Ex Parte Ciprich et al

Patent Trial and Appeal BoardJul 27, 2018

12549606 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/549,606 08/28/2009 49458 7590 07/31/2018 DON W. BULSON (PARK) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE/ 19TH FLOOR CLEVELAND, OH 44115 FIRST NAMED INVENTOR Samuel D. Ciprich 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Pl57P0029USA 9335 EXAMINER DUNWOODY, AARON M ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 07/31/2018 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMUEL D. CIPRICH and MATTHEW T. BERNOSKY Appeal 2017-011310 Application 12/549,606 1 Technology Center 3600 Before LINDA E. HORNER, GEORGE R. HOSKINS, and PAUL J. KORNICZKY, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 11, 12, 42--45, 47, 48, and 53. Final Office Action (November 4, 2015) (hereinafter "Final Act."), modified by Advisory Action (June 22, 2016) (hereinafter "Adv. Act.") and Examiner's 1 Samuel D. Ciprich and Matthew T. Bernosky ("Appellants") identify Parker-Hannifin Corporation as the real party in interest. Appeal Brief (June 6, 2016) (hereinafter "Appeal Br."), at 2. Appeal 2017-011310 Application 12/549,606 Answer (July 3, 2017) (hereinafter "Ans"). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). The claimed subject matter relates to "a tube coupling for connecting a tube to a connection body." Specification (August 28, 2009) (hereinafter "Spec.") ,r 4. The Examiner rejected claims 48 and 53 as anticipated by the prior art and rejected the remaining claims 11, 12, 42--45, and 47 as obvious over the prior art. For the reasons explained below, we do not find error in the Examiner's anticipation rejection, but we find insufficient reasoning to support a determination of obviousness. Accordingly, we AFFIRM-IN- p ART. Because we augment the findings of the Examiner in our affirmance of the anticipation rejection, we designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41. 50(b) to provide Appellants with a full and fair opportunity to respond to the rejection. CLAIMED SUBJECT MATTER Claims 42 and 48 are the independent claims on appeal and are reproduced below with the pertinent claim language shown in italics. 42. A compression and flared tube fitting assembly, compnsmg: a thick-walled 300 series stainless steel tube defining a central axis and including an exterior, an interior passageway, and a radially outwardly flared end portion; and 2 Claims 1--4, 8-10, 13-24, 26-32, 34, and 40 are canceled, claims 5-7, 25, 35-39, 41, and 52 are allowed, claims 49-51 are withdrawn, and claims 33 and 46 are pending but not rejected. Final Act. 1 (indicating withdrawn claims); Adv. Act. 1 (entering after-final amendment and indicating allowed claims); Ans. 2 (withdrawing rejection of claim 46). 2 Appeal 2017-011310 Application 12/549,606 a generally cylindrical sleeve in engagement with said thick-walled tube, said sleeve including a side proximal the flared end portion of the tube, a side distal the flared end portion of the tube, an interior and an exterior, said interior of said sleeve including an interior surface; wherein said side proximal the flared end portion of the tube includes an inner annular concavity and a sharp annular biting portion radially engaging and radially deforming said thick-walled tube to form a bulbous portion protruding into the annular concavity and engaging an axially extending annular surface of the sleeve thereat; wherein said annular concavity of said sleeve engages said thick-walled tube after compression and deformation thereof; and wherein said sleeve includes a coating harder than an interior of the sleeve and harder than the thick-walled 300 series stainless steel tube. 48. A compression and flared tube fitting assembly, compnsmg: a thick-walled tube defining a central axis and including a radially outwardly flared end portion; and a generally cylindrical sleeve in engagement with said thick-walled tube, said sleeve including a side proximal the flared end portion of the tube, a side distal the flared end portion of the tube, an interior and an exterior, said interior of said sleeve including an interior surface; wherein said side proximal the flared end portion of the tube includes an inner annular concavity and a sharp annular biting portion radially engaging and radially deforming said thick-walled tube to form an extruded bulbous portion protruding into the annular concavity; wherein said annular concavity of said sleeve engages said thick-walled tube after compression and deformation thereof; 3 Appeal 2017-011310 Application 12/549,606 wherein said annular concavity includes a radially extending annular surface substantially transverse to the interior surface and forming the