Ex Parte Coakley

Patent Trials and Appeals Board

Apr 23, 2019

13796121 - (D) (P.T.A.B. Apr. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/796, 121 03/12/2013
109612 7590 04/25/2019
Klintworth & Rozenblat IP LLP and
Illinois Tool Works Inc.
19 North Green Street
Chicago, IL 60607
FIRST NAMED INVENTOR
Roy C. Coakley
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.
ITWOl-048-US 7112
EXAMINER
DONG,LIANG
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
04/25/2019 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):
docketing@kandrip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY C. COAKLEY
Appeal2018-000039
Application 13/796, 121 1
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 2--4, 6-11, 21-28, and 30-34. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention relates "to pipe machining
apparatuses for machining large diameter pipes." Spec.~ 2. Claim 6 is the
1 Appellant identifies Illinois Tool Works Inc. as the real party in interest.
Appeal Br. 1.
Appeal2018-000039
Application 13/796, 121
sole independent claim on appeal. Below, we reproduce claim 6 as
illustrative of the appealed claims.
6. A pipe machining apparatus comprising:
a first section including a first portion of a frame and a first
portion of a tool carrier;
a second section including a second portion of the frame
and a second portion of the tool carrier, wherein the first section
and the second section are adapted to be coupled together around
a pipe, and, with the first and second sections coupled together,
the frame is fixed relative to the pipe and the tool carrier is
adapted to move relative to the frame and the pipe; and
a coupling member adapted to couple the first section and
the second section together, the coupling member including
a first housing member coupled to the first section
and including a projection having an arcuate surface,
a second housing member coupled to the second
section and defining a receptacle adapted to receive the
projection of the first housing member, wherein the second
housing member includes a curved surface at least
partially defining the receptacle,
an arm movably coupled to the first housing
member, and
an engagement member coupled to the arm,
wherein the arm is adapted to move between a
coupled condition, in which the engagement member
engages the second housing member, and an uncoupled
condition, in which the engagement member does not
engage the second housing member;
wherein, during assembly of the first and second sections,
arcuate surfaces of the projection and the receptacle are adapted
to engage each other with the first and second sections
misaligned, allow the projection to insert into the receptacle with
the first and second sections misaligned and to move the first and
second sections into proper alignment for coupling together.
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Appeal2018-000039
Application 13/796, 121
REJECTIONS AND PRIOR ART2
The Examiner rejects the claims as follows:
I. Claims 2--4, 6-11, 21-23, 26-28, and 30-34 under
35 U.S.C. § 103 as obvious based on Hall et al.
(US 2010/0162860 Al, pub. July 1, 2010) (hereinafter "Hall")
and Dawson (US 2,635,270, iss. Apr. 21, 1953); and
II. Claims 6, 24, and 25 under 35 U.S.C. § 103 as obvious based
on Hall and Ikeda et al. (US 6,227,577 B 1, iss. May 8, 2001)
(hereinafter "Ikeda").
ANALYSIS
Reiection I
As set forth above, independent claim 6 recites, in relevant part, that
during assembly of the first and second sections, arcuate surfaces
of the projection and the receptacle are adapted to engage each
other with the first and second sections misaligned, allow the
projection to insert into the receptacle with the first and second
sections misalignedl] and to move the first and second sections
into proper alignment for coupling together.
Appeal Br., Claims App. (italics added). As an initial matter, because
Appellant and the Examiner disagree as to the proper interpretation of this
recitation (see, e.g., Reply Br. 6-7; see, e.g., Answer 3--4 ), we decide
whether we interpret the claim recitation "adapted to" narrowly, as akin to
specifically "configured to" or "designed to," or broadly, as merely "capable
of," providing the claimed objective. See Aspex Eyewear, Inc. v. Marchan
2 See Answer 2. We note that subsequent to the Final Office Action's
issuance, Appellant filed an Amendment canceling claims 12, 14--17,
and 29. Amendment (filed Feb. 13, 2017), 9.
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Appeal2018-000039
Application 13/796, 121
Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (The court indicated
that claim language "configured to" is construed more narrowly than
"capable of," and held that where claim language is construed consistent
with "configured to," the claim language requires that the structure must be
"designed or configured to accomplish the specified objective, not simply
that [it] can be made to serve that purpose.")
We look to Appellant's Specification to see how Appellant describes
assembly of the claimed first and second sections vis-a-vis the projection
and receptacle. See In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) (The
