[00:00:00] Speaker 01: American Torch Tip Company 17-1696 [00:00:54] Speaker 01: Mr. Turnoff, you've reserved five minutes for rebuttal? [00:00:58] Speaker 01: That's correct, sir. [00:00:58] Speaker 01: Okay, you may proceed. [00:01:00] Speaker 00: Good morning, Your Honors. [00:01:02] Speaker 00: May it please the Court, I represent Komatsu in this appeal. [00:01:05] Speaker 00: In this case, the Board failed to establish a prima facie case of obviousness with respect to the claims on appeal, in that the Board did not sufficiently explain and support its conclusions with substantial evidence that one of ordinary skill in the art [00:01:23] Speaker 00: might have chosen to combine the references. [00:01:26] Speaker 00: Here, the board found that the claimed inventions might be obvious. [00:01:33] Speaker 00: Not that they would be obvious, that they might be obvious. [00:01:38] Speaker 00: Here, the board has failed to provide any evidence that the references can be combined as they suggested. [00:01:48] Speaker 00: In this appeal, the board has combined [00:01:52] Speaker 00: basically two references. [00:01:55] Speaker 00: However, the examiner had combined four references for the basic rejection. [00:02:02] Speaker 00: The board decided that the other two secondary references were unnecessary for this appeal in that they added nothing to the primary references. [00:02:17] Speaker 00: The basic argument is that the [00:02:22] Speaker 00: board found that the threaded connection of the couch 126 patent for the electrode could be interchanged with a resilient or an elastic fit. [00:02:36] Speaker 02: And that there would be some motivation to do it because you'd have basically some reasonably expected benefits in replacement. [00:02:46] Speaker 00: Well, the board specifically said that it was to [00:02:51] Speaker 00: Secure faster, easier, independent replacement of the electrode. [00:02:58] Speaker 00: Well, we take issue with that in that first, the reed pattern, which is the secondary reference we relied upon to show the elastic fit, it is not directed to an electrode. [00:03:13] Speaker 00: It is directed to an insulator that's attached to a nozzle base. [00:03:18] Speaker 00: The insulator's made of ceramic. [00:03:20] Speaker 00: The nozzle base is made of copper. [00:03:23] Speaker 00: There's no electricity passing through those points. [00:03:27] Speaker 00: So it's not an electrical connection. [00:03:29] Speaker 00: They have no evidence whatsoever on this record to show that this elastic fit can be used with a electrode where you have current passing through at a very, very high amperage. [00:03:45] Speaker 00: The primary reference says that at the end of this torch tip, [00:03:50] Speaker 00: We have 60,000 amps per square inch. [00:03:55] Speaker 00: What we're doing is we're cutting metal. [00:03:58] Speaker 00: We're blowing out molten metal. [00:04:02] Speaker 00: And so the problem is when you look at this secondary reference of Reed, there's no teaching of how you're going to apply this. [00:04:12] Speaker 00: The board never explains how this is going to happen. [00:04:17] Speaker 00: And in fact, they ignore the [00:04:20] Speaker 00: issues that we raise. [00:04:22] Speaker 00: Namely, one, you have an alignment issue. [00:04:27] Speaker 00: As noted in the read patent, the secondary patent, the read patent noted that, well, you need to make sure that alignment's good in the nozzle so that the arc can pass through. [00:04:39] Speaker 03: Otherwise, you have... When you say they ignore these issues, what do you mean? [00:04:45] Speaker 00: Well, they didn't address them at all. [00:04:47] Speaker 00: They just said, [00:04:48] Speaker 03: Is that really true? [00:04:49] Speaker 03: I mean, I'm looking at the board's decision at pages 42 and 43, and it's specifically addressing the patent owner's argument that the read is inferior because it may not align. [00:05:03] Speaker 03: And then it goes on to talk about the difficulty of the electrical connection. [00:05:08] Speaker 03: I mean, it specifically addresses those arguments. [00:05:11] Speaker 03: Well, it mentions them. [00:05:13] Speaker 03: But you just said they didn't address them at all. [00:05:16] Speaker 03: Well, they didn't. [00:05:16] Speaker 03: They shouldn't overstate the record. [00:05:18] Speaker 03: I'm sorry. [00:05:18] Speaker 03: I mean, it is very conclusory here. [00:05:21] Speaker 03: Yes. [00:05:22] Speaker 03: I think you may have some arguments. [00:05:23] Speaker 