sharp annular biting portion therewith, and an axially extending annular surface extending from the radially extending surface; wherein a portion of the thick-walled tube axially coincident with the sleeve includes a generally uniform main portion, and a radially-inwardly compressed grip portion axially between and abutting the main portion and the extruded bulbous portion, wherein the extruded bulbous portion is axially between and abutting the compressed grip portion and the radially outwardly flared end portion. Appeal Br. 14-16 (Claims Appendix). REJECTIONS The Final Office Action, as modified by the Advisory Action and the Examiner's Answer, includes the following rejections: 1. Claims 48 and 53 stand rejected under pre-AIA 35 U.S.C. Â§ 102(b) as anticipated by Parker (US 2,289,382, issued July 14, 1942). 2. Claims 11, 12, 42--45, and 47 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Parker. ANALYSIS First Ground of Rejection: Anticipation of claims 48 and 53 by Parker Appellants argue that the Examiner erred in rejecting claim 48 as anticipated by Parker because Parker does not disclose the claimed "radially-inwardly compressed grip portion axially between and abutting the main portion and an extruded bulbous portion" and an "extruded bulbous portion [] axially between and abutting the compressed grip portion and the radially outwardly flared end portion." Appeal Br. 7. Appellants argue that any compressed portion of the tube in Parker resides in the flared region of 4 Appeal 2017-011310 Application 12/549,606 the tube and does not abut the main portion of the tube. Id. Appellants further argue that Parker does not disclose an "extruded bulbous portion" because Parker relies merely on a crimp in the tube. Id. These arguments require us to interpret the claim terms "radially outwardly flared end portion," "generally uniform main portion," "radially-inwardly compressed grip portion," and "extruded bulbous portion. We address each claim term below. To facilitate our discussion, Figures 12 and12A of Appellants' disclosure are depicted below: FIG. 12 5 ---1200 / ,----1201 t /., / 1200A 716 746 FIG. 12A Appeal 2017-011310 Application 12/549,606 Figure 12 illustrates a cross section of the tube and sleeve when the die is in a fourth position abutting the cap, and Figure 12A is an enlarged view of a portion of Figure 12. Spec. ,r,r 81-82. We have highlighted tube 701 in purple and sleeve 704 in orange. "radially outwardly flared end portion" Claim 48 recites that the tube includes "a radially outwardly flared end portion." Appeal Br. 16 (Claims Appendix). Appellants' Specification discloses that the tubing 701 includes "end of tubing 701 C" that "is flared out" and further that the tube includes "an end portion 701C which is flared." Spec. ,r,r 105, 118 (discussing Figs. 7 and 12). Appellants identify element 701 C as the claimed "radially outwardly flared end portion." Appeal Br. 4 (citing Fig. 12). The lead line for element 701C in Figure 12 points to the end face of tube 701. Thus, we find that one having ordinary skill in the art would understand that "radially outwardly flared end portion" when read in light of Appellants' Specification refers to the end portion of the flared portion of tube 701, and that it does not necessarily encompass the entire flared portion of the tube. In other words, the use of the term "end" in this claim phrase confines the claimed portion to the part of the flared portion at the end face of tube 701. "generally uniform main portion " Claim 48 recites that a portion of the tube axially coincident with the sleeve includes "a generally uniform main portion." Appeal Br. 17 (Claims Appendix). The Specification does not identify in the Figures the claimed "generally uniform main portion." One having ordinary skill in the art would understand the claimed "generally uniform main portion" when read in light of the claim language refers to the portion of the tube axially 6 Appeal 2017-011310 Application 12/549,606 coincident3 with the sleeve having a generally uniform feature. Such an interpretation encompasses, for example, the portion of the tube axially coincident with the sleeve having a generally uniform outer diameter. "radially-inwardly compressed grip portion " Claim 48 recites that a portion of the tube axially coincident with the sleeve includes "a radially-inwardly compressed grip portion axially between and abutting the main portion and the extruded bulbous portion." Appeal Br. 17 (Claims Appendix). The Specification does not identify in the Figures the claimed "radially-inwardly compressed grip portion." Based on the language in the claim that identifies this grip portion as abutting the extruded bulbous portion, we look to