Ex Parte Kuhmann et al

Patent Trial and Appeal Board

May 11, 2018

13640586 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/640,586 10/11/2012 Karl Kuhmann
22850 7590 05/15/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
404421 US99PCT 6123
EXAMINER
NICHOLS II, ROBERT K
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL KUHMANN,
ANDREAS DOWE, and RAINER GOERING
Appeal2016-003086
Application 13/640,586
Technology Center 3700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1, 2,
and 4--20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify the real party in interest as "EVONIK DEGUSSA,
GmbH" (Appeal Brief filed June 29, 2015, hereinafter "Appeal Br.," 1).
2 Appeal Br. 4--28; Reply Brief filed February 3, 2016, hereinafter "Reply
Br.," 1-10; Final Office Action entered February 12, 2015, hereinafter
"Final Act.," 2-7; Examiner's Answer entered December 3, 2015,
hereinafter "Ans.," 2-7.
Appeal2016-003086
Application 13/640,586
We reverse. Pursuant to our authority, 3 however, we enter a new
ground of rejection.
I. BACKGROUND
The Appellants state that this appeal is related to Appeal 2016-000186
(Application 13/639,765), in which we reversed a rejection under pre-AIA
35 U.S.C. § 102(b) but affirmed all rejections under 35 U.S.C. § 103(a). Ex
parte Kuhmann, Appeal 2016-000186 (PTAB June 19, 2017), https://e-
foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016000186-06-
15-2017-1.
The subject matter on appeal relates to a flexible pipe having a
multilayer structure with unbonded layers (Specification, hereinafter
"Spec.," 1, 11. 2-3). Representative claim 1 is reproduced from the Claims
Appendix (Appeal Br. 30), with key limitations emphasized:
1. A flexible pipe comprising a multilayer structure
comprising unbonded layers, wherein an interior lining of the . .
pipe compnses:
a layer (a) comprising a material selected from the group
consisting of a polyolefin molding composition, a polyamide
molding composition, and a polyvinylidene fluoride molding
composition; and
a layer (b) comprising a material comprising a molding
composition comprising a polymer selected from the group of
polyarylene ether ketone, polyphenylene sulphide, polyarylene
ether ketone/polyphenylene sulphide blend, polyphenyl
sulphone, and polyalkylene naphthalate;
wherein the layer (b) is arranged toward the inside of the
flexible pipe, as seen from the layer (a), and the flexible pipe
operates to convey a fluid selected from the group consisting of
crude oil, natural gas, methanol, and C02 and resist permeation
3 See 37 C.F.R. § 41.50(b).
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Application 13/640,586
of corrosive constituents from the conveymg fluid during
operation.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections (Ans. 2-7):
A. Claims 1, 2, 4, and 13-19 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Braad (US 2007/0036925 Al,
published February 15, 2007); and
B. Claims 5-12 and 20 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Braad.
III. DISCUSSION
Rejection A. The Examiner finds that Braad describes a flexible pipe
including every limitation recited in claim 1 (Ans. 2-3; Final Act. 2-3).
With respect to the polymeric compositional limitations recited for layers (a)
and (b), the Examiner relies on Braad's disclosures in paragraphs 29-31 and
paragraph 22, respectively (Ans. 2).
The Appellants contend, inter alia, that Braad does not anticipate
because a person having ordinary skill in the art "must pick and choose from
a long list of numerous components to make the claimed combination"
(Appeal Br. 17). Thus, according to the Appellants, "there is no disclosure
in Braad which indicates or suggests that the public was already in
possession of the claimed invention prior to the inventor or that Braad
placed the invention defined by the claims on appeal in the possession of the
public" (Reply Br. 2-3).
We agree with the Appellants on this issue. Braad describes "a
flexible unbonded pipe comprising an inner liner capable of forming a
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Application 13/640,586
barrier against outflow of a fluid which is conveyed through the pipe, and
one or more armouring layers on the outer side of the inner line[r]" (Braad,
Abstract). According to Braad, the pipe comprises "at least one polymer
layer and one film layer, said polymer layer being bonded to said film layer"
(id. i-f 18). Braad teaches that either the film layer or the polymer layer may
be the innermost layer (id. i-fi-1 56, 58). With respect to the polymer layer,
Braad teaches various polymers such as polysulfides (e.g., polyphenylene
sulfide) and polysulfones (e.g., polyarylsulfone) (id. i-f 22). With respect to
the film layer, Braad teaches materials selected from the group consisting of
polymer, metal, metal-containing compositions, and combinations thereof,
wherein the polymers include, e.g., polyolefins, polyamide, and fluorous
polymers such as polyvinylidene difluoride (PVDF)) (id. i-fi-129-31 ).
