Ex Parte Warren

Patent Trials and Appeals BoardMar 22, 2019

14689642 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/689,642 04/17/2015 3017 7590 03/26/2019 BARLOW, JOSEPHS & HOLMES, LTD. 101 DYER STREET 5THFLOOR PROVIDENCE, RI 02903 FIRST NAMED INVENTOR Daniel Warren 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. W016 P02820-US1 2344 EXAMINER LAWSON,STACYN ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 03/26/2019 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): patent@barjos.com drj@barjos.com sjh@barjos.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL WARREN Appeal2018-005997 1 Application 14/689,6422 Technology Center 3600 Before: BRADLEYB. BAYAT, TARAL. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. CLAIMED INVENTION Appellant's claimed invention relates to a process wherein a dry liner is placed into a pipeline, the liner is wetted out with epoxy resin in the 1 Our decision references Appellant's Appeal Brief ("Br.," filed May 30, 2017), and the Examiner's Final Office Action ("Final Act.," mailed Feb. 14, 2017) and Answer ("Ans.," mailed July 12, 2017). 2 Appellant identifies Warren Environmental, Inc. as the real party in interest. Br. 1. Appeal2018-005997 Application 14/689,642 pipeline, and then a bladder slowly pressurizes the liner to bed it against the pipeline wall for curing. Spec. ,r 2. Claims 1 and 14 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for installing a liner in an underground pipeline, having an interior surface, comprising the steps of: placing a repair composite, in a dry, collapsed state into the pipeline; wetting out said repair composite by spray applying a resin to repair composite in said collapsed state within said pipeline; introducing pressurized fluid into a calibration hose positioned within said repair composite after said repair composite has been fully wetted out; pressing the repair composite against the interior surface of the pipeline so that the repair composite bonds to the interior surface of the pipeline; and removing the calibration hose from the repair composite. REJECTIONS Claim 4 is rejected under 35 U.S.C. Â§ 112(d) as of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Claims 1-17 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Warren (US 2006/0278290, pub. Dec. 14, 2006), Penza (US 6,311,730 B2, iss. Nov. 6, 2001), and Cohee (US 5,874,151, iss. Feb. 23, 1999). Claims 1-17 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Warren, Yokoshima (US 5,225,121, pub. July 6, 1993), and Cohee. 2 Appeal2018-005997 Application 14/689,642 ANALYSIS Improper Dependent Form Appellant does not address the Examiner's rejection of claim 4 under 35 U.S.C. Â§ 112(d). Therefore, we summarily sustain the Examiner's rejection. Obviousness over Warren, Penza, and Cohee In rejecting claims 1 and 14 under 35 U.S.C. Â§ 103 as obvious over Warren, Penza, and Cohee, the Examiner finds that Warren teaches wetting out a repair composite in a collapsed state with resin before the repair composite is placed in the pipeline. Final Act. 6 (citing Warren ,r 27), 9. The Examiner acknowledges that Warren does not explicitly disclose that the repair composite is in a dry state when placed into the pipeline and that the wetting out occurs within the pipeline. Id. at 6, 9. However, the Examiner finds that Penza teaches a method for installing a liner in an underground pipeline that involves wetting out the repair composite by applying a resin to a repair composite where the wetting out may be done at the time of manufacture, just prior to insertion into the pipe, or following insertion. Id. at 6-7 (citing Penza, col. 2, 11. 14--18), 9--10. Warren teaches a method for installing a liner to repair a pipeline. Warren ,r 1. After preparing a pipeline for repair, a quick setting resin is sprayed onto the inside wall surface of the pipeline. Id. ,r 24. A flexible lining hose is prepared and inserted into the pipeline in a collapsed state. Id. ,r 25. The lining hose includes an outer layer that surrounds an inner layer. Id. ,r 26. The outer layer is made from a rugged material that will adhere to the quick setting polymer resin. Id. Typically, the outer layer is made from a plastic material, such as polyvinyl chloride (PVC), 3 Appeal2018-005997 Application 14/689,642 polyurethane, polyethylene (PET), polypropylene, polyester, polyamide, i.e., materials relatively impervious to resin. Id. In contrast, the inner layer is a non-woven fibrous, resin-absorbing material, such as felt. Id. ,r 27. The resin is applied to the inner layer prior to placing the lining hose in the pipeline. Id. ,r 28. The Examiner determines that it would have been obvious to one of ordinary skill in the art "to perform the step of wetting out the dry repair composite in the collapsed state as disclosed by Warren following insertion within said pipeline as taught by Penza because both the outside and the inside of the pipeline are known wetting out locations that can be used interchangeably with expected results. Final Act. 7. However, because Warren's liner includes an inner layer made of a resin-absorbing material, such as felt, and an outer layer made of a non- resin-absorbing material, such as plastic, it is unclear why one of ordinary skill in the art with knowledge of Penza's teachings would be motivated to modify Warren's repair method by wetting out the liner by spray applying a resin to the repair composite in a collapsed state within the pipeline. In particular, the structure of Warren's liner layers suggests that the interior of the liner would not wet out if resin were sprayed onto the exterior. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. Â§ 103 of independent claims 1 and 14, and their dependent claims. Obviousness over Warren, Yokoshima, and Cohee The Examiner's rejection of claims 1-17 under 35 U.S.C. Â§ 103 as obvious over Warren, Yokoshima, and Cohee suffers the same deficiencies set forth above with respect to the rejection of the claims as obvious over Warren, Penza, and Cohee. Therefore, we do not sustain the Examiner's 4 Appeal2018-005997 Application 14/689,642 rejection of claims 1-17 under 35 U.S.C. Â§ 103 for the same reasons set forth above. DECISION The Examiner's rejection of claim 4 under 35 U.S.C. Â§ 112(d) is affirmed. The Examiner's rejections of claims 1-17 under 35 U.S.C. Â§ 103 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED-IN-PART 5