03: It suggests that the board completely ignored them is not helping your case. [00:05:27] Speaker 03: OK. [00:05:28] Speaker 00: Yes. [00:05:29] Speaker 03: Can you explain to me why that analysis in 42 and 43 isn't sufficient under substantial evidence or standard? [00:05:37] Speaker 00: Sure. [00:05:38] Speaker 00: So in that analysis, they [00:05:42] Speaker 00: really don't say, well, how are you going to overcome the resistance problem? [00:05:49] Speaker 00: How are you going to overcome the alignment problem? [00:05:51] Speaker 00: As we pointed out in the read pattern, we have a ceramic insulator. [00:05:58] Speaker 00: There's no electrical connection. [00:06:01] Speaker 00: And therefore, you don't have the problem of electricity passing through here. [00:06:08] Speaker 00: And again, we're talking about a plasma torch. [00:06:11] Speaker 00: something that's meant to cut through metal. [00:06:14] Speaker 00: So the electricity that's passing from the cathode to the electrode at that point has to be very secure. [00:06:23] Speaker 03: Well, let me give you my take on what these paragraphs say. [00:06:27] Speaker 03: It doesn't seem to be all that clear, but it seems to suggest we recognize that Reed has problems. [00:06:36] Speaker 03: But given the motivation [00:06:38] Speaker 03: to get the ease of this different connection, people would make that trade-off. [00:06:45] Speaker 03: Isn't that good enough? [00:06:48] Speaker 03: Isn't that a good enough reason? [00:06:51] Speaker 03: Because I think they also suggest that nobody's shown this wouldn't work, that it might be not as good as the threaded connection, but that's a trade-off they want to make with replacement being easier. [00:07:03] Speaker 00: Yes, but the motivation is found in the read patent [00:07:08] Speaker 00: But the Reed patent is directed to a ceramic insulator that's on the base nozzle. [00:07:16] Speaker 00: And the solution that Reed talks about is they said, in the prior art, we want to make sure that the alignment of the nozzle and the insulator, the ceramic insulator, are properly aligned. [00:07:29] Speaker 00: So in the past, they glued them on together. [00:07:34] Speaker 00: So the solution that Reed was directed to [00:07:38] Speaker 00: is this problem of alignment and the replacement. [00:07:42] Speaker 03: I don't understand why you're making that argument. [00:07:45] Speaker 03: I mean, the only reason to get to read is for the specific type of connector, right? [00:07:49] Speaker 03: The rest of the stuff is all in the other reference. [00:07:53] Speaker 00: Yes, but the motivation to use this... Well, first of all, the electrode is removable. [00:08:00] Speaker 03: The motivation to use a different connector is it's easier to get in and out. [00:08:06] Speaker 00: Well, I mean, in the couch 126 patent, you still have to undo the retainer cap. [00:08:12] Speaker 00: You have to take off all the nozzle. [00:08:14] Speaker 03: The only difference would be... That's why you use the other one in Reed, because Reed makes clear it's easier to get in and out, right? [00:08:21] Speaker 00: It's only easier to... If you used it as the board suggested, it's only replacing the threaded connection of the electrode with the [00:08:33] Speaker 00: elastic fit of reed. [00:08:37] Speaker 00: But it's not that much easier to get out except for not having to unthread. [00:08:43] Speaker 00: You still have to remove all of these pieces in the couch 126 pack to get to the electrode. [00:08:52] Speaker 00: But what the reed is really talking about is they're really talking about the insulator and having that, their solution [00:09:02] Speaker 00: And the problem they had was directed to the fact that these two pieces were usually permanently attached together. [00:09:09] Speaker 00: It has nothing to do with the easeability of an electrode being removed. [00:09:14] Speaker 00: I mean, basically, the electrode, what they're saying is instead of having to unscrew it, we can now slide it out. [00:09:22] Speaker 00: But what I'm saying is that the scientific principles that one's field in the art would be burdened with is the knowledge that [00:09:31] Speaker 00: If I take away those threads, now I'm just going to have an elastic fit. [00:09:39] Speaker 00: And that's similar to if you had a car. [00:09:42] Speaker 00: You have a car, and you have a lug nut. [00:09:46] Speaker 00: The lug nut has screws on, and you can take that off. [00:09:49] Speaker 00: But you're