Ex Parte WakemanDownload PDFBoard of Patent Appeals and InterferencesAug 19, 201110285012 (B.P.A.I. Aug. 19, 2011) Copy Citation 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. 10/285,012 10/31/2002 Robert W. Wakeman ITWO:0048 1208 7590 08/19/2011 Patrick S. Yoder Fletcher, Yoder & Van Someren P.O. Box 692289 Houston, TX 77269-2289 EXAMINER LU, JIPING ART UNIT PAPER NUMBER 3743 MAIL DATE DELIVERY MODE 08/19/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROBERT W. WAKEMAN ____________________ Appeal 2009-012425 Application 10/285,012 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012425 Application 10/285,012 2 STATEMENT OF CASE Robert W. Wakeman (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-9, 11, 12, 27, 28, 30, and 40-65 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 1, 9, 11, 12, 27, 30, 46-52, 54, 57-59, and 61-63 under 35 U.S.C. § 103(a) as being unpatentable over Edenfield (US 5,772,954, iss. Jun. 30, 1998) and Fouche (US 713,421, iss. Nov. 11, 1902); claims 2-6, 55, 56, 60, 64, and 65 under 35 U.S.C. § 103(a) as being unpatentable over Edenfield, Fouche, and Mims (US 5,407,348, iss. Apr. 18, 1995); and claims 7, 8, 28, and 531 under 35 U.S.C. § 103(a) as being unpatentable over Edenfield, Fouche, and Dixon (US 5,882,437, iss. Mar. 16, 1999). Claims 10, 13-26, 29, and 31-39 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. THE INVENTION The claims are directed to a torch with an integrated flashback arrestor. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 The Examiner does not include claim 53 in the statement of the rejection. Fin. Rej. 5; Ans. 5. However, it is apparent from the first sentence of the explanation of the rejection that claim 53 is included in the rejection. Id. Appeal 2009-012425 Application 10/285,012 3 1. An industrial torch, comprising: a torch body having high-pressure oxygen, oxygen and gas supply passages; a torch head coupled to the torch body and comprising a single flashback arrestor disposed in separate paths of high- pressure oxygen, oxygen and gas from the high-pressure oxygen, oxygen and gas supply passages, wherein the separate paths of oxygen and gas extend through the torch head to produce an oxygen-gas mixture downstream of the single flashback arrestor and in the torch head, wherein the single flashback arrestor comprises a porous material disposed in the separate paths of oxygen and gas, and wherein the path of high-pressure oxygen is completely isolated from the path of oxygen and the path of gas in the flashback arrestor and does not pass through the porous material of the flashback arrestor; and a torch tip coupled to the torch head. OPINION The Written Description Rejection The Examiner found that certain newly added limitations in Appellant’s independent claims 1, 27, 40, 46, and 53 are not described in Appellant’s Specification in such a way as to reasonably convey to one skilled in the relevant art that Appellant had possession of the invention at the time the application was filed. The Examiner enumerates these limitations on page 3 of the Answer. Appellant asserts that the language of Appellant’s Specification reproduced on page 10 of the Appeal Brief provides sufficient description of the subject limitations of claims 1, 27, 40, 46, and 53 to satisfy the written description requirement. Accordingly, the issues presented in the appeal of this rejection are whether Appellant’s Specification provides sufficient description to Appeal 2009-012425 Application 10/285,012 4 reasonably convey that Appellant had possession of a torch provided with the isolated path/passage feature of claims 1 and 27, the hollow insert configured to completely isolate the high-pressure oxygen from the unaerated gas and oxygen in the flashback arrestor called for in claim 40, the isolated passage of the first oxygen supply passage through the flashback arrestor in complete isolation from the oxygen and gas flow through the flashback arrestor feature of claim 46, and the hollow insert extending through the hollow interior region of the body of the flashback arrestor as called for in claim 53. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351. This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Appellant’s Specification, as filed on October 31, 2002 (the filing date of the present application) explicitly describes a flashback arresting filter 66 into which oxygen and fuel inlets 62 and 64 feed oxygen and fuel, which are mixed in head 42 after passing through filter 66. Spec. 4:13-19. The Specification further discloses that high-pressure oxygen from inlet 60 is coupled directly to tip 40 through a passageway 78 (which, as depicted in figures 4 and 5, is a hollow region inside flashback arresting filter 66) in such a way that inlet 60 is sealed from the oxygen and fuel inlets 62, 64 so Appeal 2009-012425 Application 10/285,012 5 the high-pressure oxygen does not mix with the oxygen and fuel from inlets 62 and 64 until ejected from tip 40. Spec. 6:13-17. Further, original figure 3 depicts a hollow insert (not numbered) extending through the hollow interior region of the body of the flashback arrestor 66. The afore-mentioned disclosure in Appellant’s application is sufficient to convey to one skilled in the art that Appellant had possession at the time the present application was filed of a torch provided with the isolated path/passage feature of claims 1 and 27, the isolated passage of the first oxygen supply passage through the flashback arrestor in complete isolation from the oxygen and gas flow through the flashback arrestor feature of claim 46, and the hollow insert extending through the hollow interior region of the body of the flashback arrestor as called for in claim 53. However, Appellant’s Specification, as originally filed, does not specify what structure performs the disclosed function of sealing or isolating the high-pressure oxygen from the oxygen and fuel supplied through inlets 62 and 64. The hollow tubular structure depicted in Appellant’s original figure 3 is not described in Appellant’s Specification. In fact, it is not clear from the discussion of the sealing/isolation of the high-pressure oxygen from the oxygen and fuel in Appellant’s Specification, as originally filed, that the sealing/isolation structure even is depicted in figure 3. Appellant’s original application simply contains no description that conveys that the sealing/isolation necessarily is performed by a hollow insert in the hollow center region of the single flashback arrestor. Thus, we agree with the Examiner that the subject matter of claim 40, and its dependent claims 41-45 and 59-61, lacks sufficient written description support in the Specification to satisfy 35 U.S.C. § 112, first paragraph. Appeal 2009-012425 Application 10/285,012 6 For the above reasons, we sustain the rejection as to claims 40-45 and 59-61, and reverse the rejection as to claims 1-9, 11, 12, 27, 28, 30, 46-58, and 62-65. The Obviousness Rejections Claims 1, 9, 11, 12, 27, 30, 31, 46-52, 54, 57-59, and 61-63 Appellant separately discusses each of the independent claims 1, 27, and 46 subject to this rejection, but the argument is essentially the same for each. Thus, we address them together. Appellant does not present any separate arguments for the patentability of the dependent claims, which thus stand or fall with their independent claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii). Appellant also does not present any separate argument for the patentability of claims 59 and 61, which depend from independent claim 40. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims 59 and 61stand or fall with claim 1. The issue presented in the appeal of this rejection is whether the combined teachings of Edenfield and Fouche render obvious the subject matter of claims 1, 27, and 46. The Examiner found that Edenfield describes a torch 10 having all of the features of independent claims 1, 27, and 46, with the exception of a porous flashback arrestor disposed in separate paths of oxygen and gas. Ans. 4. Of particular relevance, the Examiner found that in Edenfield’s torch the “path 104 of high-pressure oxygen is completely isolated from the path 100 of oxygen and gas.” Ans. 4; see Edenfield, col. 6, ll. 48-53 and col. 6, l. 64 to col. 7, l. 1. The Examiner found that Fouche teaches the use of a single porous flashback arrestor g disposed in separate gas paths. Ans. 4. Fouche’s porous body has as its object preventing flames from burning explosive Appeal 2009-012425 Application 10/285,012 7 gaseous mixtures in blowpipes from propagating back to the chamber where the gases are mixed and causing violent explosions in the gas supply pipes. Fouche, p. 1, ll. 9-21. In the embodiment of Fouche depicted in figure 4, gases from multiple gas inlets C, C’, C” are mixed in the interstices of the porous body g in receptacle h. Fouche, p. 1, ll. 92-98; p. 2, ll. 7-8. The Examiner reasoned that it would have been obvious to modify Edenfield’s torch to include a porous flashback arrestor disposed in the separate paths of oxygen and gas as taught by Fouche in order to prevent propagation of the flame, and thereby improve safety. Ans. 4. In contesting the rejection, Appellant essentially attacks each of the references in isolation, rather than considering their combined teachings. App. Br. 16-18. This line of argument is not convincing, because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Edenfield teaches a torch having flow passages such that the high- pressure oxygen (cutting oxygen) flows through mixer 24 to torch tip 22 separate from the flow of the combustible mixture of fuel gas and preheat oxygen. Edenfield, col. 6, ll. 64-67. Fouche teaches using a porous body to mix combustible gases while preventing flames from propagating into the mixing chamber and causing a violent explosion in the supply lines. To replace mixer 24 of Edenfield with a hollow receptacle containing a porous body for passage of the fuel gas and preheat oxygen, while still providing a separate passage through the hollow of the receptacle for passage of cutting oxygen, as proposed by the Examiner, would improve Edenfield’s torch in the same manner as the porous body improves the blowpipe of Fouche, Appeal 2009-012425 Application 10/285,012 8 namely, by preventing propagation of the flame, to thereby improve safety. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (stating “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Thus, the Examiner’s articulated reason for the modification has rational underpinning. While Fouche depicts three gas inlets feeding into the porous body g in the figure 4 embodiment, a person of ordinary skill in the art would have readily appreciated that fewer than three gas inlets could be fed into the porous body for mixing if desired. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. See also Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("while an analysis of obviousness always depends on evidence … it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference"). The artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Moreover, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Edenfield’s teaching to pass the cutting oxygen supply to the torch tip separate from where the fuel and preheat oxygen are passed and mixed is unequivocal, and would not be ignored by a person of ordinary skill in the art. Appeal 2009-012425 Application 10/285,012 9 The Examiner did not err in concluding that the combined teachings of Edenfield and Fouche render obvious the subject matter of claims 1, 27, and 46. We sustain the rejection as to these claims and claims 9, 11, 12, 30, 47-52, 54, 57-59, and 61-63, which fall with claims 1, 27, and 46. Claims 2-6, 55, 56, 60, 64, and 65 The Examiner relies on Mims only for a teaching to make the flashback arrestor hollow and of porous metallic material.2 The Examiner does not rely on Mims for the specific shape, orientation, or positioning of the flashback arrestor. Accordingly, Appellant’s arguments on page 20 of the Appeal Brief are not directed to the modification actually proposed by the Examiner, and thus are not persuasive. Appellant’s remarks on page 19 and up through line 10 on page 20 merely recite additional claim limitations and baldly assert that these limitations are not taught or suggested by the applied references. These vague statements do not constitute separate arguments for patentability of the dependent claims pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Appellants have waived any argument for separate patentability of these dependent claims. See id. We sustain the rejection. 2 To provide a hollow flashback arrestor in Edenfield would have been an obvious matter of common sense, inasmuch as the mixer 24 for which the flashback arrestor is substituted is hollow, so as to accommodate passages 102, 104 for separate flow of the cutting oxygen. Edenfield, col. 6, l. 64 to col. 7, l. 1; fig. 1. Appeal 2009-012425 Application 10/285,012 10 Claims 7, 8, 28, and 53 Claim 7, and thus claim 8 depending therefrom, requires the single flashback arrestor to comprise a seal disposed between the separate paths of oxygen and gas. Claim 28 requires the torch head to comprise means for sealing oxygen and gas flows apart from one another upstream of the single means for arresting the flame. Claim 53 requires, in relevant part, a flashback arrestor comprising a body of porous material having a hollow cylindrical shape and a separator disposed about an exterior of the body with a first annular region of the body located on one side of the separator and a second annular region of the body located on an opposite side of the separator. The Examiner proposes to modify Edenfield “to provide the torch of Edenfield at its torch head with sealing mean[s] of Dixon et al. in order to seal oxygen and gas flows.” Ans. 6. Even if the torch head of Edenfield were modified as proposed by the Examiner, it is not apparent how such modification would yield a torch having the afore-mentioned features of claims 7, 8, 28, and 53. We reverse the rejection of claims 7, 8, 28, and 53. DECISION For the above reasons, the Examiner’s decision is affirmed as to claims 1-6, 9, 11, 12, 27, 30, 40-52, and 54-65, and reversed as to claims 7, 8, 28, and 53. Appeal 2009-012425 Application 10/285,012 11 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-IN-PART hh Copy with citationCopy as parenthetical citation