court looked to the application's written narrative to determine whether the
phrase "adapted to" should be broadly construed as "capable of' or narrowly
construed as "designed to."). Based on our review of Appellant's
Specification, we interpret claim 6' s recitation of "adapted to" as
"configured to" or "designed to," rather than merely "capable of." This is
because Appellant's Specification describes that the projection and
receptacle engage each other when the sections are misaligned, and "guide
the two sections ... into the ultimate proper alignment." Spec. ,r 3 7.
Restated, the Specification clearly describes the projection and receptacle as
designed or configured to accomplish the specific objective of engaging one
another when the first and second sections are misaligned, allowing the
projection to insert into the receptacle with the sections misaligned, and
guiding the first and section sections into alignment.
The Examiner rejects independent claim 6 as obvious based on Hall
and Dawson. We do not sustain the rejection, because the Examiner does
not support adequately that the proposed combination discloses a projection
and receptacle designed or configured to achieve the claimed result. The
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Appeal2018-000039
Application 13/796, 121
Examiner concludes that it would have been obvious to replace Hall's
projection and receptacle with Dawson's projection 52 and indentation 56.
See Final Action 6-9. The Examiner does not rely on any portion of
Dawson as describing the claimed engaging, inserting, and aligning, but
instead finds that using Dawson's projection and indentation would
"inherently provid[e] an alignment action." Answer 3--4. We disagree that
Dawson would necessarily provide such alignment. See In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency ... may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.").
We recognize that Dawson illustrates a projection and indentation
with cooperating arcuate surfaces, and that claim 6 recites that the projection
includes an arcuate surface and the receptacle includes a curved surface.
Dawson Fig. 2; Appeal Br., Claims App. (Claim 6). Nonetheless, despite
these similarities, the differences between Dawson's and Appellant's devices
support our conclusion that simply because Appellant's projection and
receptacle align the first and second sections does not necessarily mean that
Dawson's projection and indention provide such alignment. Cf Dawson
Fig. 2; Appellant's Figs. 5, 6, 8. For example, Appellant's projection and
receptacle are not complementary shapes extending from and formed within
flat surfaces, as are Dawson's projection and indentation. To us, it does not
appear that such complementary shapes would allow for the claimed
engaging one another when the first and second sections are misaligned,
allowing the projection to insert into the indentation with the sections
misaligned, and guiding the first and section sections into alignment.
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Appeal2018-000039
Application 13/796, 121
Thus, we do not sustain the Examiner's rejection of independent
claim 6. Further, we do not sustain the Examiner's obviousness rejection of
claims 2--4, 7-11, 21-23, 26-28, and 30-34 that depend from, and the
Examiner rejects with, independent claim 6.
Re;ection II
The Examiner rejects independent claim 6, and claims 25 and 26
depending therefrom, based on a combination of Hall and Ikeda. We do not
sustain this rejection for reasons similar to the reasons we do not sustain the
rejection of claim 6 based on Hall and Dawson. Specifically, the Examiner
does not support adequately that the proposed combination discloses a
projection and receptacle designed or configured to accomplish the specific
objective of engaging one another when the first and second sections are
misaligned, allowing the projection to insert into the receptacle with the
sections misaligned, and guiding the first and second sections into
alignment.
The Examiner does not rely on any portion of Ikeda as describing the
claimed engaging, inserting, and aligning, but instead finds that "due to the
nature of the round shape of projection and receptacle of Ikeda, the round
shape projection and receptacle are inherently capable of engaging each
other misaligned and then aligning." Answer 4--5. We disagree that
modifying Hall to include Ikeda' s convex joining part 121 (i.e., protrusion)
and concave joining part 122 (i.e., receptacle), as the Examiner proposes
(Final Action 16-19), would necessarily provide the claimed function
discussed above. Rather, the differences between Ikeda's and Appellant's
devices support our conclusion that simply because Appellant's projection
and receptacle align the first and second sections does not necessarily mean
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Appeal2018-000039
Application 13/796, 121
that Ikeda' s projection and receptacle provide such alignment. Cf Ikeda
Fig. 9; Appellant's Figs. 5, 6, 8.
DECISION
We REVERSE the Examiner's rejections of claims 2--4, 6-11, 21-28,
and 30-34.
REVERSED
7