Ex parte KAGA et al.

Board of Patent Appeals and Interferences

Oct 28, 1999

08139888 (B.P.A.I. Oct. 28, 1999)

The application was filed on October 22, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KUNIHIKO KAGA, SATORU KOTOH,
SHUJI OGAWA, and MASARU KANAOKA
____________
Appeal No. 1997-1412
Application No. 08/139,8881
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1, 6, 11, 12, and 23. We
affirm.
Appeal No. 1997-1412 Page 2
Application 08/139,888
BACKGROUND
The invention at issue in this appeal relates to laser
machining heads for cutting. When cutting metal with a laser
beam, an assist gas such as oxygen is supplied to the cutting
surface of the metal. The gas is used for an oxidized burning
reaction. More specifically, the metal melted by the laser
beam is sublimated or melted with an oxidized burning
reaction. The gas is also used to blow off and eliminate
melted and oxidized metal.
A conventional machining head features a main assist gas
nozzle on the central axis of the head for supplying a main
assist gas. Concentric sub assist gas outlets surround the
flow of gas from the main gas nozzle and supply a sub assist
gas. The direction of jet flow from the sub assist gas
outlets is parallel to the direction of jet flow from the main
assist gas outlet. This parallelism keeps the assist gas in a
laminar flow. To reach the metal, however, the laminar flow
Appeal No. 1997-1412 Page 3
Application 08/139,888
of assist gas must disperse through combustion products (viz.,
gas or melted metal) near the cutting surface.
The machining head of the invention features a main
assist gas nozzle on its central axis. An annular, sub assist
gas nozzle surrounds the main gas nozzle. The diameter of the
outlet of the sub assist gas nozzle is at least as wide as
that of the outlet of the main assist gas nozzle. Moreover,
the outlet of the main assist gas nozzle is upstream from the
outlet of the sub assist gas nozzle. This arrangement of
nozzles ensures that the flows of the main assist gas and of
the sub assist gas are not parallel and continuously changes
the pressure and flow of the main assist gas at its outlet.
The changes disturb the boundary layer in the combustion
reaction area to replace the combustion products with fresh
assist gas, which increases the speed of combustion.
Claim 1, which is representative for our purposes,
follows:
1. A machining head of a laser machining apparatus
through which a laser beam passes, comprising:
Appeal No. 1997-1412 Page 4
Application 08/139,888
a main assist gas nozzle at a center portion of
the machining head for supplying a main assist gas;
and
at least one annular sub assist gas nozzle
surrounding the main assist gas nozzle, a jet outlet
at an innermost diameter of the annular sub assist
gas nozzle being no smaller than a jet outlet of the
main assist gas nozzle, for increasing pressure
fluctuation and flow fluctuation of the main assist
gas flow in comparison with the sub assist gas flow.
The references relied on in rejecting the claims follow:
Babel et al. 5,149,937 Sep. 22,
1992 (Babel)
Hisayoshi 2-263585 Oct. 26,
1990.
(Japanese Patent)
Claims 1, 6, 11, and 12 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Babel. Claim 1 stands rejected
under 35 U.S.C. § 102(b) as anticipated by Hisayoshi. Claims
6 and 23 stand rejected under 35 U.S.C. § 103 as obvious over
Hisayoshi in view of Babel (Hisayoshi-Babel). Rather than
repeat the arguments of the appellants or examiner in toto, we
refer the reader to the briefs and answers for the respective
details thereof.
Appeal No. 1997-1412 Page 5
Application 08/139,888
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections and evidence
advanced by the examiner. Furthermore, we duly considered the
arguments of the appellants and examiner. After considering
the totality of the record, we are not persuaded that the
examiner erred in rejecting claims 1, 6, 11, and 12 as
anticipated by Babel or in rejecting claims 6 and 23 as
obvious over Hisayoshi in view of Babel. We are persuaded,
however, that the examiner erred in rejecting claim 1 as
anticipated by Hisayoshi. Accordingly, we affirm. Our
opinion addresses the grouping of claims 1, 6, 11, 12, and 23;
the anticipation of claims 1, 6, 11, and 12 by Babel; the
anticipation of claim 1 by Hisayoshi; and the obviousness of
claims 6 and 23 over Hisayoshi-Babel.
