Ex Parte Gibb et al

Patent Trial and Appeal Board

Nov 15, 2012

11867146 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN GIBB, DAUGLAS R. DOLE, and MICHAEL V. PORTER
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Appeal 2010-010393
Application 11/867,146
Technology Center 3600
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Before EDWARD A. BROWN, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-18 as anticipated under 35 U.S.C. § 102(b) by Thau
(US 4,643,461, issued Feb. 17, 1987). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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THE INVENTION
Appellants’ invention is a seal for pipe couplings. Spec. 1, ll. 10-12.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. In combination, a sealing member and a coupling, said
coupling comprising:
a plurality of segments joined end to end, said
coupling for securing pipe elements together in end to end
relationship, said segments having arcuate surfaces facing
inwardly and engageable with outer surfaces of said pipe
elements, said segments having adjustably tightenable
connection members for drawing said segments together, each
of said segments having an annular channel positioned between
said arcuate surfaces, said sealing member being positioned
between said segments within said annular channels and
comprising:
a flexible, resilient ring having a ring inner surface
adapted to engage said outer surfaces of said pipe elements,
said ring inner surface having a diameter sized to receive said
pipe elements upon insertion of said pipe elements between said
segments, said ring having a ring outer surface having a
diameter sized to support said segments in spaced apart relation
sufficient to allow said pipe elements to be inserted
therebetween, each of said annular channels having an inner
diameter greater than said diameter of said ring outer surface;
and
wherein upon tightening of said connection members said
segments being movable toward one another compressing said
ring, said ring being deformable upon motion of said segments
to permit engagement of said arcuate surfaces with said pipe
elements.
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ANALYSIS
Claims 1-14
The Examiner finds that Thau discloses each and every element of
claim 1.1 Ans. 3-4. In particular, the Examiner found that the Thau
coupling segment annular channels have an inner diameter greater than the
diameter of the ring outer surface. Ans. 4. The Examiner reasoned that if
Thau was configured with each of the annular channels having an inner
diameter not greater than the diameter of the ring outer surface, Thau would
not function properly because the seal would not fit inside of the channels.
Ans. 10-11. Therefore, in order for Thau and the instant invention to
function properly, inherently, each of the annular channels must have an
inner diameter greater than the diameter of the ring outer surface. Id. The
Examiner also found Thau discloses the ring outer surface having a diameter
sized to support the segments in spaced apart relation sufficient to allow pipe
elements to be inserted. Ans. 9-10 (citing col. 4, ll. 36-60; col. 2, ll. 52-63).
Appellants argue that Thau fails to show or describe a combination of
coupling segments and a sealing element where the segments are supported
on an outer surface of the seal in spaced apart relation. Appl. Br. 6.
Appellants further argue that Thau fails to disclose annular channels in the
coupling segments that have an inner diameter greater than the outer
diameter of the ring. App. Br. 7. Appellants further argue that Figure 4
discloses that the surface of the annular channel of segment 52 departs from

1Appellants argue claims 1-14 as a group. See App. Br. 5. We select claim
1 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 2-14 stand or fall with claim 1.

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the outer surface of the sealing member 32 as one proceeds from the 12
o’clock to the 3 and 9 positions and that there is no analogous illustration in
Thau. App. Br. 8.
Appellants also fault the Examiner for relying on a drawing from
Thau that shows only a cross-sectional view of a fully assembled pipe
coupling, not a longitudinal section as in Appellants’ Figure 4. Id.
Appellants appear to contend that their claims should be considered in the
context of a pre-assembly state. Reply Br. 2-3. Appellants criticize the
Examiner for allegedly ignoring “an important part of the recitation of claim
1,” further stating:
Claim 1 does not merely recite segments supported on a ring in
spaced relation, it recites segments “supported in spaced apart
relation sufficient to allow said pipe elements to be inserted
therebetween.”
Reply Br. 2. However, the purportedly “recited” language in Appellants’
Reply Brief does not actually appear in claim 1 in the precise language that
Appellants set off in quotation marks.2 Appellants’ argument is not
commensurate with the scope of the actual claim language and,
consequently, is not persuasive.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
During examination of a patent application, pending claims are given their

