Ex Parte Sulzer et al

Patent Trial and Appeal Board

Feb 11, 2016

12385175 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/385, 175 0410112009 Thomas Sulzer
23364 7590 02/16/2016
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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.
SULZ3004DFJD 3338
EXAMINER
FLETCHER III, WILLIAM P
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte
THOMAS SULZER, JOHANNES RUCHEL, and
ALEXANDER STUENZI
Appeal2014-005541
Application 12/385, 175
Technology Center 1700
Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
JULIA HEANEY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-24. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
Appellants' claimed invention is directed to a method of
manufacturing a measuring tube of an in-line measuring device wherein the
measuring tube liner is made of polyurethane that is capable of meeting
drinking water application suitability requirements (Spec. 6--7).
1 Appellants identify the real part in interest as Endress + Hauser Flowtec
AG (App. Br. 1 ).
Appeal2014-005541
Application 12/385, 175
Claim 1 is illustrative and reproduced below:
1. A method for manufacturing a measuring tube of an
in-line measuring device, wherein the measuring tube includes
a support tube and a liner internally lining the support tube, said
method comprising:
forming a flowable first multicomponent system, which
contains isocyanate as well as a di-, or more-, valent alcohol;
applying the first multicomponent system onto an inner
wall of a support tube serving as a component of the measuring
tube;
allowing at least parts of the first multicomponent system
to cure on the inner wall of the support tube for forming a
primer adhering to the support tube;
forming a flowable, second multicomponent system,
which contains isocyanate, a di-, or more-, valent alcohol, and a
catalyst;
applying the second multicomponent system onto the
primer formed on the inner wall of the support tube; and
allowing the second multicomponent system to cure in
the support tube for forming the liner.
i\.pp. Br. 7 (Claims i\.ppendix).
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Sulzer US 2006/0162465 Al July 27, 2006
The Examiner maintains the following grounds of rejection:
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sulzer.
We affirm the stated rejection for reasons set forth by the Examiner in
the Examiner's Answer and the Final Office Action. We offer the following
for emphasis.
2
Appeal2014-005541
Application 12/385, 175
Appellants argue the rejected claims together as a group. We select
claim 1 as the representative claim on which we focus in deciding this
appeal.
Appellants contend that the Sulzer publication (US 2006/0164265) is
unavailable as prior art for use under 35 U.S.C. § 103(a) against the present
application in light of 35 U.S.C. § 103(c) given that Sulzer is commonly
owned with the present Application (Appeal Br. 3--4). This argument is not
persuasive because Appellants' contentions concerning common ownership
as presented in the Appeal Brief do not serve to establish the requisite
common ownership at the time the invention was made for the purpose of
invoking Appellants' entitlement to the prior art exclusion of the applied
Sulzer publication under subsections ( e ), ( t) and (g) of Section 102 pursuant
to 35 U.S.C. § 103(c) for reasons articulated by the Examiner (Ans. 3--4).
The statement of Angelica Andress accompanying the Reply Brief is
belated; accordingly, this statement and the accompanying argument based
thereon in the Reply Brief is not considered in this Appeal. 2,3
As for Appellants' argument concerning the lack of an explicit
disclosure in Sulzer as to the use of first and second multicomponent
2 37 C.F .R. § 41.41 (b )(1) (2012) reads in most relevant part, "A reply brief
shall not include . . . any new or non-admitted affidavit or other Evidence."
In addition, Appellants have not shown good cause explaining why the
evidence in support of the argument asserting common ownership at the time
the invention was made could not have been presented in the Appeal Brief.
37 C.F.R. § 41.41(b)(2)(2012).
3 In the event of further prosecution, the Examiner should consider whether
the Sulzer publication is available as prior art under 35 U.S.C. § 102(a)
based on its publication date. 35 U.S.C. § 103(c) does not exclude prior art
available under 35 U.S.C. § 102(a).
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Appeal2014-005541
Application 12/385, 175
systems to form the liner as claimed, this argument does not address, much
less refute, the Examiner's determination that it would have been obvious to
one of ordinary skill in the art to apply multiple layers of coating material to
achieve a desired coating thickness in forming the liner of Sulzer, given the
well-known nature of the use of such a multiple layering technique to one of
ordinary skill in the art (Ans. 4--5; see Final Office Action i-f 8).
It follows that Appellants have not established reversible error in the
Examiner's obviousness rejection on the Appeal record before us.
Accordingly, we affirm the Examiner's obviousness rejection.
CONCLUSION/ORDER
The Examiner's decision to reject the appealed claims is 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).
AFFIRMED
4