Ex Parte Perkovich et al

Patent Trial and Appeal Board

Mar 31, 2017

12762655 (P.T.A.B. Mar. 31, 2017)

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been withdrawn from consideration.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;
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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
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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.
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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
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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).
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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.
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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).
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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.
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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
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