Ex Parte Gillanders et al

Patent Trial and Appeal BoardJun 9, 2017

95001717 (P.T.A.B. Jun. 9, 2017)

MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 95/001,717 09/13/2011 7,858,149 EXAMINER LAW OFFICES OF BRIAN S. STEINBERGER P.A. 101 BREVARD AVENUE COCOA, FL 32922 Till, Terrence ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 06/12/2017 PAPER 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ROY A. TERRY Requester and Appellant v. PIPE RESTORATION TECHNOLOGIES, LLC Patent Owner and Respondent ____________ Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 Technology Center 3900 ____________ Before HUBERT C. LORIN, RICHARD M. LEBOVITZ, and RAE LYNN P. GUEST Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This is a Request for Rehearing (“Req. Reh’g” filed Jul. 27, 2016) by Patent Owner of a Decision under 37 C.F.R. § 41.77(f) (“41.77f Dec.” mailed Jun. 27, 2016) in the above-identified inter partes reexamination of U.S. Pat. No. 7,858,149. Requester filed comments in opposition to Patent Owner’s Request for Rehearing (“Req’t. Comm.” filed Aug. 30, 2016). Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 2 The § 41.77f Decision reviewed the determination by the Examiner that new grounds of rejection 1–4 (41.77f Dec. 2) were overcome by amendments made to the claims (id. at 2–3). The 41.77f Decision reviewed each of the claim amendments and determined that they did not overcome the new grounds of rejection. Id. at 11. The 41.77f decision was made final. Id. Patent Owner requests reconsideration of the final decision. We address Patent Owner’s arguments below. “adheres . . . in excess of approximately 400 PSI” Independent claim 1 is directed to a method of applying a barrier coating leak sealant to pipes. The claim comprises a step of applying an epoxy material to the interior walls of a building piping system so that “the barrier coating leak sealant adheres to the interior walls of the piping system in excess of approximately 400 PSI.” The 41.77f Decision found that a document from the standard of the American Water Works Association (“AWWA C210-97”) listed 400 PSI as a “minimum” for “adhesion.” 41.77f Dec. 6. Based on this reaching, the 41.77f Decision concluded: The evidence provided by Patent Owner thus indicates that adhering a sealant “at minimum” of 400 PSI was a known standard for pipe coatings prior to the filing date of the ’149 Patent. The disclosure of a “minimum” value is an express teaching that higher PSI values may be used, i.e., values greater than or in excess of 400 PSI. Id. Patent Owner contends that AWWA C210-97 does not cover “in excess of approximately 400 PSI” as recited in the claim. Req. Reh’g 11. Furthermore, Patent Owner argues that AWWA C210-97 is limited to abrasive blast cleaned Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 3 white metal surfaces. Id. at 12. Patent Owner states that its “epoxy adhesion ‘in excess of 400 psi’ achieved unexpected results relative to the prior art teachings in AWWA C210-97 using a ‘minimum’ 400 PSI on abrasive blast cleaned white metal surfaces.” Id. The AWWA C210-97 standard “sets minimum requirements for shop- and field-applied, liquid-epoxy exterior coatings and interior linings used in the potable-water-supply industry for steel water pipelines installed underground or underwater, under normal construction conditions.” AWWA C210-97 at 1. The standard states that “interior pipe surfaces shall be abrasive blast cleaned to achieve a white metal surface conforming.” Id. at 5 (Sec. 4.4.2.2). Neither claim 1 nor claim 9 is limited to “steel water pipelines” used to carry water “underground or underwater.” Thus, while the AWWA C210-97 standard may require a specific degree of cleaning, the claims are not limited to the type of pipeline, and location thereof, covered by the standard. The AWWA C210-97 standard is cited for its teaching of a minimum pressure at which an epoxy must adhere to the interior surface of a pipe. The rejection relied on Naf for its teaching of the claimed method of applying an epoxy sealant to pipe. Decision on Appeal (mailed March 18, 2014) 4. Naf describes applying an epoxy to pipe surfaces after cleaning the pipes with abrasive. Naf Abstract; col. 2, ll. 60–64 (teaching internal cleaning with abrasive substances). Naf does not disclose abrasive blast cleaned white metal surfaces as in AWWA C210-97. Naf also does not disclose a pressure at which the epoxy must adhere. For this reason, AWWA C210-97 was cited. AWWA C210-97 discloses 400 PSI as a “minimum” for epoxy adherence. AWWA C210-97 at 4 (Table 1). Patent Owner has not introduced evidence that the 400 PSI value is the only adherence Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 4 value contemplated in the standard, particularly when 400 PSI is characterized as “minimum” indicating that values in excess of this amount would meet the AWWA C20-97 standard. Patent Owner has not explained why requiring adherence at higher pressures would contravene and/or compromise the standard the integrity of the epoxy coating. Claims 1 and 9 do not require any degrees of abrasive coating. Thus, the teaching of abrasive cleaned white surfaces in AWWA C210-97 is covered by the claims. Even if it were not, Patent Owner has not provided evidence that an abrasive blast cleaned white metal surface is necessary to achieve an adherence 400 PSI or more, e.g., when applied to Naf’s method which was cited for its teaching of the claimed method. It is reasonable that a skilled artisan would have relied on the 400 PSI minimum standard of AWWA C210-97 in Naf’s method since it is an industry recognized value for epoxy adherence to a pipe. Patent Owner’s additional statement about “unexpected results” is not supported by objective evidence. An applicant cannot prove unexpected results with attorney argument and bare statements without objective evidentiary support. See In re Lindner, 59 C.C.P.A. 920, 457 F.2d 506, 508 (CCPA 1972); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997) (“attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness”); In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements ... [do] not suffice.”) