Danny Warren

Patent Trials and Appeals BoardNov 3, 2021

2021002214 (P.T.A.B. Nov. 3, 2021)

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. 16/386,471 04/17/2019 Danny Warren W016 P02705-US2 1005 3017 7590 11/03/2021 BARLOW, JOSEPHS & HOLMES, LTD. 40 WESTMINSTER STREET 3RD FLOOR PROVIDENCE, RI 02903 EXAMINER PANCHOLI, VISHAL J ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 11/03/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): drj@barjos.com patent@barjos.com sjh@barjos.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANNY WARREN Appeal 2021-002214 Application 16/386,471 Technology Center 3700 ____________ Before, MICHAEL L. HOELTER, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–11. See Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Warren Environmental & Coating, LLC.” Appeal Br. 1. Appeal 2021-002214 Application 16/386,471 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to a method for repairing a distressed pipeline by installing a liner inside of the pipeline.” Spec. ¶ 2. Method claim 1 is the sole independent claim. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A method for installing a liner in an underground utility structure, having a substantially deteriorated and cracked interior surface, comprising the steps of: spray applying a resin coating to the interior surface of the pipeline; applying compressed air at a low pressure of between 3-5 psi to slowly invert a dry liner into the interior of said pipeline at a controlled inversion rate of less than or equal to 0.5 feet per minute and low inversion pressure whereby said inverting liner does not cause additional damage to said deteriorated interior surface; and slowly increasing a pressure on the interior of said dry liner to about 8-10 psi, after said liner is fully inverted to imbed said dry liner into said resin coating to fully bed said liner into said resin coating and to press said resin coating into said deteriorated and cracked surface. EVIDENCE Name Reference Date Warren US 6,868,870 B2 Mar. 22, 2005 Blackmore et al. (“Blackmore”) US 2006/0048832 A1 Mar. 9, 2006 Driver et al. (“Driver”) US 7,108,456 B2 Sept. 19, 2006 REJECTIONS Claims 1–5 are rejected under 35 U.S.C. § 103 as unpatentable over Warren and Driver. Appeal 2021-002214 Application 16/386,471 3 Claims 6–11 are rejected under 35 U.S.C. § 103 as unpatentable over Warren, Driver, and Blackmore. ANALYSIS The rejection of claims 1–5 as unpatentable over Warren and Driver Appellant presents arguments for claims 1–5 together. See Appeal Br. 5–9. We select independent claim 1 for review with dependent claims 2–5 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). The Examiner primarily relies on the teachings of Warren for disclosing the limitations of claim 1, but the Examiner acknowledges that Warren “does not explicitly teach” the recited pressure ranges of “3–5 psi” or “8–10 psi” when inverting and installing the liner of Warren into a pipeline. Non-Final Act. 3; see also Ans. 5. The Examiner relies on Driver for such teachings and provides a reason for combining Warren and Driver. See Non-Final Act. 3–4; see also Ans. 4–6. Appellant initially contends that Warren fails to teach the liner being inverted “at a controlled rate” and that “no such words appear” therein. Appeal Br. 5. Appellant contends that the present inversion methodology involves “a high pressured, haphazard process wherein the liner, as it is inverted rips through the pipeline snagging and bunching on the corners causing wrinkles and creases that are near to impossible to remove once the liner is inverted.” Appeal Br. 5; see also id. at 7. Appellant thus contends that persons presently employing this process do not attempt to mitigate the damage being done. To be clear, Appellant acknowledges that it is known that “felt liners are delicate and tend to break or rip during inversion” Appeal 2021-002214 Application 16/386,471 4 (Appeal Br. 6 (referencing Spec. ¶ 11)), yet Appellant contends that the installers, nevertheless, employ the aforesaid “haphazard process wherein the liner . . . rips through the pipeline snagging and bunching on the corners.” Appeal Br. 5. These present installers do not appear to rise to the level of persons of ordinary skill in the art who are expected to exercise some degree of care and caution when installing such a delicate liner.2 Instead, Appellant contends that present installers, even though aware of the fragile nature of the lining material, still permit the liner to be haphazardly blown through the pipeline (“rips through the pipeline”) while purposefully disregarding the snagging and bunching that will occur. Appellant’s premise lacks merit as it assumes a person of ordinary skill in the art actually has no skill. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (“[t]his argument presumes stupidity rather than skill”). In any event, the Examiner finds that “Warren teaches introducing the liner in the pipeline at a controlled rate since any rate at which the liner is being introduced is controlled in some manner.” Ans. 5. Further, “even without providing the exact controlled rate, Warren does teach either 2 One of ordinary skill is expected use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.”’); Perfect Web Technologies., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (An obviousness analysis may include recourse to the “common sense available to the person of ordinary skill that do[es] not necessarily require explication in any reference.”). Appeal 2021-002214 Application 16/386,471 5 implicitly or explicitly that the liner is applied to the pipeline at a controlled rate.” Ans. 5. Appellant does not apprise us of error on this point, and as such, Appellant’s contention regarding the limitation “at a controlled inversion rate” is not persuasive of Examiner error. Specifically addressing the limitation of the controlled rate being “less than or equal to 0.5 feet per minute,” Appellant contends that Warren fails to teach or suggest such a value. See Appeal Br. 7. Here, the Examiner acknowledges that “Warren in view of Driver . . . does not explicitly teach that the inversion rate of the dry liner is limited to 0.5 feet per minute.” Non-Final Act. 4; see also Ans. 5. Instead, the Examiner states (a) that it would have been obvious to a skilled person to limit the speed accordingly “to ensure that