the Specification to discern the location of the extruded bulbous portion. The Specification describes that in the final position shown in Figure 12, "metal from the tube has been extruded into the cavity 780 and space 780A filling same." Spec. ,r 118. Based on this disclosure, one having ordinary skill in the art would understand the extruded bulbous portion refers to the tube material marked with reference numeral 715B in Figure 12 that fills cavity 780. See Appeal Br. 5 (identifying reference numeral 715 as the extruded bulbous portion). One having ordinary skill in the art can also see that Figure 12 shows a portion of tube 701 directly above the extruded bulbous portion that is compressed to have a slightly narrower outer diameter than the tube material further above the compressed region. One having ordinary skill in the art would understand the claimed "radially-inwardly compressed grip portion" when read in light of the claim language and the Specification refers to the 3 We interpret "axially coincident" to mean the portion of the tube surrounded by the sleeve. 7 Appeal 2017-011310 Application 12/549,606 portion of the tube axially coincident with the sleeve having a narrower outer diameter than the main portion such that this portion of tube material is compressed in the radial dimension. "extruded bulbous portion" Claim 48 recites, "wherein said side [ of generally cylindrical sleeve] proximal the flared end portion of the tube includes an inner annular concavity and a sharp annular biting portion radially engaging and radially deforming said thick-walled tube to form an extruded bulbous portion protruding into the annular concavity." Appeal Br. 16 (Claims Appendix). With regard to the formation of this extruded bulbous portion, Appellants' Specification describes that the invention "deforms ( extrudes[ 4J) the tubing material into the desired shape." Spec. ,r 33. With reference to Figure 10, the Specification discloses that "the annular sharp biting edge 749A engag[es] the tube 701 forming an annular cut 712 beginning to form in the exterior surface 701D of the thick-walled tubing and which extrudes metal of the tube into cavity 780 occupying space 780A." Id. ,r 116; see also id. (disclosing that the die forces the annular biting edge 749A of the sleeve deeper into the tube 701 "deforming ( extruding) the tube material"). In other words, as sleeve 704 is moved relative to tube 701, part of the material of tube 701 is shaped by forcing tube 701 through the opening of sleeve 704 that includes biting edge 749A. One having ordinary skill in the art would understand "extruded bulbous portion" in light of the claim language and the 4 The ordinary meaning of "extrude" includes "to force, press, or push out" and "to shape ( a substance, such as metal or plastic) by forcing through a die." https://www.merriam-webster.com/dictionary/extrude, last accessed July 18, 2018. 8 Appeal 2017-011310 Application 12/549,606 Specification refers to a portion of the tube material that is shaped by engagement of the biting portion of the sleeve into the thick-walled tube to deform the material into the annular concavity of the sleeve. Anticipation Based on this interpretation of the pertinent language of claim 48, we now examine the Examiner's determination of anticipation by Parker. To facilitate discussion, an annotated copy of Figure 3 of Parker is reproduced below (with the tube highlighted in purple and the claimed portions of the tube identified with annotations). PL9.J> .. 1i3~~~ ~- ... , . .:q.~~'7'77,U\.'\.\~ :z&.....v,.,~~~~ e.J~~~ID :J.9 Z.IJ & Figure 3 of Parker shows an enlarged fragmentary sectional view of a tube coupling in the completely clamped, final assembly condition. Parker 1, second col., 11. 4-14. Parker discloses an object of his invention is to provide means for imposing highly concentrated forces onto the flared end portion of a tube "to cause the metal of the tube to be deformed." Parker 1, first col., 11. 16-21. 9 Appeal 2017-011310 Application 12/549,606 Parker provides clamp sleeve 15, which surrounds tube 9, and discloses that annular rib 21 projects inwardly from clamping surface 18 of sleeve 15. Id. at 2, first col., 11. 1-2, 20-21. Parker describes that when sleeve 15 is moved toward a tight clamping position, the metal of flared end 8 of tube 9 "is deformed" by annular rib 21. Id. at 2, first col., 11. 