Because some picking, choosing, and combining various disclosures
from the prior art reference would be required to arrive at a pipe falling
within the scope of claim 1, we find that Braad does not describe every
limitation recited in the claim with the specificity as required to support a
35 U.S.C. § 102(b) rejection. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008) ("[I]t is not enough [for anticipation] that the
prior art reference discloses part of the claimed invention, which an ordinary
artisan might supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention."); In re Arkley, 455 F.2d 586, 587 (CCPA 1972)
(plurality) (anticipation requires that the prior art reference "disclose the
claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.").
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Application 13/640,586
For these reasons, we cannot sustain the Examiner's anticipation
rejection.
Rejection B. Turning to the obviousness rejection, the Examiner does
not offer an obviousness rationale for independent claim 1 from which
claims 5-12 and 20 directly or indirectly depend but instead relies on the
anticipation findings. As we discussed above, the Examiner's anticipation
rejection is not well-founded.
1. Claims 5-12
Regarding the additional limitations recited in claim 5 ("wherein an
internal diameter of the interior lining is in a range from 30 to 900 mm and
has a wall thickness in a range from 2 to 50 mm") (Appeal Br. 30), the
Examiner finds that Braad teaches a wall thickness within the Appellants'
specified range (Ans. 4 (citing Braad i-fi-128, 52)). In addition, with respect to
the internal diameter limitations, the Examiner concludes (Ans. 4):
It would have been obvious to one having ordinary skill in the
art ... to provide the internal diameter of the interior lining
being in the range from 30-900mm, 40-800mm, 50-700mm, or
60-620mm, since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in
the art.
The Appellants contend that the Examiner's rationale based on routine
discovery of optimum or workable internal diameter ranges constitutes
reversible error because such a rationale requires a showing that internal
diameter is known in the art to be a result-effective variable and Braad is
silent in that regard (Appeal Br. 24--25).
We agree with the Appellants. To rely on optimization, the Examiner
must show that the variable in question (i.e., internal diameter) is a result-
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effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) ("[The routine optimization] rule is limited to cases in which the
optimized variable is a 'result-effective variable.'") (internal citation
omitted).
Here, the Examiner does not provide any facts or sufficient technical
reasoning establishing that the internal diameter is a result-effective variable.
Therefore, the Examiner's obviousness conclusion as to claims 5-12 is
flawed.
2. Claims 10--12
Claim 10, which depends from claim 1 through intervening claim 7,
recites that "the thickness of the layer (b) is from 0.5 to 50% of the total wall
thickness" (Appeal Br. 31 ). Claims 11 and 12 recite narrower ranges (" 1 to
40%" and "2 to 30%," respectively) for layer (b)'s relative thickness (id.).
The Examiner finds: "Braad discloses wherein the thickness of the
layer (b) is from .5-50%, 1-40% or 2-30% of the total wall thickness (see
paragraphs 52 and 54)" (Ans. 4). The Appellants contend that this finding is
erroneous because Braad teaches that "the polymer layer must be at least
four (4) times thicker than the film layer" (Appeal Br. 26-27).
We concur with the Appellants. The Examiner does not provide any
factual basis indicating that Braad's polymer layer, which the Examiner
considers as corresponding to the Appellants' inner layer (b ), has the relative
thicknesses recited in claims 10-12 (Braad i-fi-152, 54).
Therefore, we cannot uphold the rejection as to these claims on this
additional basis.
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3. Claim 20
Claim 20, which depends from claim 1, recites that "the material of
layer (b) comprises a molding composition comprising a polyalkylene
naphthalate polymer" (Appeal Br. 32). The Examiner finds that Braad
discloses polyalkylene naphthalate (Ans. 2 (citing Braad i-f 22)). According
to the Examiner, claim 20's subject matter would have been obvious to a
person having ordinary skill in the art because "it has been held to be within
the general skill of a worker in the art to select a known material on the basis
of its suitability for the intended use as a matter of obvious design choice"
(Ans. 4--5).