Grouping of Claims 1, 6, 11, 12, and 23
37 C.F.R. § 1.192(c)(7), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
Appeal No. 1997-1412 Page 6
Application 08/139,888
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and, in the
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.
In addition, claims that are not argued separately stand or
fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983).
The appellants state that the claims should be considered
in the following groups for the appeal:
• claim 1
• claims 11 and 12
Appeal No. 1997-1412 Page 7
Application 08/139,888
• claims 6 and 23.
(Appeal Br. at 3.) Conversely, the appellants omit a
statement that claims 11 and 12 do not stand or fall together,
a statement that claims 6 and 23 do not stand or fall
together, and reasons why claims 12 and 23 are separately
patentable. Therefore, we consider the claims to stand or
fall together in the groups, with claims 1, 11, and 23, as the
respective representative claims of the three groups. Next,
we address the anticipation of claims 1, 6, 11, and 12 by
Babel.
Anticipation of Claims 1, 6, 11, and 12 by Babel
Regarding claims 1, 6, 11, and 12, the appellants argue,
“there is no evidence that Babel discloses an arrangement
which inherently increases pressure fluctuation and flow
fluctuation of the main assist gas flow in comparison with the
sub assist gas flow.” (Appeal Br. at 6.) The examiner
replies, “The increase in pressure fluctuation recited in
claim 1 is a result of a structure which produces a central
main assist gas flow and an annular sub assist gas flow which
Appeal No. 1997-1412 Page 8
Application 08/139,888
surrounds and intersects with the main assist gas flow.”
(Examiner’s Answer at 8.) She adds, “Babel discloses a
structure which produces the identical type of gas flows, and
which will therefore produce the same results.” (Id.) We
agree with the examiner.
Independent claim 1 recites in pertinent part the
following limitations:
at least one annular sub assist gas nozzle
surrounding the main assist gas nozzle, a jet outlet
at an innermost diameter of the annular sub assist
gas nozzle being no smaller than a jet outlet of the
main assist gas nozzle, for increasing pressure
fluctuation and flow fluctuation of the main assist
gas flow in comparison with the sub assist gas flow.
Giving the claim its broadest reasonable interpretation, the
limitations recite the function of increasing pressure
fluctuation and flow fluctuation of a main assist gas flow in
comparison with a sub assist gas flow.
In rejecting claims, the patent examiner bears the
initial burden of presenting a prima facie case of
unpatentability.
Appeal No. 1997-1412 Page 9
Application 08/139,888
“Mere recitation of a newly discovered function or2
property, inherently possessed by things in the prior art,
does not distinguish a claim drawn to those things from the
prior art.” In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981) (citing In re Swinehart, 439 F.2d 210, 212-13,
169 USPQ 226, 229 (1971)).
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). When relying on inherency, an examiner2
must provide a basis in fact or technical reasoning to
reasonably support a determination that an allegedly inherent
characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd.
Pat. App. & Int. 1990).
Here, the examiner has met his initial burden. The
appellants’ specification reveals that they achieve the
increase in pressure fluctuation and flow fluctuation of the
main assist gas flow in comparison with the sub assist gas
flow by a combination of three structural features. First,
the diameter of the sub assist gas nozzle tapers from a wider,
upstream diameter to a narrower, downstream diameter (D2).
(Spec. at Fig. 1.) Second, the diameter of the outlet of the
Appeal No. 1997-1412 Page 10
Application 08/139,888
sub assist gas nozzle (D2) is at least as wide as that of
outlet of the main assist gas
nozzle (D1). (Spec. at 9.) Third, the outlet of the main
assist gas nozzle is upstream from that of the sub assist gas
nozzle. (Id.)
Babel teaches the same combination of structural
features. First, the diameter of a cone-shaped outer liner 30
tapers from a wider, upstream diameter on its flat upper side
to a narrower, downstream diameter at its outlet. Fig. 8.
Second, the diameter of the outlet of the cone-shaped outer
liner 30 is at least as wide as that of outlet of the central
multi-graduated passage hole 36. Id. Third, the outlet of
cone-shaped outer liner 30 is upstream from that of the
central multi-graduated passage hole 36. Id. We find that
the combination of these features reasonably supports the
examiner’s determination that an increase in pressure
fluctuation and flow fluctuation of the main assist gas flow
in comparison with the sub assist gas flow necessarily flows
from the teachings of Babel.