30-45 ( citing Fig. 3). As shown in Figure 3 of Parker, the deformed material of tube 9 fills in the annular cavity in sleeve 15 disposed directly below annular rib 21. As such, the clamping action described in Parker forms this deformed material, which corresponds to an "extruded bulbous portion" as that term is interpreted above. Accordingly, we do not find error in the Examiner's finding that Parker discloses an extruded bulbous portion as recited in claim 48. As to the remaining features of claim 48, the Examiner pointed to Figures 1 through 4 of Parker for disclosure of the claimed compression and flared tube fitting assembly, including, inter alia, the claimed tube. Ans. 2- 3. As identified above, the portion of tube 9 axially coincident with sleeve 15 that has a generally uniform outer diameter is identified as the claimed "generally uniform main portion." The portion of tube 9 axially coincident with sleeve 15 that is compressed in the radial dimension to have a narrower outer diameter than the main portion is identified as the claimed "radially- inwardly compressed grip portion." The portion of tube 9 that fills in a corresponding recess in sleeve 15 is identified as the claimed "extruded bulbous portion." Finally, the portion of tube 9 in the flared section at the end face of the tube is identified as the "flared end portion." Based on this reading of the claim language onto the depiction in Figure 3 of Parker, we find that a preponderance of the evidence supports a finding of anticipation of claim 48. Specifically, the portion of the tube 10 Appeal 2017-011310 Application 12/549,606 identified above as the radially-inwardly compressed grip portion abuts both the main portion and the extruded bulbous portion of the tube and lies axially between these two abutting portions. Further, the portion identified above as the extruded bulbous portion abuts both the compressed grip portion and the radially outwardly flared end portion and lies axially between these two portions. As to claim 53, the identified extruded bulbous portion is a single bulbous portion. We recognize that the annotations in the figure reproduced above augment the findings of the Examiner. See Ans. 4 (Examiner's annotations of Parker's Figure 1). As such, we designate our affirmance of this ground as a new ground of rejection to provide Appellants with a full and fair opportunity to respond to the rejection. Second Ground of Rejection: Unpatentability of claims 11, 12, 42-45, and 47 over Parker The Examiner found that Parker discloses the invention of independent claim 42 "except for 300 series stainless steel and a coating." Ans. 5. The Examiner determined that it would have been obvious to one having ordinary skill in the art at the time of the invention to use XADC- ArmoloyÂ® coating as a matter of obvious design choice because "this material is known for its durability, lubricity, adhesion and resistance to abrasion." Id. The Examiner's determination was based on the finding that Appellants' Specification "conced[es] that [it] is well-known in the art to utilize XADC-ArmoloyÂ® for couplings of the instant invention." Id. at 9. Appellants' Specification describes that XADC-ArmoloyÂ® is a trademark of Armoloy Corporation. Spec. ,r 36. The Specification describes the use of XADC-ArmoloyÂ® coating on the sleeve of the invention to create a hardened surface while maintaining sufficient lubricity in the section of the 11 Appeal 2017-011310 Application 12/549,606 Specification that provides a summary of the present invention. Id. We agree with Appellants that the paragraph in the Specification does not concede that it was well-known to use the XADC-ArmoloyÂ® coating for the claimed couplings. Reply Brief (September 5, 2017) (hereinafter "Reply Br.") at 4. At most, the Specification supports a finding that the XADC- ArmoloyÂ® coating existed prior to Appellants' invention. The Examiner, however, failed to provide adequate reasoning to explain why one having ordinary skill in the art would have been led to apply such a commercially available coating to the sleeve of Parker's coupling. See id. (Appellants arguing that Parker does not disclose a coating on the sleeve or a need for a coating); see also Appeal Br. 10-11 ( arguing same). Thus, the Examiner does not support the determination of obviousness with adequately articulated reasoning based on rational underpinnings. For this reason, we do not sustain the rejection of independent claim 42, and its dependent claims 11, 12, 43--45, and 47, as unpatentable over Parker. DECISION The decision of the Examiner rejecting claims 11, 12, 42-45, and 47 is reversed. The decision of the Examiner rejecting claims 48 and 53 is affirmed. We designate our affirmance of the adverse decision as to claims 48 and 53 as a new ground of rejection, pursuant to our authority under 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: 12 Appeal 2017-011310 Application 12/549,606 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure Â§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§ 4I.50(b) 13