the liner is not inverted too fast which may increase the risk” to the liner, and (b) that it would have been obvious “to choose an inversion [rate] that is appropriate for the application as an obvious matter of design choice.” Non-Final Act. 4. Appellant does not indicate how the Examiner’s above reasoning might be faulty. On this point, Appellant’s Specification states, “[t]he slow rate of inversion will not allow air to be trapped behind the new liner and it will prevent twisting or binding when the new liner navigates bends and turns in the host pipe.” Spec. ¶ 29. Appellant does not explain how a skilled person would not already be in possession of such knowledge (i.e., a slower rate will not be as likely to trap air), or would fail to apply the requisite level of care during the installation process. Further, Appellant’s Specification does not explain the criticality of the recited “less than or equal to 0.5 feet per minute” (i.e., 6 inches per minute). In other words, Appellant does not elaborate as to how such benefits (i.e., no trapped air, no twisting or binding) Appeal 2021-002214 Application 16/386,471 6 are unable to be achieved should the inversion rate along the pipeline be 7 inches per minute instead. Hence, Appellant’s contentions regarding “a controlled inversion rate of less than or equal to 0.5 feet per minute” are not persuasive the Examiner erred when ascertaining that such a rate would have been obvious to a skilled person. See Non-Final Act. 4 (determining that it would have been obvious to limit the speed to reduce risk and to choose a rate appropriate for the application). In other words, it is more likely that the recited rate is more a matter of good engineering judgement than a patentable distinction. Appellant next addresses Warren’s teaching of also inverting the calibration hose (which is separate from the liner). See Appeal Br. 6 (referencing Warren 5:58–65). Appellant contends that “[t]his disclosure has nothing to do with inversion of the liner itself.” Appeal Br. 6. We agree that this citation to Warren about inverting the calibration hose “has nothing to do with inversion of the liner.” Appeal Br. 6. However, Appellant does not dispute another part of Warren which clearly states “it is also possible to invert the lining hose 12 into the pipeline 6.” Warren 4:62–63. A related argument raised by Appellant seeks to distinguish Warren because claim 1 “requires that the liner be inverted not inserted by injecting low pressure air.” Appeal Br. 7. However, as noted above, Warren also teaches the inversion process for the liner. See Warren 4:62–63. As such, Appellant’s contentions are not persuasive of Examiner error. Now addressing Driver, Appellant contends that the inversion process described therein is “related to the installation of two fittings” and not a liner. Appeal Br. 8. However, Driver was not relied on for teaching inversion of a liner, Warren was. See Non-Final Act. 3; see also Ans. 3. As Appeal 2021-002214 Application 16/386,471 7 such, Appellant’s contention regarding Driver is not persuasive of Examiner error. Now addressing both references, Appellant contends that claim 1 is directed to a two-step process. See Appeal Br. 8. The first is inverting the liner along the pipeline which is “then followed by the application of high pressure air . . . to bed the liner into the resin that has already been applied within the pipeline.” Appeal Br. 8. Here, Appellant is wholly disregarding Warren’s similar two-step process that initially involves inverting the liner along the pipeline followed by the insertion (also using an inversion process) of calibration hose 18. See Warren 6:2–4 (“The inverted calibration hose 18 walks along the inside of the lining hose 12 and expands and presses it[] against the inner wall 9 of the pipeline 6.”); see also Ans. 4.3 Appellant does not dispute that Warren teaches such steps. Appellant also alleges that the Examiner engaged in “improper hindsight” reconstruction of the invention and that the Examiner’s combination was a result of “simply picking and choosing the appropriate constituent elements from the prior art.” Appeal Br. 8. First, Appellant does not identify that which was gleaned only from Appellant’s Specification. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Second, we have been instructed by the Supreme Court that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. In the matter before us, Appellant does not explain how the Examiner’s component selection, when combined, fails to yield predictable results. 3 Note also Driver’s two-step process of reciting one pressure range for installation and another for curing. See Driver 8:10–11; 9:56–59. Appeal 2021-002214 Application 16/386,471 8 Appellant further challenges the Examiner’s motivation to combine the references (see Appeal Br. 9), but Appellant does not explain how the reasons provided by the Examiner (see Non-Final Act. 4) are inapplicable and/or inaccurate. See also Ans. 6 (“[a] person of ordinary skill in the art would be able to recognize the advantages and combine the teachings of the prior art”). Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1–5 as being obvious in view of Warren and Driver. The rejection of claims 6–11 as unpatentable over Warren, Driver, and Blackmore Appellant argues these claims together, focusing on claim 11 (which ultimately depends from claim 1). See Appeal Br. 9–13. The Examiner additionally relied on Blackmore for its disclosure of using a drum. See Non-Final Act. 5–6; see also Ans. 6. Appellant does not challenge such additional teachings, but instead repeats arguments presented above regarding claim 1. See Appeal Br. 9–12. In summation, Appellant contends “[t]he simple addition of the Blackmore reference does not overcome the lack of disclosure in the base Warren reference.” Appeal Br. 12. Appellant’s repeated arguments are not persuasive for the reasons provided above. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 6–11 as being obvious in view of Warren, Driver, and Blackmore. CONCLUSION The Examiner’s decision to reject claims 1–11 is affirmed. Appeal 2021-002214 Application 16/386,471 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–5 103 Warren, Driver 1–5 6–11 103 Warren, Driver, Blackmore 6–11 Overall Outcome 1–11 TIME PERIOD FOR RESPONSE 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