Ex Parte Perkovich et alDownload PDFPatent Trial and Appeal BoardMar 31, 201712762655 (P.T.A.B. Mar. 31, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/762,655 04/19/2010 Michael P. Perkovich 205TR010-02 3976 37535 7590 04/04/2017 THF T TTRRT70T TORPOR ATTON EXAMINER 29400 LAKELAND BLVD DUNWOODY, AARON M MAIL DROP 022B WICKLIFFE, OH 44092-2298 ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): patents @ lubrizol. com cathy.bartel@lubrizol.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL P. PERKOVICH, ANDREW M. OLAH, GARY L. JOHNSON, STANLEY J. NERDERMAN, JOEY L. GLASSCO, and JENNIFER M. BAKER Appeal 2015-005100 Application 12/762,655 Technology Center 3600 Before EDWARD A. BROWN, GEORGE R. HOSKINS, and BRANDON J. WARNER, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael P. Perkovich et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 5—7 and 29—31.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Lubrizol Corporation is identified as the real party in interest. Br. 2. 2 Claims 1—4 and 9-15 have been cancelled, and claims 8 and 16—28 have been withdrawn from consideration. Br. 10—13 (Claims App.). Appeal 2015-005100 Application 12/762,655 CLAIMED SUBJECT MATTER Appellants’ claimed subject matter “relates generally to piping systems comprising CPVC pipes. An exemplary embodiment provides for mechanical interconnection of pipe lengths without the use of solvent cement and the utilization of resilient sealing members chemically compatible with the CPVC composition.” Spec. 12. Claim 29, reproduced below, is representative of the claimed subject matter. 29. An assembly comprising: a. first and second pipe lengths, wherein at least one of said pipe lengths is formed of a chlorinated polyvinyl chloride (“CPVC”) composition; each pipe length comprises a pipe wall and a continuous annular groove cut into an end of the pipe; the portion of the pipe wall on each pipe length between the pipe end and the groove comprises a sealing surface; and b. a mechanical fixture operative to sealingly engage the first and second pipe lengths, wherein the mechanical fixture comprises: a pair of coupling segments, wherein each coupling segment comprises: an arcuate body having a first end, a second end, an interior concave surface extending between the first end and the second end, a longitudinal channel extending along the concave surface, and a resilient seal; and at least one mechanical fastener operative to detachably connect the pair of coupling segments; 2 Appeal 2015-005100 Application 12/762,655 wherein when the mechanical fixture is assembled, the resilient annular seal extends within the longitudinal channel of each coupling segment; and wherein when the pipe lengths and mechanical fixture are assembled, the first and second pipe lengths are in close end to end relationship with each other, and the resilient seal of the mechanical fixture spans the ends of the pipe lengths and annularly engages the sealing surfaces; and the assembly is operative to pass a first testing protocol selected from at least one member of the group consisting of a Fire Exposure Test, UL 1821, Sec[.] 13; a Bending Moment Test, UL 213, Sec. 12; a Vibration Test, UL 1821, Sec. 19; an Assembly Test, UL 1821, Sec. 22; a Hydrostatic Pressure Test, UL 1821, Sec. 23; a Pressure Cycling Test, UL 1821, Sec. 24; a Temperature Cycling Test, UL 1821, Sec. 25; a Long Term Hydrostatic Pressure Test, UL 1821, Sec. 27; and combinations thereof. Br. 13—14 (Claims App.). REJECTIONS Claims 5—7 and 29-31 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 5—7 and 29-31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Blakeley (US 3,695,638, issued Oct. 3, 1972) and O’Neill (US 7,232,159 B2, issued June 19, 2007). ANALYSIS Rejection of claims 5—7 and 29—31 as being indefinite Claim 29 recites the limitation “the assembly is operative to pass a first testing protocol selected from at least one member of the group 3 Appeal 2015-005100 Application 12/762,655 consisting of a Fire Exposure Test, UL 1821, Sec[.] 13 . . . and combinations thereof.” Br. 14 (Claims App.) (emphasis added). The Examiner determines that the meaning of “testing protocol” is unclear. Final Act. 3. According to the Examiner, “the original specification fails to detail [] all elements necessary to determine what the testing protocol encompasses.” Id. Appellants contest the Examiner’s position. Br. 5. Appellants explain that “[t]he specific testing protocol includes those standards commonly referred to in the art by the testing standards abbreviated name.” Id. The Examiner responds that the recited testing protocol does not establish that the claimed assembly has a “specific fire exposure rating ... or an assembly with a specific assembly rating.” Ans. 7. According to the Examiner, the testing protocol does not impart any “meaningful structural limitation(s)” towards the claimed assembly. Id. Appellants’ contentions are persuasive. It is clear from claim 29 that the “testing protocol” is the selected at least one member (i.e., at least one “Test”) of the recited Markush group. For example, the first test protocol can be “a Fire Exposure Test, UL 1821, Sec[.] 