Ex Parte Henry

Patent Trial and Appeal Board

Apr 28, 2016

12561789 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/561,789 0911712009
23859 7590 05/02/2016
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
FIRST NAMED INVENTOR
Vance W. Henry
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.
22150.0140Ul 2968
EXAMINER
DRIGGERS, GWENDOLYN YVONNE
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VANCE W. HENRY
Appeal2014-002608
Application 12/561,789
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 13-32. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-002608
Application 12/561,789
THE INVENTION
Appellant's invention relates to couplings for joining pipe elements.
Spec. i-f 1. Claim 13, reproduced below, is illustrative of the subject matter
on appeal.
13. A coupling for joining pipe elements in end
to end relation, said coupling comprising:
a plurality of segments attached to one another
in end to end relation surrounding a central space,
each of said segments having a back wall and a
pair of side walls attached thereto in spaced
relation defining a channel, each of said back walls
having a back wall surface facing said central
space and extending lengthwise along each of said
segments, each of said segments having a pair of
arcuate keys positioned in spaced relation on
opposite sides of said channel, each of said keys
extending lengthwise along said segments and
projecting inwardly toward said central space;
a seal positioned within said central space and
received within said channels, said seal comprising
a ring formed of flexible, resilient material, said
ring having an outwardly facing circumferential
surface;
at least one projection attached to said
outwardly facing circumferential surface and
projecting outwardly therefrom, said at least one
projection comprising a tube having a sidewall
surrounding a bore, said tube having a longitudinal
axis oriented transversely to a plane containing
said ring;
said at least one projection engaging said back
wall surface on one of said segments and
supporting said segments in spaced apart relation
to one another sufficient to insert said pipe
elements into said central space.
2
Appeal2014-002608
Application 12/561,789
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Nakamura
Kaimer
Burian
Gibb
us 3,664,691
US 2006/0175829 Al
US 7,165,789 B2
US 7,401,819 B2
May 23, 1972
Aug 10, 2006
Jan.23,2007
July 22, 2008
The following rejections are before us for review:
1. Claims 13-15, 17-26, and 28-30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nakamura and Kaimer.
2. Claims 16 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakamura, Kaimer, and Burian.
3. Claims 27 and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakamura, Kaimer, and Gibb.
Claim 13
OPINION
Unpatentability of Claims 13-15, 17-26, and 28-30
over Nakamura and Kaimer
The Examiner finds that Nakamura discloses all of the limitations of
claim 1, except for an outwardly extending tube shaped projection. Final
Action 2-3. The Examiner relies on Kaimer as disclosing a bore within a
seal projection that purportedly satisfies the tube shaped projection
limitation. Id. at 3. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Nakamura with a bore in a seal projection. Id. at 4.
According to the Examiner, a person of ordinary skill in the art would have
done this to allow the gasket to be compressed more easily. Id.
3
Appeal2014-002608
Application 12/561,789
Appellant traverses the rejection by first arguing that Kaimer does not
teach including a bore in a seal projection as claimed. Appeal Br. 6.
Appellant argues that Kaimer' s bore is in the body of the seal rather than in a
projection. Id. at 7. Appellant contends that the Examiner's proposed
modification of Nakamura by Kaimer would render Nakamura
unsatisfactory for its intended purpose. Id.
Appellant further contends that Kaimer discloses a seal that leaks
when in an uncompressed state and only stops leaking when it is properly
compressed. Id. at 8. Appellant contends that Kaimer' s seal is so dissimilar
to that of Nakamura that a person of ordinary skill in the art would consider
them incompatible and that a combination of the two would yield no
discemable advantage. Id. Appellant supports this argument with an
observation that Nakamura's projection 12 is designed to fit within recess 13
to facilitate alignment of seal 5 with segment 1. Id. According to Appellant,
Nakamura's projection 12 is not designed to compress during joining of pipe
elements. 1 Id.
In response, the Examiner states that Kaimer's element 10 projects in
two directions, namely, both axially and radially. Ans. 10. The Examiner
construes the claim term "projection" broadly so as to encompass the
entirety of Kaimer's toroidal "thickening," which extends outwardly in both
the axial and radial directions. Id. at 10. Relying on the depiction of
Figure 6, the Examiner finds that Kaimer's bore 11 is situated within the
1 The Specification states: "The term 'pipe element' is used herein to
describe any pipe-like item or component having a pipe like form. Pipe
elements include pipe stock, pipe fittings such as elbows, caps and tees, as
well as fluid control components such as valves, reducers, strainers,
restrictors, pressure regulators and the like." Spec. ,-r 2.
4
Appeal2014-002608
Application 12/561,789
axial projection of thickening 10 of the seal. Id. 10-11. The Examiner
further explains that Nakamura is relied on as disclosing a projection that
extends from an outwardly facing circumferential surface. Id. at 11. The
Examiner explains that Kaimer is not relied for disclosing the configuration
already disclosed in Nakamura, but is relied on to show that it is old and
well known to have a bore located within a projection. Id.