not going to replace that with an elastic fit because of the grave problems that you're going to have if that wheel comes off. [00:10:00] Speaker 03: But that's the problem here. [00:10:02] Speaker 03: The board didn't find that there would be great problems which would go against the motivation combined. [00:10:09] Speaker 03: It says that you may know, and again, I don't find the reasoning to be as solid as it could be, but it says it makes no representation [00:10:19] Speaker 03: as to the degree of which this fit would be inferior. [00:10:23] Speaker 03: So it's not like changing from a lug nut to a push-in thing on a car where the whole thing might collapse. [00:10:30] Speaker 03: We don't know that. [00:10:31] Speaker 03: In fact, it recognizes it might be inferior, but it's worth the trade-off. [00:10:35] Speaker 00: Well, the problem is we don't know what the hypothetical device would be. [00:10:40] Speaker 00: There's no way of really testing this. [00:10:42] Speaker 00: So we have to rely on what one skilled in the art would know. [00:10:46] Speaker 00: And those are the scientific principles [00:10:49] Speaker 00: that have not been disputed by the appellee, in that when you have this... But again, that's the problem. [00:10:55] Speaker 03: I mean, they make the conclusion that one skilled in the art would have chosen to replace the threaded thing in couch with the resilient fit in reed. [00:11:08] Speaker 03: And the reason to do it was to make an easier implementation. [00:11:14] Speaker 00: But again, reed is directed to easy implementation of [00:11:19] Speaker 00: independently replacing the nozzle base with respect to the insulator. [00:11:27] Speaker 03: Sure, but it doesn't have to teach it precisely. [00:11:30] Speaker 03: I mean, it can be directed to something else. [00:11:32] Speaker 03: I think our president makes that clear. [00:11:34] Speaker 03: Yes. [00:11:34] Speaker 03: I mean, they're just going to read for the elastic. [00:11:39] Speaker 03: Is that the resilient fit? [00:11:41] Speaker 00: Resilient fit. [00:11:42] Speaker 03: Yeah. [00:11:42] Speaker 03: Well, Reid chose the resilient fit. [00:11:44] Speaker 00: They show a resilient fit for a non-electrical situation. [00:11:48] Speaker 00: And my point is that when one skilled in the art is going to be looking at that, what they're going to be worried about is these other issues, and that the board didn't really address these other issues. [00:12:03] Speaker 03: That's your problem, I think. [00:12:05] Speaker 03: I mean, I think you have a pretty good argument that the board didn't pay enough attention to it, but they certainly addressed them, and they said a person skilled in the art would understand how to do this. [00:12:16] Speaker 03: OK. [00:12:17] Speaker 03: Isn't that good enough? [00:12:18] Speaker 03: Assume they have evidence to support that conclusion. [00:12:22] Speaker 00: If they have evidence, but there's no evidence that there is any interchangeability. [00:12:28] Speaker 00: That's my problem. [00:12:29] Speaker 01: All right, we're into your rebuttal time. [00:12:31] Speaker 00: OK, thank you. [00:12:37] Speaker 01: Mr. Rubio? [00:12:39] Speaker 03: Thank you, Your Honor. [00:12:39] Speaker 03: Could you start with that last point and tell me what evidence in the records support? [00:12:43] Speaker 03: I mean, you know the pages I'm talking about in the board's decision, page 42 and 43. [00:12:47] Speaker 03: I do. [00:12:48] Speaker 03: It is incredibly conclusory. [00:12:51] Speaker 03: What evidence actually supports those conclusions? [00:12:55] Speaker 04: I believe the board did a good job of specifically listing what skills a person skilled in the art would need to have. [00:13:01] Speaker 04: But what did they cite to support that conclusion? [00:13:05] Speaker 04: Oh, OK. [00:13:06] Speaker 03: Well, they reference back to the... Can you just turn to pages 42 and 43 of the board's decision and walk me through how any of that is more than just [00:13:18] Speaker 03: Conclusory statements. [00:13:21] Speaker 03: OK. [00:13:23] Speaker 03: I'm down at the bottom. [00:13:25] Speaker 03: Up page 42? [00:13:26] Speaker 04: Yeah. [00:13:36] Speaker 04: OK. [00:13:38] Speaker 04: I don't have the exact sites as it pertains to there, but when they're talking about the, as the appellant discussed, the board uses the [00:13:49] Speaker 04: the might combine language. [00:13:51] Speaker 04: The board there is referring back to the appellant's appeal before