Ex Parte Warren

Patent Trials and Appeals Board

Mar 29, 2019

14296704 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/296,704 06/05/2014
3017 7590 04/02/2019
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI 02903
FIRST NAMED INVENTOR
Danny 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 P02705-US1 1933
EXAMINER
PANCHOLI, VISHAL J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 DANNY WARREN
Appeal2018-007463
Application 14/296, 704
Technology Center 3700
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
WILLIAM A. CAPP, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Danny Warren ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 103: (1) claims 1--4
and 6 as unpatentable over Warren (US 6,868,870 B2, issued Mar. 22, 2005)
and Lepola (US 7,527,076 B2, issued May 5, 2009) and (2) claims 7-12 as
unpatentable over Warren and Blackmore (US 2006/0048832 Al, published
Mar. 9, 2006). Claim 5 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal2018-007463
Application 14/296, 704
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a method and a system for
installing a liner in a pipeline. See Spec. ,r,r 13, 24, Fig. 1. Claims 1 and 7
are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method for installing a liner in an underground utility
structure, having an interior surface, comprising the steps of:
applying a first resin coating to the interior surface of the
pipeline;
applying low pressure compressed air to invert a dry liner into
the interior of said pipeline at a controlled inversion rate of less
than or equal to 0.5 feet per minute and low inversion pressure;
and
increasing a pressure on the interior of said dry liner, after said
liner is fully inverted to imbed said dry liner into said resin
coating to fully bed said liner into said resin coating.
ANALYSIS
Obviousness over Warren and Lepola
Claims 1--4 and 6
Appellant does not offer arguments in favor of dependent claims 2--4
or 6 separate from those presented for independent claim 1. See Br. 5-7. 1
We select claim 1 as the representative claim, and claims 2--4 and 6 stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants contend that "[i]n contrast [to Warren] the present
invention as clearly claimed requires that the liner be inverted not inserted
by injecting low pressure air. In this manner[,] the advancing edge of the
1 Appeal Brief ("Br."), filed Jan. 10, 2018.
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Application 14/296, 704
liner is smoothly bedded into the resin as the liner inverts. This eliminates
all of the dragging steps." Br. 7.
Appellant's argument is not directed to the rejection as set forth by the
Examiner and is against Warren individually, where the rejection is based on
the combined teachings of Warren and Lepo la. See Final Act. 2--4. 2 In
addition, claim 1 recites nothing about "the advancing edge of the liner
[being] smoothly bedded into the resin as the liner inverts" and/or
elimination of "dragging steps." See Br. 6-7; see also id. 11, Claims App.;
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in
the claims cannot be relied upon for patentability).
In this case, the Examiner finds, and Appellant acknowledges, Warren
discloses "inversion of the liner." See Final Act. 2 (citing Warren 4:52---63)
see also id. at 6; Br. 6; Warren 4:60---63 ("While it is preferred that the lining
hose 12 is dragged into the pipeline 6 to be repaired, it is also possible to
invert the lining hose 12 into the pipeline 6." ( emphasis added)). In
particular, the Examiner finds "Warren teaches inverting the liner
substantially but does not explicitly teach that the liner is inverted at a low
pressure by compressed air." Final Act. 3. The Examiner relies on the
teachings of Lepo la for disclosing a liner being inverted at a low pressure by
compressed air. Final Act. 3; see also id. at 7-8. 3
The Examiner reasons it would have been obvious "to have used low
pressure compressed air to invert and install the pipe liner in a hose pipe" in
Warren's device, as taught by Lepola, "since inverting and installing the
2 Final Office Action ("Final Act."), dated Aug. 31, 2017.
3 We note Appellant acknowledges Lepo la discloses that a liner can be
"inverted at a low pressure." Br. 7 (citing Lepola, 2:27-34).
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Application 14/296, 704
liner in such a manner provides more control over the inverting process due
to the controllable nature of air pressure and rehabilitating operation can be
efficiently ... carried out." Final Act. 3. The Examiner further reasons
"using air pressure to invert the liner means the liner does not need to be
manually inverted either by a user or pulled via a string and thus allows for
more autonomous operation for the rehabilitation of a pipeline." Id.
The Examiner's findings are sound and the Examiner's conclusions
therefrom are based on rational underpinnings. Appellant does not provide
persuasive evidence or argument apprising us of error in the Examiner's
proposed reasoning for the combined teachings of Warren and Lepola.
Appellant contends there is absolutely no disclosure in Warren or
Lepola "about a reduced, controlled speed inversion based first on the
application of low pressure compressed air, then followed by the application
of high pressure air in a second step to bed the liner into the resin that has