Continuing further, the Examiner explains that, even if Figure 7 of
Kaimer is relied on as disclosing an outwardly facing circumferential
surface, the claim language could be satisfied by modifying Kaimer to move
bore 10 radially outward to the portion of the seal that projects beyond the
circumference of the remainder of the seal. Ans. 11. The Examiner states
that if Kaimer' s bore is shifted radially outward, it would still function
properly. Id.
The Examiner's claim construction, factual analysis, and legal
conclusion of unpatentability contain reversible error. We begin with the
Examiner's claim construction. During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation
standard, claim terms are given their ordinary and customary meaning as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). We have been repeatedly admonished by the Federal Circuit that
a claim construction during examination cannot be so broad as to be
unreasonable.
5
Appeal2014-002608
Application 12/561,789
"The protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally
incorrect interpretation." In re Skvorecz, 580 F.3d 1262, 1267
(Fed. Cir. 2009); see also In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010) ("The broadest-construction rubric
coupled with the term 'comprising' does not give the PTO an
unfettered license to interpret claims to embrace anything
remotely related to the claimed invention."). Rather, "claims
should always be read in light of the specification and teachings
in the underlying patent." Suitco, 603 F.3d at 1260 .... Even
under the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Suitco, 603 F.3d
at 1260.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015);
see also In re Man Machine Interface Tech. LLC, - F .3d -, 2016 WL
1567181, *4 (Fed. Cir. April 19, 2016) (Board's broad construction deemed
unreasonable in view of the specification's clear teaching).
In the instant case, Appellant's Specification explains that the
"projection projects outwardly from the surface and comprises a tube
surrounding a bore." Spec. i-f 7. A person of ordinary skill in the art would
understand that the claimed "projection" begins at the outer circumferential
surface of the seal and extends or "projects" outwardly from that point. The
"projection" (or the portion of the seal that "projects") does not include the
seal body that is disposed inside of the circumferential outer surface. Indeed
the circumferential outer surface is the departure point from which the
6
Appeal2014-002608
Application 12/561,789
projection "projects." The Examiner's contrary construction and the
patentability analysis based thereon constitutes reversible error.
Next, the Examiner's factual analysis that relies on Figure 6 of
Kaimer is erroneous. Figure 6 depicts projection of elements 10 and 11 in
the axial direction, whereas the language at issue in claim 13 requires that
the projection projects outwardly from the outwardly facing circumferential
surface. Claims App. The claim requires projection in the radial, not the
axial, direction relative to the outer circumference of the seal.
The Examiner's next error centers on a proposed modification of
Kaimer so that the bore is relocated radially outward from the position
depicted in Figure 7. Ans. 11 ("If the bore were shifted radially outward
slightly, the bore would still function as an indicator of whether the coupling
is properly tightened or not, as intended by Kaimer"). This finding by the
Examiner is speculative at best. Kaimer explains that sealing element 5 is in
the form of a sealing cord that has a "round cross-section." Kaimer i-f 38. As
shown in Figure 7, Kaimer's bore 11 runs in an axial direction so as to
intersect the diameter of thickening 10 of the seal. Apart from speculation,
the Examiner provides neither evidence nor persuasive technical reasoning
that tends to establish that Kaimer' s bore would function effectively if
relocated radially outward from the diameter of the circular cross-section of
the seal. A person of ordinary skill in the art would have known that the
axial length of the bore would become increasing shorter, and the structure
surrounding the bore increasingly thinner, as the bore migrates from the
diameter in the middle of the ring cross-section towards its outer
circumference. The Examiner's factual findings supporting the conclusion
of obviousness are not supported by a preponderance of the evidence.
7
Appeal2014-002608
Application 12/561,789
Finally, obviousness is ultimately a conclusion of law premised on
underlying findings of fact, including the scope and content of the prior art,
the differences between the claimed invention and the prior art, and the level
of ordinary skill in the pertinent art. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 427 (2007). However, "[t]he presence or absence of a motivation to
combine references in an obviousness determination is a pure question of
fact." Alza Corp. v. Mylan Labs., 464 F.3d 1286, 1289 (Fed. Cir. 2006). In
the instant case, the Examiner errs in concluding that a person of ordinary
skill in the art would have combined Nakamura and Kaimer to achieve the
claimed invention.
It is well settled that a patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art. See KSR, 550 U.S. at 419. In
performing an obviousness analysis, it can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does. Id. While
it may be true that Nakamura discloses a seal with a projection and Kaimer
discloses a seal with projections and a bore, such alone does not inexorably
lead one to the conclusion to locate the bore in the projection in the manner
disclosed and claimed by Appellant. Nakamura's projection appears to be
for alignment purposes only and otherwise unrelated to seal compression.
