Ex Parte Schütz

Patent Trial and Appeal BoardAug 18, 2017

13462484 (P.T.A.B. Aug. 18, 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. 13/462,484 05/02/2012 Udo Schütz 74523 1070 23872 7590 08/18/2017 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER CAILLOUET, CHRISTOPHER C ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 08/18/2017 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UDO SCHÜTZ ____________ Appeal 2015-005423 Application 13/462,484 Technology Center 1700 ____________ Before PETER F. KRATZ, JEFFREY T. SMITH, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING On June 23, 2017, Appellant filed a Request for Rehearing (“Request”) with respect to our Decision entered May 31, 2017. The Decision affirms the Examiner’s decision rejecting claims 1–9 under 35 U.S.C. § 103(a); however, the Request is limited to claim 2. Because Appellant does not persuade us that we misapprehended or overlooked any points of law or fact that would require a different outcome, we deny the request to modify the Decision. Appellant argues that the Decision does not address the limitation of claim 2 that requires a tapping valve that comprises a tapping valve portion that is arranged in an interior opening of a threaded socket wherein the tapping valve portion engages an inner surface of the threaded socket. Request 1. Appellant argues that the Decision overlooks Appellant’s Appeal 2015-005423 Application 13/462,484 2 arguments at page 13, lines 3–14 of the Appeal Brief and page 8, line 14 through page 9, line 2 of the Reply Brief. We disagree. In the Reply Brief, Appellant argued: As clearly shown in Figure 1 of Schutz, the portion of the valve housing 2 extending within the interior of the outlet connection 18 does not engage any portion of the inner surface of the outlet connection 18. The inner surface of the outlet connection 18 of Schutz is prevented from engaging the portion of the valve housing 2 extending in the interior of the outlet connection 18 due to the adaptor ring 17 being provided between the valve housing 2 and the outlet connection 18. Reply Br. 8:15–20. We addressed Appellant’s argument at pages 13–14 of the Decision, where we stated: Appellant’s argument is not persuasive of reversible error because it focuses on Schutz alone and fails to address the combined teachings of the cited references. In re Young, 927 F.2d at 591; In re Merck, 800 F.2d at 1097. The Examiner relies on Schutz to teach a tapping valve having an inlet orifice that is smaller in diameter than the discharge orifice of the tank’s threaded socket, not for its teaching of an adaptor ring or sealing ring. Final Action 6–7. When welding is substituted for a threaded connection, the two plastic parts would abut and engage one another, with no intervening adaptor ring or sealing ring. See Andrew 2:20–21 (“the molten ends of the pipes abut each other”). Decision 13–14. Appellant challenges this portion of the Decision with the argument, “abutment of parts is not what is required in claim 2.” Request 2. Claim 2 recites: “said tapping valve portion being arranged in said threaded socket interior opening” and “at least a portion of said tapping valve portion engaging said threaded socket inner surface.” App. Br. 24–26. The Examiner concluded that it would have been obvious in view of Schutz to provide a tapping valve having an inlet orifice that is smaller in diameter Appeal 2015-005423 Application 13/462,484 3 than the discharge orifice of the tank’s threaded socket, thereby allowing the inlet orifice to fit within the discharge orifice and forming an overlapping piping connection. Final Action 6–7 (citing Schutz Fig. 1). Appellant agrees that “Schutz . . . discloses an overlap of a portion of a tapping valve and a threaded socket.” Request 2. Appellant argues that claim 2 does not require abutment of parts, but makes no argument that a piping connection where the ends of the pipes both overlap and abut one another is outside the scope of claim 2. Nor does Appellant contend that we misapprehended or overlooked anything in concluding that, when welding is substituted for a threaded connection, there would be no intervening adaptor ring or sealing ring between the two plastic parts. Accordingly, Appellant’s argument does not persuade us that we misapprehended or overlooked any points of law or fact in affirming the Examiner’s decision. Next, with respect to the above-quoted limitations of claim 2, Appellant attempts to identify differences among (1) the Examiner’s findings and conclusion in the Final Office Action, (2) the Examiner’s findings and conclusions in the Answer, and (3) the Decision. Request 2–3. We are not persuaded that any substantive differences exist. Appellant has reiterated arguments that were presented in the Appeal Brief, Reply Brief and by Appellant during the oral hearing. Appellant has not adequately explained what was misapprehended or overlooked in the Decision. CONCLUSION OF LAW AND DECISION ON REHEARING Based on the foregoing, Appellant’s Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. Appeal 2015-005423 Application 13/462,484 4 This Decision on the Request for Rehearing incorporates our Decision, mailed May 31, 2017, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). The Examiner’s decision rejecting claim 2 under 35 U.S.C. § 103(a) remains affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED