Ex Parte Bohl et al

Patent Trial and Appeal Board

May 17, 2017

12671421 (P.T.A.B. May. 17, 2017)

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.
12/671,421 06/09/2010 Marcus Bohl 4B701-008US1 1742
69713 7590 05/19/2017
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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):
INFO @ORP ATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCUS BOHL, BERND KAUFMANN,
and THOMAS KERN-EMMERICH
Appeal 2015-007124
Application 12/671,421
Technology Center 3600
Before MICHELLE R. OSINSKI, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marcus Bohl et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—23, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Uponor Innovation AB.
Appeal Br. 1.
Appeal 2015-007124
Application 12/671,421
THE CLAIMED SUBJECT MATTER
Claims 1 and 15 are the independent claims on appeal. Claim 1 is
reproduced below and is illustrative of the claimed subject matter on appeal.
1. Press fitting for a pipe with
- a fitting body that has a supporting sleeve with a free end
over which one end of a pipe to be connected can be pushed onto
the supporting sleeve, and
~ a pressing sleeve including cylindrical walls, the pressing
sleeve being plastically deformable for pressing against one end
of a pipe pushed onto the supporting sleeve and that has an axial
holding end, turned away from the free end of the supporting
sleeve, at which the pressing sleeve is held on the fitting body,
characterized in that
- the pressing sleeve is held essentially concentric to the
supporting sleeve by means of at least one spacer element
arranged at the holding end of the pressing sleeve,
- the fitting body has, in the area of the holding end of the
pressing sleeve, a circumferential structure, and
- the cylindrical walls of the pressing sleeve have, at the
holding end, at least one opening, each opening having a
corresponding locking element of at least one locking element
extending therethrough for engaging the circumferential
structure of the fitting body for axial fixation of the pressing
sleeve on the fitting body.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Dankbar2 EP 1 790 896 A1 Nov. 23, 2006
2 All references to the text of Dankbar are to the machine translation entered
into the record as an attachment to the Examiner’s Answer (June 4, 2015).
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Appeal 2015-007124
Application 12/671,421
THE REJECTIONS3
I. Claim 17 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final
Act. 4.
II. Claims 1—14 and 16—23 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention. Id. at 4—7.
III. Claims 1—23 stand rejected under 35 U.S.C. § 102(b) as anticipated
byDankbar. Id. at 14—20.
OPINION
Rejections I and II
Appellants did not present any arguments contesting the written
description rejection and/or the indefmiteness rejection (Final Act. 4—7) in
the Appeal Brief. See, e.g., Appeal Br. 5—13. Appellants presented
arguments contesting the written description rejection and the indefmiteness
rejection for the first time in the Reply Brief. Reply Br. 5—8. The rules
applicable to the present appeal provide:
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. §41.41(b)(2) (2014).
3 The rejection of claims 1—15 and 18—23 under 35 U.S.C. § 102(b) as
anticipated by Riesselmann (DE 197 35 919 Cl, pub. Nov. 26, 1998) (Final
Act. 8—14) has been withdrawn (Ans. 3).
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Appeal 2015-007124
Application 12/671,421
The arguments contesting the written description rejection and the
indefiniteness rejection raised for the first time in the Reply Brief were not
responsive to an argument raised in the Examiner’s Answer. As to any
explanation for Appellants’ failure to present arguments in the Appeal Brief
contesting the written description and indefmiteness rejections, Appellants
assert only that they “did not rebut [the § 112] rejections for the sole purpose
of presenting a compact Appeal Brief that is focused on issues of
patentability to the Appeals Board.” Reply Br. 5. As such, Appellants have
not shown good cause for the Board to consider these new arguments
presented for the first time in the Reply Brief.
Accordingly, we summarily sustain the rejection of claim 17 under 35
U.S.C. § 112, first paragraph, and the rejection of claims 1—14 and 16—23
under 35 U.S.C. § 112, second paragraph.
Rejection III
The Examiner finds that Dankbar discloses all of the limitations of
independent claim 1, including, inter alia, “the cylindrical walls of the
pressing sleeve have ... at least one opening, each opening having a
corresponding locking element of at least one locking element. . . extending
therethrough for engaging the circumferential structure of the fitting body
for the axial fixation of the pressing sleeve on the fitting body.” Final Act.
15—16. More specifically, the Examiner finds that element 36 of Dankbar is
the at least one opening of the pressing sleeve, and that element “56 and/or
the two ribs that extend transversely with respect to element 56” is the
corresponding locking element of at least one locking element extending
therethrough. Ans. 6 (citing Dankbar, Fig. 3; ^fl[ 33, 36).
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Appeal 2015-007124
Application 12/671,421
Claim 1 defines the locking element extending through the opening in
the cylindrical wall of the pressing sleeve using functional language, stating
that the locking element extending through the opening in the pressing
sleeve is “for engaging the circumferential structure of the fitting body for
axial fixation of the pressing sleeve on the fitting body.” In order for the
prior art to anticipate this claim element, it must disclose a locking element
extending through an opening in the pressing sleeve that is inherently
capable of engaging the circumferential structure of the fitting body for axial
fixation of the pressing sleeve on the fitting body. In connection with
functional language, the Examiner need only establish a reasonable basis to
support that the prior art is capable of performing the claimed function in
order to shift the burden to applicant to show that the prior art structure is
not capable of performing the claimed function. See In re Schreiher, 128
F.3d 1473, 1478 (Fed. Cir. 1997). We consider whether the Examiner has
set forth a basis in fact and/or technical reasoning to reasonably support a
determination that Dankbar’s locking element is capable of engaging the
circumferential structure of the fitting body for axial fixation of the pressing
sleeve on the fitting body.
The Examiner finds that:
the at least one locking element [56], due to its longitudinal
length and its radial depth, will engage the circumferential
structure of the fitting body [12] and the at least one locking
element [56] can axially fixate the pressing sleeve [30] on the
fitting body [12] because the at least one locking element [56]
will prevent the axi[a]l advancement of the pressing sleeve [30]
towards the fitting body [12] at a given longitudinal insertion of
element 36 about element 56 since the opening of element 36 is
finite longitudinally.
Ans. 7.
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Appeal 2015-007124
Application 12/671,421
Appellants argue that “the projections 56 of Dankbar’s ring 52 may at
best overlap with and possibly make contact with the circumferential bead
26” of fitting body 12.” Reply Br. 4 (emphasis modified). Appellants argue,
however, that “it would not be the projections 56 that achieve [any] axial
fixation” of the pressing sleeve relative to the fitting body, but “[rjather, it
would be the inner projection 48 of the press sleeve 30 that would achieve
the alleged fixation.” Reply Br. 4. Appellants point out that Dankbar’s
Figure 3 “clearly shows that projection 56 may at best minimally extend
through the wall of the press sleeve 30 and into the inner space of the press
sleeve 30 via the cut-out 36.” Id.
We agree with Appellants that inner projection 48 of pressing sleeve
30 would make contact with circumferential groove 28 of fitting body 12 to
prevent further axial advancement of pressing sleeve 30 toward fitting body
12 before element 56 would be able to reach the end of opening 36 (with its
finite longitudinal length) during any axial advancement of pressing sleeve
30 toward fitting body 12. See Dankbar, Fig. 2. Thus, contrary to the
Examiner’s assertion in the Examiner’s Answer, we do not find that
Dankbar’s projection 56 will prevent the axial advancement of pressing
sleeve 30 toward fitting body 12 at a given longitudinal insertion of
projection 56 within opening 36. We find instead that Dankbar’s projection
56 will not and cannot contact the finite end of opening 36 due to the other
structure present in Dankbar. In order for Dankbar’s projection 56
extending through opening 36 to be capable of engaging the circumferential
structure of the fitting body for axial fixation of the pressing sleeve on the
fitting body through contact with limited edge portion 40 (i.e., the finite end)
of opening 36 upon reaching a certain longitudinal insertion of projection 56
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Appeal 2015-007124
Application 12/671,421
into opening 36 (as reasoned by the Examiner), it would be necessary to, for
example, extend the axial length of projection 56 or shorten the depth of
opening 36. However, modification of the reference is not permissible in an
anticipation rejection.
Accordingly, we agree with Appellants that Dankbar does not
anticipate claim 1, and we do not sustain the rejection of independent claim
1 under 35 U.S.C. § 102(b) as anticipated by Dankbar. Claim 15 recites
substantially similar language regarding a locking element extending
through an opening for engaging a circumferential rib of a fitting body for
axial fixation of the pressing sleeve on the fitting body (Appeal Br. 17
(Claims App’x)), and we do not sustain the rejection of independent claim
15 for the same reason as independent claim 1. We also do not sustain the
rejection of claims 2—14 and 16—23 which depend from independent claim 1
or 15.
DECISION
The Examiner’s decision to reject claim 17 under 35 U.S.C. § 112,
first paragraph is summarily affirmed.
The Examiner’s decision to reject claims 1—14 and 16—23 under 35
U.S.C. § 112, second paragraph is summarily affirmed.
The Examiner’s decision to reject claims 1—23 under 35 U.S.C.
§ 102(b) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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