See Nakamura, Fig. 6. Kaimer's bore is not located in or near a projection
from an outwardly facing circumferential surface. See Kaimer, Fig. 7.
Apart from engaging in impermissible hindsight, we see no reason why a
person of ordinary skill in the art would have combined or modified the prior
art "in the way the claimed new invention does." KSR, 550 U.S. at 418
8
Appeal2014-002608
Application 12/561,789
(emphasis added).2 The Examiner's finding to the contrary is not supported
by a preponderance of the evidence.
For the reasons set forth above, we do not sustain the Examiner's
unpatentability rejection of claim 13.
Claims 14, 15, 17-26, and 28-30
Claims 14, 15, 17-26, and 28-30 depend, directly or indirectly, from
claim 13. Claims App. The rejection of these claims suffers from the same
infirmities that we have identified above with respect to claim 13. See In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious). For the same reasons articulated above with respect to
claim 13, we do not sustain the anticipation rejection of claims 14, 15, 17-
26, and 28-30.
Unpatentability of Claims 16 and 31
over _l""lakamura, _L~aimer, and Burian
Claims 16 and 31 each depend indirectly from claim 13 and add a
limitation directed to a ridge positioned within at least one pocket and
projecting inwardly toward a central space. Claims App. The Examiner
relies on Burian as disclosing this limitation. Final Action 7-8. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to modify the combination
of Nakamura and Kaimer to include a ridge as taught by Burian. Id. at 8.
2 See also Zoltek Corp. v. United States, 815 F.3d 1302, 1313 (Fed. Cir.
2016) (cautioning against the insidious effect of hindsight where the
inventor's teaching is used against its teacher).
9
Appeal2014-002608
Application 12/561,789
According to the Examiner, a person of ordinary skill in the art would have
done this to position and retain the seal/projection. Id.
In traversing the rejection, Appellant relies on the same arguments
discussed above in connection with claim 13 and, in addition, argues that
Burian fails to cure the deficiencies noted with respect to the combination of
Nakamura and Kaimer. Appeal Br. 11-12.
In response, the Examiner fails to bring to our attention any teaching
from Burian that cures the deficiencies we have noted in connection with the
Examiner's rejection of claim 13. Thus, the rejection of claims 16 and 31
suffers from the same infirmities that we have identified above in connection
with claim 13. For this reason, we do not sustain the unpatentability
rejection of claims 16 and 31.
Claim 27
Unpatentability of Claims 27 and 32
over Nakamura, Kaimer, and Gibb
Claim 27 depends indirectly from claim 13 and adds a limitation
directed to a tongue positioned between first and second side walls and
extending circumferentially around the ring and projecting radially inwardly.
Claims App. The Examiner relies on Gibb as disclosing this limitation.
Final Action 8-9. The Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time the invention was made to
modify the combination of Nakamura and Kaimer to include a tongue as
taught by Gibb. Id. at 9. According to the Examiner, a person of ordinary
skill in the art would have done this to ensure proper positioning of the seal
and proper engagement of the pipe elements. Id.
10
Appeal2014-002608
Application 12/561,789
In traversing the rejection, Appellant relies on the same arguments
discussed above in connection with claim 13 and, in addition, argues that
Gibb fails to cure the deficiencies noted with respect to the combination of
Nakamura and Kaimer. Appeal Br. 12-13.
In response, the Examiner fails to bring to our attention any teaching
from Gibb that cures the deficiencies that we have noted in connection with
the Examiner's rejection of claim 13. Thus, the rejection of claim 27 suffers
from the same infirmities that we have identified above in connection with
claim 13. For this reason, we do not sustain the unpatentability rejection of
claim 27.
Claim 32
Claim 32 depends indirectly from claim 13 and adds a limitation
directed to the structure and function of the arcuate key elements. Claims
App. The Examiner relies on Gibb as disclosing this limitation. Final
Action 8-9. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to
modify the combination of Nakamura and Kaimer to include a tongue as
taught by Gibb. Id. at 9. According to the Examiner, a person of ordinary
skill in the art would have done this to ensure proper positioning of the seal
and proper engagement of the pipe elements. Id.
In traversing the rejection, Appellant relies on the same arguments
discussed above in connection with claim 13 and, in addition, argues that
Gibb fails to cure the deficiencies noted with respect to the combination of
Nakamura and Kaimer. Appeal Br. 13-14.
In response, the Examiner fails to bring to our attention any teaching
from Gibb that cures the deficiencies that we have noted in connection with
11
Appeal2014-002608
Application 12/561,789
the Examiner's rejection of claim 13. Thus, the rejection of claim 32 suffers
from the same infirmities that we have identified above in connection with
claim 13. For this reason, we do not sustain the unpatentability rejection of
claim 32.
DECISION
The decision of the Examiner to reject claims 13-32 is REVERSED.
REVERSED
12