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 5 Streaks, discolorations, rust, old coatings on no more than 33% of surface Dependent claims 29 and 44 recite “wherein the streaks, and the discolorations caused by the stains of mill scale, the rust and the old coatings remain on no more than approximately 33 percent of the surface of the interior walls.” Patent Owner contends that AWWA C210-97 requires white blasting which involves removal of all streaks and strain. Req. Reh’g 13. Patent Owner cites additional documents to support this argument. Id. Patent Owner states that there is “no teaching of adhesion values in excess of approximately 400 PSI . . . that allows streaks, discolorations, stains and coatings to remain on no more than approximately 33 percent of the surface of the interior pipe walls.” Id. at 14. First, Patent Owner has not properly interpreted the scope of claims 29 and 44. A pipe surface with no streaks, discolorations, stains and coatings meets the limitation of “on no more than approximately 33 percent of the surface of the interior walls” because 0% is no more than 33%. Thus, the claim reads on the degree of cleaning described in AWWA C210-97. Second, Patent Owner has not provided evidence that an adherence of more than 400 PSI could not be achieved with streaks, discolorations, stains and coatings remaining on no more than approximately 33 percent of the surface of the interior pipe walls. As indicated by Requester (Req’t Comm. 10), Toya expressly teaches that “rust remaining after sand-blasting . . . is acceptable as the prepared surface for epoxy resin lining.” Toya 1. The value recited in claims 29 and 44 corresponds to “Commercial” cleaning as described in the ABSS Visual Comparator Guide, namely, blast cleaning “until at least 66% of the surface is free of all visible residues with only staining on the remaining 33%.” Patent Owner has not Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 6 provided evidence that permitting streaks, discolorations, stains and coatings to remain on no more than approximately 33 percent of the surface of the interior pipe walls under “Commercial” cleaning would not allow epoxy adherence “in excess of approximately 400 PSI.” “sealant adheres to the interior walls of the pipes in excess of approximately 2,500 PSI” Dependent claims 30 and 45 were amended after the 2014 and 2015 PTAB (Patent Trial and Appeal Board) Decisions to further recite “providing the barrier coating leak sealant adheres to the interior walls of the piping system in excess of approximately 2,500 PSI.” 41.77f Dec. 5. The 41.77f Decision found that the 2,500 value does not comply with the written description requirement of 35 U.S.C. § 112, first paragraph, because such value was not disclosed in the specification of the ’149 Patent. Id. at 7. However, a rejection under § 112 was not made and deemed unnecessarily cumulative because the claimed limitation was found to be obvious under 35 U.S.C. § 103. Id. at 8. Thus, although, Patent Owner now requests withdrawal of the written description rejection in light of an amendment to the ’149 Patent specification, we have no reason to withdraw a rejection which was never made. The “in excess of approximately 2,500 PSI” limitation was found to be obvious because it overlaps with the teaching in AWWA C210-97 of a minimum adherence of 400 PSI, creating a presumption of obviousness. 41.77f Dec. 7–8. The Decision stated that In such situations, “the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 7 F.2d 1575, 1578 (Fed. Cir. 1990). Patent Owner has have not provided evidence that the claimed range is critical or achieves unexpected results. Consequently, we conclude that the Examiner's determination that the claims overcome the obviousness rejections is not supported by a preponderance of the evidence. Id. at 8. Patent Owner contends that the recited value of 2,500 psi “is not even contemplated” by AWWA C210-97 because it “is more than six times greater than the minimum adhesion value stated in AWWA C210-97.” Req. Reh’g 17. Furthermore, Patent Owner, once again, contends “unexpected results” were achieved. Id. Patent Owner has not provided objective evidence that that the value of 2,500 is so far outside the minimum of 400 psi that one of ordinary skill in the art would have found it non-obvious. An argument made by counsel in a brief does not substitute for evidence lacking in the record. Estee Lauder, Inc. v. L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Likewise, Patent Owner has not directed the Board to evidence of unexpected results, which cannot be established by attorney argument alone. Patent Owner has not shown that 2500 PSI is no more than an optimized adherence for minimally cleaned pipe surfaces achieved by routinely using the Naf method of applying the epoxy material. adherence in excess of 400 psi, or in excess of 2500 psi Patent Owner has not demonstrated that following the method of Naf, including using one of its disclosed epoxy resins (e.g., Naf at col. 6, l. 5) would not have resulted in adherence of the epoxy in excess of 400 psi, or in excess of 2500 psi. Patent Owner have not identified a limitation in the steps of claims 1 and 9 Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 8 that are responsible for the claimed amount of adherence nor has Patent Owner identified guidance in the ’149 patent on how to achieve such level of adherence. Patent Owner contend that it “was the first to apply” an epoxy material with the claimed viscosity that adheres at a strength in excess of 400 psi, and in excess of 2500 psi, “along with having streaks, discolorations, stains and coatings remain on interior surfaces of the pipes.” Req. Reh’g 18. The rejections are all based on obviousness, not on anticipation. Thus, even if Patent Owner was the first to accomplish what they say, the question is the obviousness of the method. As explained above and in the 41.77f Decision, preponderance of the evidence establishes the obviousness of the claimed methods. REHEARING DENIED Appeal 2016-003301 Reexamination Control 95/001,717 Patent 7,858,149 B2 9 Third Party Requester: KLEIN O’NEILL & SINGH, LLP 16755 VAN KARMAN AVENUE SUITE 275 IRVINE, CA 92606 Patent Owner: LAW OFFICES OF BRIAN S. STEINBERGER P.A. 101 BREVARD AVENUE COCOA, FL 32922 lb