13,” alone, or in combination with “a Bending Moment Test, UL 213, Sec. 12.” Each of the tests of the Markush group is described in Appellants’ Specification. See Spec. Tflf 75— 93. As described, each test has certain testing procedures or “protocols,” and requirements that pipes and fitting assemblies would need to pass. Id. Appellants explain that the specific testing protocol includes the standards commonly referred to in the art by the testing standard’s abbreviated name. Appeal Br. 5. One skilled in the art would have knowledge of the claimed UL testing standards, or know how to find them, providing additional details of the testing protocols. 4 Appeal 2015-005100 Application 12/762,655 With regard to the Examiner’s position that the recited “testing protocol” does not impart any “meaningful structural limitation(s)” on the claimed assembly, claim 29 requires that the assembly “is operative to pass a first testing protocol.” This broad recitation simply distinguishes the claimed assembly from an assembly structure that is not operative to pass the recited first testing protocol. Accordingly, we agree with Appellants that the meaning of “testing protocol” in claim 29 is sufficiently clear to one of ordinary skill in the art when read in light of the Specification. Accordingly, we do not sustain the rejection of claim 29, and claims 5—7, 30, and 31 depending therefrom, under 35U.S.C. § 112, second paragraph, as being indefinite. Rejection of claims 5—7 and 29—31 as unpatentable over Blakeley and O ’Neill Claim 29 recites the further limitation, “at least one of said pipe lengths is formed of a chlorinated polyvinyl chloride (‘CPVC’) composition.” Br. 14 (Claims App.). The Examiner finds that Blakeley substantially discloses the claimed assembly, but does not disclose CPVC pipe lengths. Final Act. 4—5. The Examiner finds that O’Neill teaches CPVC pipe lengths commonly used in plumbing. Id. at 5. The Examiner determines that, because O’Neill provides this teaching and relates to fittings for connecting tubes, pipes, and/or solid rods together, it would have been obvious to fabricate CPVC pipe lengths in the assembly of Blakeley. Id. Claim 29 also recites the limitation, “each pipe length comprises a pipe wall and a continuous annular groove cut into an end of the pipe.” Br. 14 (Claims App.) (emphasis added). The Examiner indicates that “the method of forming the device is not germane to the issue of patentability of 5 Appeal 2015-005100 Application 12/762,655 the device itself. Therefore, the cutting limitation is given little patentable weight.” Final Act. 5 (emphasis added). Appellants contend that the term “cut” is a process step, and claim 29 is a product-by-process claim. Br. 8. Accordingly, Appellants contend, the structure implied by this process step should be considered in determining patentability of the claim. Id. Appellants further contend that “the structure implied by the claimed ‘cut’ provides a distinct and patentable structural difference from the prior art.” Id. (referencing pages 7 and 8 of Amendment filed March 12, 2014). We construe the limitation, “cut into an end of the pipe,” as defining how the continuous annular groove is formed. That is, we agree with Appellants that this limitation as a product-by-process limitation. In analyzing product-by-process claims, “[i]f the product in [the] product-by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted). Once the Patent Office provides a rationale tending to show that the claimed product appears to be the same as that of the prior art, although produced by a different process, the burden shifts to Appellants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). “[W]hen the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based . . . [on] section 103 of the statute is eminently fair and acceptable.” In re Brown, 459 F.2d 531, 535 (CCPA 1972). 6 Appeal 2015-005100 Application 12/762,655 The Examiner finds that Blakeley discloses pipe lengths with a continuous annular groove. Ans. 9. Blakeley discloses grooved plastic pipes. Figure 2, for example, shows plastic pipes 1, 2, each with groove 26 adjacent end 25. See Blakeley, Fig. 2, col. 3,11. 