Ex Parte Vandal et al

Patent Trial and Appeal Board

Aug 17, 2017

14088865 (P.T.A.B. Aug. 17, 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.
190145-1136 6759
EXAMINER
WILENSKY, MOSHE K
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
14/088,865 11/25/2013
146034 7590 08/18/2017
Taylor English Duma LLP / Anvil
1600 Parkwood Circle, Suite 200
Atlanta, GA 30339
Peter Joseph Vandal
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 PETER JOSEPH VANDAL and DOUGLAS COMPTON
Appeal 2015-007734
Application 14/088,865
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007734
Application 14/088,865
STATEMENT OF THE CASE
Appellants Peter Joseph Vandal et al.1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision, as set forth in the Final Office
Action dated November 24, 2014 (“Final Act.”), rejecting claims 1—27. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a method of coupling two pipes together.
Claims 1 and 24 are the independent claims on appeal. Claim 1, reproduced
below with disputed limitations italicized for emphasis, is illustrative of the
claimed subject matter:
1. A method of coupling two pipes, comprising:
placing an assembled coupling over one end of a first pipe,
wherein the coupling comprises:
an upper housing;
a lower housing;
at least one fastening device coupling the upper housing to
the lower housing; and
a gasket positioned within the upper and lower housings,
wherein the gasket is comprised of two primary seals, one on
each outer edge of the gasket;
sliding the coupling over the end of the first pipe so that at
least a portion of the first pipe is extending beyond each edge of
the gasket;
aligning a second pipe with the first pipe;
sliding the coupling so that at least a portion of the
coupling is around each pipe;
and securing the coupling.
1 Appellants identify Mueller International, LLC as the real party in
interest. Appeal Brief, dated March 27, 2015, at 2 (“Appeal Br.”).
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Application 14/088,865
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Dillon US 1,930,194 Oct. 10, 1933
Blakeley US 4,350,350 Sept. 21, 1982
Gibb US 7,401,819 B2 July 22, 2008
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—6, 8, 9, 11—18, and 24—27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gibb.
2. Claims 7 and 19—23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gibb and Blakeley.
3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibb and Dillon.
Appellants seek our review of these rejections.
DISCUSSION
The Rejection of Claims 1—6, 8, 9, 11—18, and 24—27
as Unpatentable Over Gibb
Appellants argue independent claim 1 and its dependent claims 2—6, 8,
9, and 11—18 as a group. See Appeal Br. 17. We select claim 1 as the
representative claim, and claims 2—6, 8, 9, and 11—18 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(l)(iv). Similarly, Appellants argue independent
claim 24 and its dependent claims 25—27 as a group. See Appeal Br. 17. We
select claim 24 as the representative claim, and claims 25—27 stand or fall
with claim 24.
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Application 14/088,865
The Examiner finds that Gibb discloses all of the limitations of
independent claims 1 and 24 except that it does not explicitly teach “sliding
the coupling over the end of the first pipe so that at least a portion of the
first pipe is extending beyond each edge of the gasket.'1'’ Final Act. 2-A. The
Examiner determines it would have been obvious to modify Gibb’s method
to include such a step under at least two rationales. Id. For the first
rationale, the Examiner states:
Gibb teaches that the coupling (10) can be slid onto a pipe as a
pre-assembled unit. See Gibbs, col. 4, 11. 30-44. As such, the
coupling (10) is capable of the recited step. Gibbs does not teach
actually performing this step. But it would have been
advantageous for a technician to slide the coupling (10)
completely over a first pipe, thus allowing the technician free use
of his hands and access to the pipe end to allow him to orient a
second pipe into alignment with the first pipe. Such a benefit
would have rendered it obvious to perform this additional step
within the method of Gibb.
Final Act. 3; see also Answer, dated June 24, 2015, at 7—8 (“Ans.”).2
2 In the second rationale, the Examiner states:
Alternately, it would have been an obvious matter of
design choice to modify the Gibb to include a step of sliding the
coupling completely over the first pipe, since applicant has not
disclosed that this step solves any stated problem or is for any
particular purpose and it appears that the method would perform
equally well with or without this step. Furthermore, absent a
teaching as to criticality of this extra step, this particular
arrangement is deemed to have been known by those skilled in
the art since the instant specification and evidence of record fail
to attribute any significance (novel or unexpected results) to a
particular arrangement.