the patent board, where they themselves introduced the main cause misalignment. [00:14:04] Speaker 03: I'm not so concerned about the might combine language. [00:14:07] Speaker 03: I don't think would combine versus might combine makes any difference to me. [00:14:12] Speaker 03: What I'm concerned about is [00:14:15] Speaker 03: the fact that nobody has shown that the prior art teaches you would use this type of resilient fit to make an electrical connection. [00:14:25] Speaker 03: Is that true? [00:14:26] Speaker 03: I mean, is there any cited piece of prior art that uses a resilient fit to make an electrical connection? [00:14:34] Speaker 03: As I in the record, no. [00:14:36] Speaker 03: Right. [00:14:36] Speaker 03: And that's at least an important distinction between Reed and this invention. [00:14:45] Speaker 03: The only thing we have to suggest that you could use read to make an electrical connection is, as far as I can tell, just a conclusion by the board without citing any evidence. [00:15:00] Speaker 03: Are you saying that, again, maybe you can explain to me, at the bottom, page 42, they cite [00:15:06] Speaker 03: a bunch of, they cite some parts of read. [00:15:10] Speaker 03: To support that, does any of that suggest a motivation to use read to make an electrical combination? [00:15:16] Speaker 03: Or all we're relying on really is a next sentence. [00:15:19] Speaker 03: A couple sentences later at the top of page 43, that is just the conclusory sentence without any support whatsoever, that one of ordinary skill might have chosen to replace [00:15:32] Speaker 03: threaded connection in Cal with the resilient fit and read to do all this stuff. [00:15:37] Speaker 03: Look, I get it. [00:15:38] Speaker 03: The motivation to combine by making a trade-off between ease of fit and possible less good electrical combination makes sense to me. [00:15:49] Speaker 03: But there's not an expert report. [00:15:51] Speaker 03: There's no kind of statement. [00:15:53] Speaker 03: And there's no citation in any of the evidence that that is actually true, that somebody would make that fit. [00:16:00] Speaker 03: It is the board's conclusion. [00:16:02] Speaker 03: How is that good enough? [00:16:04] Speaker 04: Well, the board breaks down this combination to the base mechanical elements and then the electrical elements. [00:16:11] Speaker 04: In their argument, they say that a person's skill in the art would recognize that this is the problem of taking a cylindrical consumable and mechanically attaching it inside a cylindrical board. [00:16:24] Speaker 04: In the 126 invention, the thread connection was used. [00:16:28] Speaker 04: And in the Reed invention, [00:16:30] Speaker 04: the resilient elastic members were used. [00:16:33] Speaker 04: Now the... I'm with you. [00:16:37] Speaker 03: But where is... This invention is not just about changing two different mechanical fits. [00:16:44] Speaker 03: The electrical connection is critical to this. [00:16:47] Speaker 03: Correct. [00:16:48] Speaker 03: Right? [00:16:49] Speaker 03: So where is substantial evidence that they would have opted to swap and read [00:16:58] Speaker 03: to make the electrical connection as well. [00:17:01] Speaker 04: I believe what the board is arguing, and I think this goes back all the way to the action closing prosecution dated December 23, 2013, Appendix 689, where they say that they were to address specifically the issues of misalignment and resistance and actually bring up the issue of skill in the art, or to say this would amount to exercising the normal skill in the art [00:17:27] Speaker 04: which as concerns plasma torches would appear to be quite high when considering the complexities involved. [00:17:31] Speaker 02: What are you reading from? [00:17:33] Speaker 04: This is Appendix 689. [00:17:34] Speaker 02: I don't think I have a 689 in my appendix. [00:17:40] Speaker 02: Is that possible? [00:17:41] Speaker 04: It may not be decided completely in the appendix. [00:17:46] Speaker 02: That's not very high quality, if we can't see where they're coming from. [00:17:51] Speaker 03: Is that in the board decision? [00:17:53] Speaker 03: It must be in an examiner point. [00:17:55] Speaker 03: Yes, it's an examiner point. [00:17:56] Speaker 03: But the examiner, the board didn't adopt all the examiner's reasoning. [00:18:00] Speaker 04: This one refers to the count four at issue with regards to its identical arguments of misalignment and resistance that were brought up way