Appeal No. 1997-1412 Page 11
Application 08/139,888
After the examiner meets the burden of establishing a
prima facie case, the burden of coming forward with evidence
or argument shifts to the appellants. Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. After evidence or argument is
submitted by the appellants in response, patentability is
determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of
argument. Id., 24 USPQ2d at 1444.
Here, the appellants submit neither evidence nor argument
that an increase in pressure fluctuation and flow fluctuation
of the main assist gas flow in comparison with the sub assist
gas flow does not necessarily flow from the teachings of
Babel. Instead, they merely allege, “there is no evidence
that Babel discloses an arrangement which inherently increases
pressure fluctuation and flow fluctuation of the main assist
gas flow in comparison with the sub assist gas flow.” (Appeal
Br. at 6.) Because this allegation ignores the aforementioned
combination of structural features found in both Babel and the
appellants’ invention, it is not persuasive.
Appeal No. 1997-1412 Page 12
Application 08/139,888
Regarding claim 6, the appellants argue, “The embodiment
of Babel Figure 9 ... shows the end of the insert 74 flush
with the end of the conical nozzle tip 73. Thus, even the
embodiment relied on does not show one nozzle placed upstream
of another.” (Appeal Br. at 8.) The examiner replies, “Figure
8 of Babel shows the outlet of the main assist gas nozzle (31)
located upstream from the outlet of the sub assist gas nozzle
(30).” (Examiner’s Answer at 10.) We agree with the
examiner.
The appellants err in considering the reference in less
than its entirety. A reference must be considered as a whole
for what it reveals “to workers in the art.” Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1566, 1 USPQ2d 1593, 1595
(Fed. Cir. 1987). Here, the appellants focus only on figure 9
of Babel. The reference teaches much more. As admitted by
the appellants elsewhere, (Reply Br. at 1), Babel shows that
the outlet of the cone-shaped outer liner 30 is upstream from
that of the central multi-graduated passage hole 36. Fig. 8.
Appeal No. 1997-1412 Page 13
Application 08/139,888
Regarding claims 11 and 12, the appellants make the
following argument.
Claims 11 and 12 are drafted using the "means plus
function" format expressly permitted by 35 U.S.C.
§112, paragraph 6. As such, the "static pressure
conversion means" must be regarded as the structure
disclosed in the specification and equivalents. The
structure disclosed in the specification is pressure
conversion surface 7 and return wall surface 8,
which forms a residence space 8a. As can clearly be
seen in Figure 14, the return wall surface 8 forms a
residence space 8a which is not a through conduit.
In other words, space 8a is a closed space having no
fluid communication with another space except at the
same place gas enters it. This is manifestly
different in form and function from the ring channel
34, which is merely a distribution channel for gas
inlet through the nipple 35. (Appeal Br. at 8.)
The examiner replies, “claim 11 should be construed as
requiring only a pressure conversion surface, which Babel
discloses. Claim 12 explicitly recites the conversion
surface, and further requires a bank (wall) at in inside edge
of the conversion surface, which is shown by Babel in the form
of the inside wall of the channel.” (Examiner’s Answer at
10.) We agree with the examiner.
The appellants err by attempting to read limitations from
the specification into the claims. “In the patentability
Appeal No. 1997-1412 Page 14
Application 08/139,888
context, claims are to be given their broadest reasonable
interpretations. Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993)
(internal citations omitted).
Here, claim 11 specifies in pertinent part “a static
pressure conversion means which converts dynamic pressure of
an assist gas which flows into the sub assist gas nozzle
through sub assist gas supply inlet into static pressure.”
The appellants’ specification describes “a static pressure
conversion means (a static pressure conversion surface 7, in
this case) which converts the dynamic pressure of the sub
assist gas flow supplied through the gas supply inlet 2c to
static pressure are installed at the location where the gas
flows pass [sic] through the gas duct 2b.” (Spec. at 15-16.)
It adds, “gas directed toward the inside of the assist gas
nozzle 2b is recovered to the static pressure after colliding
against static pressure conversion surface 7 ....” (Id. at
16.) Figure 13 of the appellants’ specification depicts the
static pressure conversion surface as element 7.