Final Act. 3. As the first rationale articulated by the Examiner is sufficient
to support this ground of rejection for the reasons discussed infra, we need
not address this second articulated rationale.
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Application 14/088,865
Appellants argue that the rejection is erroneous for several reasons.
First, Appellants argue that the Examiner’s standard for a prior art reference
to teach away is incorrect. Appeal Br. 5—6. However, both the Examiner’s
and Appellants’ proposed standards are incomplete. See, e.g., Final Act. 5
(“nothing in [Gibb] actively disparages the step of sliding the gasket in the
recited manner, which is required to teach away.”); Appeal Br. 6 (“a cited
reference that simply causes a person having skill in the art to ‘be
discouraged from following the path set out in the reference’” or “be led in a
direction divergent from the path that was taken by the applicant” “teaches
away from the claimed invention and does not render the claim obvious.”).
A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage investigation into the claimed solution. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”) (emphasis added).
Second, Appellants argue that “Gibb teaches away from ‘sliding the
coupling so that at least a portion of the first pipe is extending beyond each
edge of the gaskef because “the teachings of Gibb would lead a person
having skill in the art ‘in a direction divergent from the path that was taken
by the applicant.’” Appeal Br. 6 (citing In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1381 (Fed. Cir. 2007)); see also Appeal Br. 6—10; Reply Br.
2-3, 5.
According to Appellants,
Gibb purportedly teaches that during typical installation of a
coupling, the ring seal (i.e., the alleged gasket) is lubricated and
stretched to accommodate the ends of the pipe elements to be
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Application 14/088,865
joined, which is “an often difficult and messy task, as the ring
seal is usually stiff and the lubrication makes manual
manipulation of the seal difficult.” See Gibb col. 1, 11. 56—64
and FIG. 1. After the ring seal of Gibb is in place, the segments
are individually placed and secured on the pipe elements and
capture the ring seal. See Gibb col. 1,1. 64—col. 2, 1. 7.
Appeal Br. 7. Appellants then argue that
Nothing in Gibb addresses the aforementioned difficulties of
partially positioning the ring seal onto a first pipe. On the
contrary, Gibb merely suggests only sliding the seal partially
onto the pipe ends to straddle the ends of two pipe elements. See,
e.g., col. 2, 11. 20-23; col. 3, 11. ^12 and 53-59; FIG. 1.
Because Gibb teaches that sliding only part of the ring seal over
the end of the first pipe is challenging, Gibb at least implicitly
suggests that sliding the entire ring seal over the pipe end would
be even more challenging and difficult. Therefore, based on the
teachings of Gibb, one having skill in the art would be
discouraged from and would avoid attempting to slide the entire
seal of Gibb over the pipe end. Thus one would follow the
divergent path of Gibb for positioning the ring seal rather than
the path taken by Applicant.
Appeal Br. 7.
In response to Appellants’ argument, the Examiner states that Gibb’s
discussion that assembling couplings and ring seals is a “difficult and messy
task” relates to prior art couplings, not Gibb’s coupling which does not
require the disassembly associated with the prior art couplings. Final Act.
5—6; Ans. 6—7. We agree. The discussion in Gibb’s Background section
specifically describes “prior art couplings,” not Gibb’s claimed device. See,
e.g., Gibb 1:54—55 (stating the structure “inprior art couplings results in a
tedious and time consuming installation process.”). Furthermore, contrary to
Appellants’ repeated statements in the Appeal and Reply Briefs, Gibbs does
not “suggest” sliding the seal “partially” onto the pipe end during the
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Application 14/088,865
assembly steps, or that “sliding the entire ring seal over the pipe end would
be even more challenging and difficult.” See, e.g., Appeal Br. 7; Reply Br.
3. Gibb never teaches or suggests that the entire seal, including both ends of
the seal, cannot slide over the pipe. Finally, we note that Gibb states
“[Gibb’s] seal inner diameter 58 is sized to receive the end portions 16a and
18a of the pipe elements simply by pushing the coupling over the pipe
elements or by inserting the pipe elements into the coupling.” Gibb 4:44-49
(emphasis added). Contrary to Appellants’ argument, Gibb does not disclose
any problems inserting pipe 16 into seal 44. If pipe 16 can slide past one
end of the gasket (e.g., right lip 46 of seal 44 in Figures IB and 4), Gibb
does not disclose any reason preventing pipe 16 from also sliding (in the left
direction) through the entire coupling 10 and past the second end of the
gasket (e.g., opposing left lip 46 of seal 44 in Figures IB and 4)). For these
reasons, Appellants’ argument is not persuasive, and we find that Gibb does
not teach away from “sliding the coupling over the end of the first pipe so
that at least a portion of the first pipe is extending beyond each edge of the
gasket,” as recited in claims 1 and 24.