The Appellants contend that "Braad' s listings of polymers do not
include a polyalkylene naphthalate polymer" (Appeal Br. 26). The
Appellants further argue that "the Examiner does not point to a single prior
art reference which suggests that polyalkylene naphthalate would have been
or could be suitable for Braad's intended use" (id.).
Again, we agree with the Appellants. Contrary to the Examiner's
finding, Braad does not describe polyalkylene naphthalate (Braad i-f 22). The
Examiner's "design choice" rationale fails because the Examiner does not
direct us to evidence that polyalkylene naphthalate falls within any of the
polymer classes disclosed as suitable in Braad.
For these reasons, we cannot sustain the Examiner's rejection as to
claim 20.
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IV. NEW GROUND OF REJECTION
Pursuant to authority delegated to us in 37 C.F.R. § 41.50, we enter a
new ground of rejection, as follows:
Claims 1, 2, and 4-19 are rejected under pre-AJA 35 U.S.C. § 103(a)
as unpatentable over Braad.
Although we have ruled that Braad does not anticipate, claim 1 's
subject matter would have been obvious to a person having ordinary skill in
the art. Arkley, 455 F.2d at 587 ("[P]icking and choosing may be entirely
proper in the making of a [§] 103, obviousness rejection.").
Braad discloses "flexible, unbonded pipe useful for transportation of
gases and crude oils and other aggressive fluids" (Braad i-f 12). The pipe is
described as comprising an inner liner capable of forming a barrier against
outflow of a fluid which is conveyed through the pipe and one or more
armoring layers on the outer side of the inner liner (id. Abstract). According
to Braad, the pipe comprises at least one polymer layer and one film layer
bonded to the polymer layer, wherein the film layer is desirably thinner than
the polymer layer (id. i-fi-1 18-19). Braad discloses multiple polymer species
for both the polymer layer and the film layer that fall within claim 1 's scope
for layer (a) and layer (b ), respectively (Braad i-fi-1 22, 23, 29-31 ). In
addition, Braad teaches that either the film layer or the polymer layer may be
the innermost layer (id. i-fi-1 56, 58).
Based on these disclosures, we conclude that a person having ordinary
skill in the art would have arrived at a pipe within claim 1 's scope. Merck &
Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
[reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious."); In re Corkill, 771 F .2d 1496,
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1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of
prior art teaching that "hydrated zeolites will work" in detergent
formulations, even though "the inventors selected the zeolites of the claims
from among 'thousands' of compounds").
As for the wall thickness ranges recited in claims 5-9, Braad discloses
thicknesses for the film layer and polymer layer that would result in wall
thickness values within the Appellants' specified ranges (Braad i-fi-152, 54).
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("A primafacie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.").
As for the internal diameter ranges recited in claims 5-9, we find that
a person having ordinary skill in the art would have understood that the
pipe's internal diameter would depend on certain variables such as the
fluid's characteristics (e.g., viscosity) and desired flow rate. Therefore, a
person having ordinary skill in the art would have understood the pipe's
internal diameter to be a result-effective variable-the optimum or workable
range of which may be discovered through nothing more than routine
experimentation. Applied Materials, 692 F.3d at 1296 (holding the Board's
finding "that a person of ordinary skill in the art would have recognized that
changing the groove width would affect the polishing rate and uniformity"
was reasonable).
With respect to the relative wall thickness for layer (b) (i.e., the
innermost layer) recited in claims 10-12, Braad teaches that the film layer
may be the inner layer and that it is desirably thinner than the polymer layer
(Braad i-fi-f 18, 19). Given the thickness values disclosed for the polymer and
film layer (id. i-fi-152, 54), the claimed subject matter defined in claims 10-12
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would have been obvious to a person having ordinary skill in the art.
Peterson, 315 F.3d at 1329.
Finally, the polymer species specified in claims 13-19 are disclosed in
the reference (Braad i-fi-129-31 ).
V. SUMMARY
Rejections A and Bare not sustained. Therefore, the Examiner's
decision to reject claims 1, 2, and 4--20 is reversed.
We have entered a new ground of rejection under 35 U.S.C. § 103(a)
against claims 1, 2, and 4--19 as unpatentable over Braad.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceeding
will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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