Appeal No. 1997-1412 Page 15
Application 08/139,888
Giving claim 11, its broadest reasonable interpretation,
the claim does not require a return wall surface 8 forming a
residence space 8a that is not a through conduit as shown in
Figure 14 of the appellants’ specification and argued by the
appellants. To the contrary, claim 11 merely requires a
surface that opposes a gas inlet so as to collide with a flow
of gas.
The examiner has identified a teaching of this limitation
in Babel. Specifically, Figure 8 of the reference shows a
nozzle. The nozzle includes the cone-shaped outer liner 30,
which incorporates a core 31 and forms a narrow channel 32.
Col. 7, ll. 46-49. The liner and core feature an upper side.
Id. at
ll. 51-52. A high-pressure gas flows from an inlet nipple 35
into a ring channel 34 and out the narrow channel. As evident
from Figure 8, the gas will necessarily collide with the upper
side of the liner and core during its flow from the inlet
nipple to the narrow channel. Consequently, Babel teaches the
static pressure conversion surface as specified in claim 11.
Appeal No. 1997-1412 Page 16
Application 08/139,888
Claim 12 falls with claim 11. Nevertheless, we note that
the claim specifies in pertinent part “a static pressure
conversion surface which opposes the sub assist gas inlet; and
a bank which is located at inside edge of the static pressure
conversion surface and forms a space where the sub assist gas
stays.”
Giving claim 12, its broadest reasonable interpretation,
the claim does not require a return wall surface 8 forming a
residence space 8a that is not a through conduit as shown in
Figure 14 of the appellants’ specification and argued by the
appellants. To the contrary, claim 12 merely requires the
aforementioned static pressure conversion surface and a wall
at the inside edge of the surface.
The examiner has identified a teaching of this limitation
in Babel. As aforementioned, the reference teaches the static
pressure conversion surface. Furthermore, Figure 8 of Babel
shows that an intermediate piece 33 forms the walls of the
ring channel and that these walls are at the inside edges of
the upper side of the liner and of the core. Consequently,
Appeal No. 1997-1412 Page 17
Application 08/139,888
Babel teaches the static pressure conversion surface and bank
as specified in claim 12.
For the foregoing reasons, the examiner has established a
prima facie case of anticipation, which the appelants have not
refuted. Therefore, we affirm the examiner’s rejection of
claims 1, 6, 11, and 12 under 35 U.S.C. § 102(b) as
anticipated by Babel. Next, we address the anticipation of
claim 1 by Hisayoshi.
Anticipation of Claim 1 by Hisayoshi
The appellants note, “claim 1 recites that the sub assist
gas nozzle increases pressure fluctuation and flow fluctuation
of the main assist gas flow in comparison with the sub assist
gas flow.” (Appeal Br. at 7.) They argue, “there is no
evidence that the Hisayoshi arrangement inherently achieves
this effect. In this regard, note the arrows in Figures 1 and
2 of Hisayoshi which appear to show that the flow of fluid in
the side channels exits the side channels almost vertically.”
(Id.) The examiner replies, “At least a portion of the gas
exiting the annular orifice surrounding the central gas exit
Appeal No. 1997-1412 Page 18
Application 08/139,888
(31) will flow along the sides of the inner nozzle (3), and
intersect with the gas exiting from the central gas exit as a
matter of basic fluid dynamics.” (Examiner’s Answer at 9.)
We agree with the appellants.
The examiner fails to provide a basis in fact or
technical reasoning to reasonably support a determination that
the function of increasing pressure fluctuation and flow
fluctuation of a main assist gas flow in comparison with a sub
assist gas flow necessarily flows from the teachings of
Hisayoshi. The reference does not teach all three of the
structural features that the appellants use to achieve the
claimed function. Specifically, the outlet of the gas nozzle
formed by TIG welding electrodes 3 is not upstream of that
formed by the walls of the torch 2.
Fig. 2.
For the foregoing reasons, the examiner has not
established a prima facie case of anticipation. Therefore, we
reverse the rejection of claims 1 under 35 U.S.C. § 102(b) as
anticipated by Hisayoshi. Next and last, we address the
obviousness of claims 6 and 23 over Hisayoshi-Babel.
