, would have been prima facie obvious, from the perspective of one
of ordinary skill in the art, based on the teachings and suggestions furnished
by the applied prior art, including the teachings of Krause.

10
Appeal 2008-4170
Application 10/789,854

ORDER
The Examiner’s decision to reject claims 16-19 under 35 U.S.C. §
103(a) as being unpatentable over Krause in view of Lemelson is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

PL Initial:
sld

HONEYWELL INTERNATIONAL INC.
101 COLUMBIA ROAD
P.O. BOX 2245
MORRISTOWN, NJ 07962-2245
11