already been applied within the pipeline." Br. 7; see also id. at 6 ("The
Examiner states that Warren provides ... that the liner is inverted at a
controlled rate.").
In the Answer, the Examiner states "the term 'controlled inversion
rate' has been given a broadest reasonable interpretation." Ans. 8; 4 see also
Final Act. 7. The Examiner finds "Warren teaches introducing the liner in
the pipeline at a controlled rate since any rate at which the liner is being
introduced is controlled in some manner." Ans. 8; see also Final Act. 7.
The Examiner reasons "[ s ]ince these apparatuses and applications are run by
human operators regardless of the exact rate of liner introduction in the
4 Examiner's Answer ("Ans."), dated Apr. 16, 2018.
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Application 14/296, 704
pipeline, the liner does indeed possess some degree of controlled rate."
Ans. 8; see also Final Act. 7. Thus, the Examiner concludes "even without
providing the exact controlled rate, Warren does teach either implicitly or
explicitly that the liner is applied to the pipeline at a controlled rate."
Ans. 8; see also Final Act. 7. The Examiner's findings are sound and the
Examiner's conclusions therefrom are based on rational underpinnings.
Appellant does not apprise us of error.
In the Answer, the Examiner also states "[a]ssuming arguendo that
Warren does not teach a controlled inversion rate with the use of low
pressure air, Lepola cures this deficiency since it teaches inverting the liner
using low pressure air similar to the modes of operations contemplated by
the instant invention." Ans. 8; see also Final Act. 7. According to the
Examiner, "Lepola further teaches that the liner is introduced in the pipeline
via the use [ of] low pressure compressed air and inverted into the pipeline."
Ans. 8; see also Final Act. 7. Thus, the Examiner takes the position "Lepo la
teaches a controlled rate of inverting the repair liner using low pressure
compressed air." Ans. 8; see also Final Act. 7. The Examiner's findings are
sound and the Examiner's conclusions therefrom are based on rational
underpinnings. Appellant does not apprise us of error.
Moreover, in the Final Office Action, the Examiner states "Warren in
view of Lepo la teaches that the dry liner is inverted at a certain rate using
low air pressure but does not explicitly teach that the inversion rate of the
dry liner is limited to 0.5 feet per minute." Final Act. 3. The Examiner
reasons it would have been obvious "to have modified the inverting device
of Warren such that the inversion rate is limited to 0.5 feet per minute to
ensure that the liner is not inverted too fast which may increase the risk of
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Application 14/296, 704
the liner not adhering the resin in the pipeline properly" and "it would be
obvious to choose an inversion that is appropriate for the application as an
obvious matter of design choice based on the size and dimensions of the
pipe." Final Act. 3--4. The Examiner's findings are sound and the
Examiner's conclusions therefrom are based on rational underpinnings.
Appellant does not provide persuasive evidence or argument apprising us of
error.
As to the "increasing a pressure" step of claim 1, the Examiner finds
Warren teaches "increasing the pressure in the pipeline using a calibration
hose 18. The disclosure in column 5, lines 58-65, clearly states that the
pressure can be increased using a pressurized fluid such as water but steam
or air may be used." Final Act. 7. Thus, the Examiner concludes "Warren
provides more than sufficient motivation to use pressurized aka compressed
air to control the application of the liner in the pipeline through inversion
method." Id. Appellant does not apprise us of error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Warren and Lepola. Accordingly, we sustain the Examiner's rejection of
claim 1. We further sustain the rejection of claims 2--4 and 6, which fall
with claim 1.
Obviousness over Warren and Blackmore
Claims 7-12
Appellant does not offer arguments in favor of dependent claims 8-12
separate from those presented for independent claim 7. See Br. 8-9. We
select claim 7 as the representative claim, and claims 8-12 stand or fall with
claim 7. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/296, 704
Appellant presents the same arguments to Warren as those presented
for Warren and Lepola. See Br. 8-9. As discussed above, these arguments
are not persuasive. Appellant contends "[t]he simple addition of the
Blackmore reference does not overcome the lack of disclosure in the base
Warren reference." Id. at 9. Similar to that discussed above for Warren and
Lepola, Appellant does not provide persuasive evidence or argument
apprising us of error in the Examiner's proposed reasoning for the combined
teachings of Warren and Blackmore.
For these reasons, we sustain the Examiner's rejection of independent
claim 7 as unpatentable over Warren and Blackmore. We further sustain the
rejection of claims 8-12, which fall with claim 7.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1--4 and 6
as unpatentable over Warren and Lepola.
We AFFIRM the decision of the Examiner to reject claims 7-12 as
unpatentable over Warren and Blackmore.
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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