Appeal No. 1997-1412 Page 19
Application 08/139,888
Obviousness of Claims 6 and 23 over Hisayoshi-Babel
The appellants argue, “the embodiment of Figure 9 of
Babel shows the end of the insert 74 flush with the end of the
conical nozzle tip 73, not one nozzle placed upstream of
another.” (Appeal Br. at 9.) The examiner replies, “the two
nozzles can be placed ... with the inner nozzle upstream from
the outer nozzle as claimed and shown in Figure 8 ....”
(Examiner’s Answer at
11.) We agree with the examiner.
The appellants err in considering the reference in less
than its entirety. Here, the appellants again focus only on
figure 9 of Babel. The reference teaches much more. As
admitted by the appellants elsewhere, (Reply Br. at 1), Babel
shows that the outlet of the cone-shaped outer liner 30 is
upstream from that of the central multi-graduated passage hole
36. Fig. 8.
The appellants also make the following argument.
Babel et al. teaches that it is potentially
beneficial to adjust the gauge and flow cross
section of the conical channel. It is true that, in
Appeal No. 1997-1412 Page 20
Application 08/139,888
the arrangement of Babel et al., changing the gauge
and flow cross section of the conical channel
incidentally changes the relative position of the
insert 74 and the conical nozzle tip 73. But this
is not the point of the teaching of Babel et al.,
nor is it what can fairly be said to suggest to one
of ordinary skill in art [sic]. Babel et al.
attaches no significance to this incidental
byproduct of changing the size of the conical
channel. The only motivation in Babel et al. is to
change the size of the conical channel, not to
change the relative axial position of the elements
at the tip. (Substitute Reply Br. at 2.)
The examiner replies, “Whether one forms this structure with
the desire to control the absolute velocity of the gas or with
the desire to control its fluctuation does not alter the
conclusion that the use of this structure would have been
obvious to one of ordinary skill in the art.” (Supplemental
Examiner’s Answer at 2.) We agree with the examiner.
The appellants err in construing the criteria for
obviousness. “Obviousness is not to be determined on the
basis of purpose alone.” In re Graf, 343 F.2d 774, 777, 145
USPQ 197, 199 (CCPA 1965). It is sufficient that references
suggest doing what an appellant did, although the appellant's
particular purpose was different from that of the references.
Appeal No. 1997-1412 Page 21
Application 08/139,888
In re Heck, 699 F.2d 1331, 1333, 216 USPQ 1038, 1040 (Fed.
Cir. 1983) (citing In re Gershon, 372 F.2d 535, 539, 152 USPQ
602, 605 (CCPA 1967)).
Here, Babel includes a proper suggestion for combining
its teachings to obtain the claimed invention. The reference
discloses that its conic flow channel 78 can be fine-tuned by
screwing a threaded section 88 of insert 74 more- or less-
deep. This permits the composition of a mixture and the
kinetic energy of a pressure gas beam to be adjusted according
to operating conditions. Col. 8, ll. 50-56. Because such an
adjustment would be “potentially beneficial,” (Substitute
Reply Br. at 2), the teachings of the references would have
suggested their combination. The suggestion does not have to
be the same as the appellants’ motivation for their invention.
For the foregoing reasons, the examiner has established a
prima facie case of obviousness. Therefore, we affirm the
examiner’s rejection of claims 6 and 23 under 35 U.S.C. § 103
as obvious over Hisayoshi in view of Babel.
Appeal No. 1997-1412 Page 22
Application 08/139,888
We end by noting that the aforementioned affirmances are
based only on the arguments made in the briefs. Arguments not
raised in the briefs are not before us, are not at issue, and
are thus considered waived.
CONCLUSION
To summarize, the examiner’s rejection of claims 1, 6,
11, and 12 under 35 U.S.C. § 102(b) as anticipated by Babel is
affirmed. Her rejection of claim 1 under 35 U.S.C. § 102(b)
as anticipated by Hisayoshi is reversed. The examiner’s
rejection of claims 6 and 23 under 35 U.S.C. § 103 as obvious
over Hisayoshi in view of Babel is affirmed.
Appeal No. 1997-1412 Page 23
Application 08/139,888
No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1997-1412 Page 24
Application 08/139,888
LLB/kis
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