Third, Appellants argue that the Examiner’s determination that it
would have been “obvious” and “advantageous for a technician to slide the
[Gibb] coupling (10) completely over a first pipe, thus allowing the
technician free use of his hands and access to the pipe end to allow him to
orient a second pipe into alignment with the first pipe” is erroneous. Appeal
Br. 10—11; Reply Br. 3—6. According to Appellants, the Examiner’s rationale
for modifying Gibb fails to “articulate why the knowledge to achieve the
alleged benefit would have been known to a person having ordinary
skill in the art, thereby engaging in impermissible hindsight.” Appeal
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Br. 10. This argument is a variation on Appellants’ “teaching away”
argument addressed above. Appellants’ contend that
the modification to Gibb offered by the Office Action would
proceed contrary to the accepted wisdom taught by Gibb of
only partially positioning the ring seal on the end of the first
pipe” and “due to the challenges of positioning the ring seal just
partially on the end of the first pipe, Gibb recognizes and
continues to teach the accepted wisdom of only partially
positioning the ring seal on the end of the first pipe.
Id. at 11 (emphasis added); see also Reply Br. 7. As discussed above, Gibb
does not teach or suggest only “partially” positioning the ring on the end of
the first pipe or that it is “accepted wisdom,” as argued by Appellants.
Finally, Appellants argue that “[n]one of the Office Action’s
allegations are supported by any of the cited references and, indeed, are
contrary to the express teachings of the cited references” and “[t]he only
possible source for the Office Action’s allegations are the present disclosure,
thereby constituting only impermissible hindsight.” Appeal Br. 11; see
Reply Br. 7—8. However, an express teaching or motivation in the references
is not required; instead, the Examiner need only articulate a reason to
combine the references with some rational underpinning to support the legal
conclusion of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Here, as discussed supra, the Examiner’s articulated reasoning for
modifying Gibb has rational underpinning. In addition, Appellants do not
identify any knowledge relied upon by the Examiner that was gleaned only
from Appellants’ disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention, thereby obviating Appellants’
assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). Thus, Appellants do not apprise us of error.
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For the reasons discussed above, the rejection of claims 1 and 24 is
sustained. Claims 2—6, 8, 9, 11—18, and 25—27 fall with claims 1 and 24.
The Rejection of Claims 7 and 19—23
as Unpatentable Over Gibb and Blakeley
Appellants argue that “dependent claims 7 and 19—23 are allowable
for at least the reason that each depends, either directly or indirectly, from
allowable independent claim 1.” Appeal Br. 17. For the reasons discussed
above with respect to claim 1, the rejection of claim 1 is sustained.
Accordingly, claims 7 and 19—23 fall with claim 1. 37 C.F.R. §
41.37(c)(l)(iv).
Appellants also argue that “Blakeley fails to cure the deficiencies of
Gibb.” Appeal Br. 17. As discussed above with respect to claim 1, there are
no deficiencies in Gibb.
For these reasons, the rejection of claims 7 and 19—23 is sustained.
The Rejection of Claims 10
as Unpatentable Over Gibb and Dillon
Appellants argue that “dependent claim 10 is allowable for at least the
reason that claim 10 depends directly from allowable independent claim 1.”
Appeal Br. 17. For the reasons discussed above with respect to claim 1, the
rejection of claim 1 is sustained. Accordingly, claim 10 falls with claim 1.
37 C.F.R. §41.37(c)(l)(iv).
Appellants also argue that “Dillon fails to cure the deficiencies of
Gibb.” Appeal Br. 17. As discussed above with respect to claim 1, there are
no deficiencies in Gibb.
For these reasons, the rejection of claim 10 is sustained.
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Application 14/088,865
DECISION
For the above reasons, the Examiner’s rejections of claims 1—27 are
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)(l)(iv).
AFFIRMED
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