Ex Parte Wakeman

Board of Patent Appeals and Interferences

Aug 19, 2011

10285012 (B.P.A.I. Aug. 19, 2011)

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