2 Claim 1 actually states, in pertinent part: “said ring having a ring
outer surface having a diameter sized to support said segments in spaced
apart relation sufficient to allow said pipe elements to be inserted
therebetween . . .” App.Br., Clms. App’x. (emphasis added).
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broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Therefore,
we look to the specification to see if it provides a definition for claim terms,
but otherwise apply a broad interpretation.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The second step of an
anticipation analysis involves comparing the claims to prior art.
Montgomery, supra. A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation arranged as in the
claim. Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008).
To decide this case, we need only interpret the following limitation:
“said ring having a ring outer surface having a diameter sized to support said
segments in spaced apart relation sufficient to allow said pipe elements to be
inserted therebetween.” The Examiner interprets claim 1 as not limited to a
device that exists in a preassembly state. Ans. 11. Moreover, the Examiner
interprets claim 1 as not limited to channels of variable diameter that
transition between a preassembled and an assembled state. Id. According to
the Examiner’s construction, “the claim does not recite a coupling and
sealing element wherein segments comprising the coupling are supported on
an outer surface of the seal in spaced apart relation.” Ans. 10. Appellants
argue that the claim is a clear statement of the invention as shown in Figure
4 of the application and described on page 9, lines 4-30, of the Specification.
Reply Br. 3. However, the drawing and the portion of the Specification
referenced by Appellants describes the device in a pre-assembled state.
We agree with the Examiner that claim 1 is not limited to a coupling
that is maintained in a preassembly configuration. The Examiner correctly
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found that the respective inner and outer diameter limitations of the seal and
coupling segments are inherently present in Thau as Figure 3 depicts a
completed coupling assembly and Thau could not function properly unless
the seal fit inside the channels and otherwise allowed pipe elements to be
inserted. See Ans. 11-12. Moreover, Thau refers to the coupling segments
being “tightened down.” Col 3, l. 31. The segments necessarily needed to
be “spaced apart” before they could be “tightened down.”
In order to adopt Appellants’ construction, we would have to import
limitations regarding the preassembly state from Figure 4 and page 9 of the
Specification into the claim, as suggested by Appellants at page 3 of their
Reply Brief, which is something that our supervising court counsels against.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed.
Cir. 2003)( it is improper to read a limitation from the specification into the
claims). Thau anticipates claim 1. Accordingly, we sustain the Examiner’s
rejection of claims 1-14 under 35 U.S.C. § 102(b).
Claims 15-18
In challenging the rejection of claim 15, Appellants raise the same
arguments previously asserted as to claim 1.3 App. Br. 8; Reply Br. 7. The
only apparent new argument that Appellants raise that is unique to claim 15
centers on the limitation: “each of said annular channels having an inner
diameter greater than said diameter of said ring outer surface.” Id. The
Examiner finds that this limitation is met by Thau. Ans. 8. In particular, the
Examiner finds that this feature is inherently present as Thau could not

3 Appellants argue the rejection of claims 15-18 as a group. See App. Br. 8.
We select independent claim 15 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 16-18 stand or fall with claim 15.
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function properly unless the channels of the coupling segments had a
diameter greater than the diameter of the ring outer surface. Ans. 15.
Appellants argue that their invention is an improvement over the prior
art because it can be used without first disassembling and then re-assembling
it. App. Br. 9. This advantage is touted in Appellants’ Specification.
Use of seals according to the invention thus provides significant
advantage in reducing the labor required for assembly of the
pipe joint as the coupling does not require total or even partial
disassembly prior to the installation.
Spec. 9, ll 16-21; see also Spec. 12, ll. 10-16. As with claim 1, Appellants
attempt to limit the scope of their claims by importing limitations from the
Specification. The Specification discloses an embodiment where “[s]ealing
member 32 . . . has sufficient stiffness to maintain the coupling segments in
spaced apart relation through shipping and handling during installation . . .”
Spec. 9, ll. 21-24. Appellants would have us import this limitation into the
claims. Reply Br. 3. Once again, however, we are not inclined to import a
limitation from the Specification. See Markem-Imaje Corp. v. Zipher Ltd.,
657 F.3d 1293, 1300-01 (Fed. Cir. 2011) (even if a device will only operate
if certain elements are included, that is not grounds to incorporate those
elements into the construction of the claims). In sum, Appellants’ claims are
not limited to embodiments where the sealing member is sufficiently stiff to
maintain the coupling segments in spaced apart relation prior to assembly.
As with claim 1, Appellants’ effort to distinguish claim 15 from Thau
is constrained to arguing their invention in the pre-assembly state.
Appellants otherwise make no persuasive argument and offer no evidence
that their invention, in its assembled state, is distinguishable from the prior
art.
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Appellants’ arguments for claim 15 fail for essentially the same
reasons as with claim 1. Accordingly, we sustain the Examiner’s rejection
of claims 15-18.
DECISION
The decision of the Examiner to reject claims 1-18 is affirmed.
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

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