back in 2013. [00:18:12] Speaker 04: The way I'm trying to argue is that the examiner said this amounts to standard scale in the art. [00:18:21] Speaker 04: And where that comes into play, if you look at the 126th disclosure, [00:18:26] Speaker 04: It just shows you a rudimentary figure. [00:18:28] Speaker 03: But they didn't even cite the examiner's statement in their opinion. [00:18:37] Speaker 04: I don't recall where they said that. [00:18:40] Speaker 04: I believe the Novartis case I cited in the response is that just because they don't expressly discuss every positive and negative aspect doesn't mean they didn't consider it and come to the decision. [00:18:53] Speaker 04: In this case, they had the full record. [00:18:55] Speaker 04: They had several years worth of the same arguments to consider when they render their opinion. [00:19:01] Speaker 03: Do you know, the board only, and I don't think we can do this or we could get here right now, but the board only relied on couch and read. [00:19:13] Speaker 03: Did the examiner rely, these other two references that were out there, do they show anything about [00:19:20] Speaker 03: using this resilient fit as an electrical connection? [00:19:23] Speaker 04: The board clarifies as to this in note three of their own decision where they say their decision doesn't rely on copper, that being obvious use copper for an electrode and that copper is inherently resistant, resilient rather. [00:19:41] Speaker 04: Sober is the [00:19:43] Speaker 04: reference that says that it would be obvious to use copper for an electrode, and it is Liu that says copper is inherently resilient. [00:19:52] Speaker 04: So both of those two findings the board found were already included in the CO26 disclosure because a person skilled in the art would would arguably know to use copper because the design specifications for an electrode [00:20:07] Speaker 04: limited to a material that's highly conductive in both thermally. [00:20:11] Speaker 03: Are you saying then that because couch teaches using a certain type of metal, that one would know that even under a resilient fit, rather than a threaded fit, that that would conduct electricity in a proper way? [00:20:26] Speaker 04: Correct. [00:20:29] Speaker 04: The electrodes are made out of one piece, as we've seen in virtually all the disclosures. [00:20:35] Speaker 04: So they would not make it out of two pieces. [00:20:37] Speaker 04: So if they made the electrode, the entirety of electrode out of copper, including the resilient members. [00:20:43] Speaker 04: Where did the board say that? [00:20:46] Speaker 04: This goes back to the argument where they say they would adjust the size of the resilient fingers and the mating components such that it would have the appropriate amount of resistance, which was never actually named. [00:21:01] Speaker 04: The other argument that the board [00:21:05] Speaker 04: In working with that, when they're adjusting the other components of the assembly, the electric also has a flange. [00:21:14] Speaker 04: The flange is what makes perpendicular to the torch body, and that would also be a source of conduction as well. [00:21:21] Speaker 04: Not all the electrical conduction is limited to the threads or the resilient members. [00:21:26] Speaker 04: If you look at the figure five of the couch, you see that you have the electrode, then you have the swirler that sits on top of the flange of the electrode, [00:21:35] Speaker 04: which where the electrode sits on the torch body, and you have a nozzle that sits on top of the swirler, a shield on top of the nozzle, and then an outer retaining cap that presses out the entire assembly. [00:21:49] Speaker 04: So the flange, regardless of whether you use a threaded fit or the rezoning fit, is pressed in between the entire assembly and the main flange on the torch body. [00:22:04] Speaker 04: And that's the type of [00:22:05] Speaker 04: adjustment that the present scale of the art would make. [00:22:15] Speaker 04: I believe the appellant brought up an issue where they argue that the board changed their basis for rejection, and I think that goes back to where you mentioned they no longer rely on the inherent, it being obvious to make the electorate of copper or of copper be inherently resistant, or resilient rather. [00:22:35] Speaker 04: In their decision, they sustained the decision of the board and expressly stated that all pieces are cited by the examiner were included in their decision. [00:22:48] Speaker 04: Because they said the decision didn't rely on the inherency or being obvious to make the electrode out of copper doesn't change the decision, they just didn't need to argue it because, in their opinion, it was already included in Couch 126. [00:23:13] Speaker 04: Is that it? [00:23:14] Speaker 04: Unless you have any further questions. [00:23:16] Speaker 04: OK. [00:23:16] Speaker 01: Thank you. [00:23:24] Speaker 01: You have three and a half minutes. [00:23:26] Speaker 01: Thank you. [00:23:27] Speaker 03: Can I just follow up on what he said? [00:23:29] Speaker 03: I may be mischaracterizing his argument, but this is how I understand it, which is couch teaches to make these electrodes out of copper, and that copper would [00:23:42] Speaker 03: would have the right conductivity by its very nature. [00:23:48] Speaker 03: And so when the board is saying using the resilient tip versus the threaded tip, it's taking into account that the very structure of that electrode is still going to have the right conductivity because of the metal taught by Kelch. [00:24:05] Speaker 03: And then all you're getting from Reed is the different tip, which doesn't really affect [00:24:11] Speaker 03: conductivity in any substantial way. [00:24:14] Speaker 03: If that's his argument, what's wrong with that? [00:24:17] Speaker 00: Well, the couch did not say it was made of copper. [00:24:22] Speaker 00: Rather, the examiner relied upon these other secondary references that said it was copper. [00:24:30] Speaker 00: Right. [00:24:30] Speaker 00: That's not really what I'm trying to get at, though. [00:24:33] Speaker 00: But we can see that the electrodes are made of copper. [00:24:38] Speaker 00: But even though [00:24:40] Speaker 00: copper would have the right conductivity to conduct it and everything. [00:24:45] Speaker 00: That's not really what we're saying the problem is. [00:24:48] Speaker 00: We're saying, OK, we have these threaded connections with the couch reference, which provides the sufficient amount of surface area so you don't have buildup resistance. [00:25:01] Speaker 00: When you build up resistance, it's going to get hot. [00:25:04] Speaker 00: When you're talking about 60,000 [00:25:08] Speaker 00: amps per inch squared, every time you remove a piece of metal, that's going to increase your resistance by 1 ohm. [00:25:18] Speaker 00: And if you increase it by 1 ohm, 1 ohm difference of resistance is going to result in that kind of torch. [00:25:27] Speaker 00: 36 megawatts of difference. [00:25:31] Speaker 00: So we're talking about if we're going to incorporate this, the conductivity of the copper doesn't matter. [00:25:37] Speaker 00: Yes, it's going to have the right conductivity. [00:25:39] Speaker 00: But the resistance at that connection is going to be increased when you start making these big cutouts. [00:25:46] Speaker 03: The board still hasn't, in your view, even accepting all this, explained why the change in tips, even if it did the same mechanical function, would be electrically sufficient. [00:25:57] Speaker 03: Yes. [00:25:58] Speaker 00: Yes. [00:25:59] Speaker 00: And the appellee has mentioned various modifications that could be made. [00:26:05] Speaker 00: But the board didn't make those findings. [00:26:07] Speaker 00: The board did not. [00:26:08] Speaker 03: If there was a statement from somebody that is a skilled artisan that even making this change between a threaded versus a resilient tip, the impact on resistance would not be so [00:26:27] Speaker 03: great, that it wouldn't be offset by the ease of changing them. [00:26:34] Speaker 03: Would that be sufficient? [00:26:36] Speaker 03: Because it seems to me that that's what the board says is the reason for the motivation to combine here. [00:26:42] Speaker 03: I think that's how I read that last sentence at the bottom of that paragraph on 43. [00:26:47] Speaker 03: But again, they don't cite to anything to support it. [00:26:50] Speaker 00: They don't cite to anything. [00:26:52] Speaker 00: And maybe you can read between the lines, is that what the reason is? [00:26:56] Speaker 00: But they didn't state that. [00:26:58] Speaker 00: And they didn't state that. [00:27:02] Speaker 00: And I would say that they can't get a statement that says that the resistance is not important in that electrical connection. [00:27:11] Speaker 00: I see that my time is up. [00:27:13] Speaker 01: We thank all the parties for the arguments this morning. [00:27:15] Speaker 01: This court now stands in recess.