43^46. Blakeley does not disclose a specific method of forming grooves 26. Although Blakely does not disclose that grooves 26 are formed by a cutting technique, Appellants have not shown persuasively that the claimed “continuous groove cut into an end of the pipe” is structurally different from grooves 26 disclosed in Blakeley, however they may be formed. In this regard, claim 29 recites a “continuous annular groove.” Blakeley’s grooves 26 are, likewise, “continuous” and “annular.” Appellants have not shown with persuasive argument or technical evidence that the claimed groove has any particular structural characteristic resulting from the cutting process used to form it that distinguishes it from the structure of Blakeley’s grooves 26. Blakeley discloses that the grooved plastic pipes can be made of plastic materials, such as P.V.C. and A.B.S. Id. at col. 1,11. 48—53. However, Blakeley further discloses: Though certain relatively hard plastic materials have been referred to above, it is of course to be understood that the coupling of weak, soft, or brittle plastics can be achieved by the use of the modified coupling of the invention. Id. at col. 1,11. 63—67. Though the invention has been described principally from the standpoint of the coupling of pipes formed of relatively rigid plastic materials, such as PVC and ABS, the type of plastic to be used of course depends upon the service to which the piping is to be put. 7 Appeal 2015-005100 Application 12/762,655 Id. at col. 7,11. 29-33. These passages demonstrate that Blakeley’s grooved pipes are not limited to being made from P.V.C. or A.B.S. Rather, the grooved pipes can be made from various types of plastic materials, including “relatively hard plastic materials,” “relatively rigid plastic materials,” or “weak, soft, or brittle plastics,” where the type of plastic can, broadly, be selected based upon the service the pipe is used for.3 Although Blakely does not disclose grooved pipes formed specifically of a CPVC composition, as claimed, such composition is not excluded by Blakeley. Blakeley discloses that the plastic material composition is not particularly limited, and does not indicate that grooves could not be formed in pipes made from a CPVC composition. And, as noted above, Appellants have not shown persuasively that claim 29 requires the groove to have any particular structural characteristic resulting from the cutting process used to form it that is not provided by Blakeley. Further, Appellants do not contest the Examiner’s finding that O’Neill provides evidence that pipes made from CPVC are commonly used in plumbing. See O’Neill, col. 3,11. 30-33. Accordingly, Appellants have not apprised us of any error in the Examiner’s rationale for combining the teachings of O’Neill with Blakeley. We have also considered Appellants’ contentions with regard to the Declaration Under 37 C.F.R. § 1.132 of Andrew M. Olah, filed October 25, 2013 (“the Olah Declaration” or “Deck”). Br. 8—9. These contentions are also not persuasive. The Olah Declaration refers to “an assembly as taught 3 On page 8 of the Amendment filed March 12, 2014, Appellants contend incorrectly that “one of ordinary skill in the art would not have considered it obvious to simply prepare the assembly taught in Blakeley (i.e., requiring grooving in PVC) from a CPVC composition.” (Emphasis added). 8 Appeal 2015-005100 Application 12/762,655 by Blakely” as “requiring grooving of a pipe made from polyvinyl chloride (‘PVC).” See Deck 1 (emphasis added). However, this statement is inconsistent with Blakeley’s teachings encompassing pipes made from various types of plastic materials. Appellants contend that “it would have been surprising and unexpected that the claimed assembly could pass the testing protocols as claimed with a groove cut into the pipe.” Br. 8—9 (emphasis added). To the extent Appellants may be contending that the claimed assembly has unexpectedly improved properties, or properties not possessed by the prior art, Appellants must present objective evidence to show that the properties are unexpected as compared to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”); In re Wood, 582 F.2d 638, 642 (CCPA 1978) (objective evidence is needed to establish unexpected results). Appellants do not, however, provide objective evidence showing persuasively that the claimed assembly including “at least one of said pipe lengths is formed of a chlorinated polyvinyl chloride (‘CP VC j composition,” where “each pipe length comprises a pipe wall and a continuous annular groove cut into an end of the pipe,” provides unexpected results as compared to the closest prior art. Further, as discussed above, the prior art teachings are not limited to grooved PVC pipes. For the above reasons, we sustain the rejection of claim 29, and claims 5—7, 30, and 31 depending therefrom, as unpatentable over Blakeley and O’Neill. 9 Appeal 2015-005100 Application 12/762,655 DECISION The Examiner’s decision to reject claims 5—7 and 29—31 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation