Victor Kirilichin et al.

Patent Trials and Appeals Board

Aug 26, 2020

16027992 - (D) (P.T.A.B. Aug. 26, 2020)

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.
16/027,992 07/05/2018 Victor Kirilichin 05406-P0002C 5127
24126 7590 08/26/2020
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
AVERICK, LAWRENCE
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VICTOR KIRILICHIN, DAVID P. TURECHEK, and
BRIAN P. KRIEGER
____________

Appeal 2020-003395
Application 16/027,992
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1–13 as unpatentable under 35 U.S.C. § 103 over
Rothstein (US 4,646,816, iss. Mar. 3, 1987) and Lee (US 5,160,226, iss.
Nov. 3, 1992). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Engineered Inserts & Systems, Inc. as
the real party in interest. Appeal Br. 2.
2 This case came before the Board for regularly scheduled telephonic oral
hearing on August 18, 2020.
Appeal 2020-003395
Application 16/027,992
2
THE INVENTION
Appellant’s invention is a plug that seals a hole. Spec. ¶ 1. Claim 1,
reproduced below with the critical claim limitation at issue italicized, is
illustrative of the subject matter on appeal.
1. An insert for sealing a hole having a first diameter
comprising:
a core having a height and a tapered outer wall;
a threaded hole located in a first end of said core, a depth of
said threaded hole less than the height;
a cylindrical metallic sleeve having a through hole defining
an inner diameter of the cylindrical metallic sleeve wherein said
cylindrical metallic sleeve is in contact with and surrounds at
least part of said core;
said cylindrical metallic sleeve having a first end and a
second end;
a maximum outer diameter of said cylindrical metallic
sleeve is equal to or less than the first diameter;
a second end of said core having an outer diameter larger
than the inner diameter of the cylindrical metallic sleeve;
the first end of said core having a first end diameter
dimensioned such that prior to retraction of said core into said
cylindrical metallic sleeve and prior to engagement of said
threaded hole with a male threaded device, said first end of said
core is retained and in press fit contact at said second end of
said cylindrical metallic sleeve such that the core extends from
the first end of said core to the second end of said core in a
direction away from both the first and second ends of said
cylindrical metallic sleeve.
OPINION
Claims 1–5
Appellant argues claim 1, but raises no separate argument as to
claims 2–5. Appeal Br. 5–25. We treat claim 1 as representative and
claims 2–5 will stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds that Rothstein explicitly discloses the invention
as claimed except that the core and sleeve do not engage in a press fit
manner until after the threaded device is engaged and, therefore, not “prior
to” engagement of the threaded device. Non-Final Act. 4–6. The Examiner
relies on Lee as press fitting plug components without first engaging a
threaded device and concludes that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to press fit
Rothstein’s core and sleeve prior to placing them in the hole. Id. at 6–7.
According to the Examiner, a person of ordinary skill in the art would have
done this to pre-assemble the plug components to avoid mismatching of
parts. Id.
Appellant essentially argues just two points: (1) Rothstein and Lee
are not combinable because Lee’s hole and insert are tapered; and (2) the
Examiner gives insufficient reason to modify the location and accessibility
of Lee’s components. Appeal Br. 5–25. The primary thrust of Appellant’s
position is that, in Rothstein’s device, the core (plug 48) is disposed on the
distal end of the device and tapers inward from the distal end to the proximal
end and is drawn into the interior of sleeve 46 to radially expand the device
to fill the hole, whereas in contrast, Lee’s sleeve (plug body 14) is disposed
on the distal (“inner”) end of the device and Lee’s plug (frusto-conical
pin 12) is forced into the sleeve from the proximal end of the device or, in
other words, from proximate the surface opening of the hole to be plugged.
Id. As we understand the argument, this poses difficulty for disposing a
threaded hole near a first end of the core for threadably mating with a male
threaded device. Id.
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In response, the Examiner reiterates that the only thing missing from
Rothstein is an explicit teaching that the core and sleeve are press fit “prior
to” engagement with a threaded device. Ans. 4. The Examiner merely relies
on Lee for the explicit disclosure of pre-assembling by press fitting the core
and sleeve prior to deployment in an opening. Id.
Appellant’s Reply Brief, although lengthy, lacks persuasiveness. See
generally Reply Br. We deem it unnecessary to discuss Appellant’s lengthy
arguments in detail as the issues presented in this case are simple,
straightforward, and lead to a clear outcome. In essence, Appellant raises a
classic “bodily incorporation” argument, namely that relative juxtaposition
of core and sleeve components of Rothstein and Lee prevent the bodily
incorporation of Lee into Rothstein. However, “[t]he test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference....” In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012) (“a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements”).
Rothstein discloses a plug for sealing defective heat exchanger tubes.
Rothstein Abstract. In the Figure 5–8 embodiment, Rothstein discloses
plugging apparatus 45 comprised of plug 48, sleeve 46, and threaded
stem 49. Id. col. 8, ll. 32–38, Figs. 5–8. Plug portion 48 corresponds to
Appellant’s core. Id. col. 8, ll. 36–37, Fig 5. Sleeve member 46 corresponds
to Appellant’s sleeve. Id. The external surface of sleeve 46 is cylindrical
from shoulder 50 at its proximal end to its distal end. Id. col. 8, ll. 39–40,
Fig. 5. Sleeve 46 has a partially tapered internal surface. Id. col. 8,
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ll. 41–45. Stem 49 corresponds to Appellant’s threaded device. Id. The
distal end of sleeve 46 fits over the tapered sides of plug 48. Id. col. 8,
ll. 32–35, Figs. 5–8. Torque supplied to stem 49 draws sleeve 46 and
plug 48 toward each other causing radial expansion of sleeve 46 so as to fill
a hole and thereby seal a defective tube. Id. col. 9, ll. 34–44, Figs. 5–8.
Such torque is communicated through square gripping end 51 on the
proximal end of stem 49 using a wrench. Id. col. 9, ll. 28–44, Figs. 5–8. A
second wrench acts on threaded nut 54 to supply a pulling force to deform
sleeve 46. Id.
Thus, plug 48 is press fit (or friction fit) into sleeve 46. Figure 5 of
Rothstein appears to suggest that stem 49 is threaded into plug 48 before
plugging apparatus 45 is inserted into the hole to be plugged. Id. Fig. 5.
However, a person of ordinary skill in the art would understand that the
distal end of sleeve 46 could be press fit onto the proximal end of plug 48
before engaging stem 49. Id. Indeed, in our opinion, even a skill level
considerably less than that of “ordinary” skill would have been more than
sufficient to conceive and execute such a press fitting of the two
components. This could be accomplished by something as simple as the tap
of a hammer with the two components in axial, vertical alignment and
resting on a work bench. Depending on the materials used, the thickness of
the sleeve, and the axial forces applied, a person of ordinary skill in the art
would recognize that a press fit could be obtained before sufficient radial
expansion of sleeve 46 takes place so as inhibit insertion of plugging
apparatus 45 into tube 19. See id. Fig. 6 (showing that sleeve 46 retains its
cylindrical outer shape despite axial overlap of the distal end of sleeve 46
and the proximal end of plug 48). This is essentially identical to Appellant’s
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claim 1 embodiment that permits a tapered outer wall from top to bottom of
core 3. Spec. ¶ 32, Claims App.
Regardless of whether the core or the sleeve element end of the device
is inserted first into the hole to be plugged, we agree with the Examiner that
Lee teaches friction fitting of a core into a sleeve. We also agree that Lee
provides the requisite motivation to modify Rothstein as proposed in the
rejection. Conceiving of and executing a pre-insertion friction fit of
Rothstein’s plug and sleeve requires no more than ordinary skill. The result
of the modification is predictable and expected. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (explaining that the combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results).
Appellant’s arguments regarding the “tapering” of Lee’s components
are unpersuasive. Rothstein, Lee, and Appellant’s devices all rely on
tapering to utilize the well-known principle of the mechanical wedge to
radial expand a sleeve by insertion of a wedge shaped plug or core.
Appellant applies tapering or the mechanical principle of the wedge by
contouring the outer wall shape of the core. Spec. ¶ 32, Fig 1B. Rothstein
applies tapering on the outer surface of plug 48 and the inner surface 46b of
sleeve 45. Rothstein, col. 8, ll. 32–45, Figs 5–8. Lee applies tapering to
socket 22 and inner pin 12. Lee, col. 5, l. 3 – col. 6, l. 10, Fig 2. While the
locations of the tapering may vary from one device to another, a person of
ordinary skill in the art would understand that the mechanical principles
applied are the same.
Furthermore, although Appellant’s Specification teaches that a friction
fit occurs between a cylindrical section 7 of core 3 and void 10 of sleeve 5
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(Spec. ¶ 33), the Specification also teaches that tapered section 2 may extend
from the top of the core towards the bottom. Id. ¶ 32. Moreover, there is no
requirement in claim 1 that any portion of the external wall of core 3 be
cylindrical. Claims App. The only reasonable conclusion to be drawn from
the record is that a friction fit may be accomplished between tapered wall 2
of Appellant’s core 3 and the interior surface of void 10 of sleeve 5. Thus,
we discern no patentable distinction between the physical structure of the
respective core and sleeve components of Rothstein and Appellant’s claim 1
embodiment.
Although we do not deem resolution of the following issue necessary
to decide this case, there is an open question as to whether claim 1 actually
requires the core to be press-fit into the sleeve before engagement with the
threaded device. Claim 1 arguably just requires that the core and sleeve are
“dimensioned such that” they are capable of being press fit prior to
engagement of the threaded device. Claims App. Appellant appears to
import what amounts to a process limitation into what is otherwise an
apparatus claim so that the core, sleeve, and threaded device are assembled
in a series of process steps that must be performed in a particular sequence.
Appellant fails to persuade us that claim 1 necessarily must be interpreted as
requiring assembly of the claimed insert in any particular sequence.
Appellant similarly fails to persuade us that claim 1 must be construed such
that “retained and in press fit contact” is a positively recited structural
limitation as opposed to merely shedding light on what it means for the first
diameter of the core being “dimensioned such that . . . (etc.).” In that
regard, we are cognizant that the burden of precise claim drafting falls on
Appellant. In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
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Appellant’s and Rothstein’s devices appear to be equally capable of
functioning regardless of whether press fitting is performed before or after
engagement by the threaded device. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use
for an old product does not a make a claim to that old product patentable”).
We reiterate, however, that the analysis set forth in this paragraph is not
necessary to support our ultimate disposition of this case.
We have considered Appellant’s arguments to the contrary which,
although lengthy, are unpersuasive as they fail to account for the level of
skill in the art. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also
a person of ordinary creativity, not an automaton”). A “wedge” is widely
considered to be one of the earliest and simplest of machines. The plug
devices of Appellant, Rothstein, and Lee merely use the well-known
mechanical principles of the wedge in the context of a circumferential,
directional application of force. The invention here amounts to little more
than inserting a (tapered) round peg into a round hole. The mechanical
principles that come into play are viewed as elementary to the skilled artisan.
We are not apprised of error and, therefore, sustain the rejection of
claims 1–5.
Claims 6–9
Appellant argues independent claim 6, but does not separately argue
claims 7–9 that depend therefrom. Claims App., Appeal Br. 25–26. Claim 6
is representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 6 is substantially similar in scope to claim 1. Claims App.
Appellant argues that the rejection “ignores” the fact that Lee’s threaded
hole would be inaccessible to threaded device due to the juxtaposition of
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respective ends of frusto-conical pin 12 relative to the hole of plug body 14.
Appeal Br. 25–26.
Appellant’s argument mischaracterizes the Examiner’s rejection with
respect to the teachings of the references and how those teachings are
combined to render the claims unpatentable. Our discussion with respect to
claim 1 applies with equal force to claim 6. For the reasons expressed above
with respect to claim 1, we sustain the Examiner’s rejection of claims 6–9.
Claims 10–13
Appellant argues independent claim 10, but does not separately argue
claims 11–13 that depend therefrom. Claims App., Appeal Br. 26. Claim 10
is representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 10 is substantially similar in scope to claim 1. Claims App.
Appellant raises the same arguments that we previously considered and
found unpersuasive with respect to claims 1 and 6 and find equally
unpersuasive here. Appeal Br. 26.
For the reasons expressed above with respect to claims 1 and 6, we
sustain the Examiner’s rejection of claims 10–13.
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1-13 103 Rothstein, Lee 1-13

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).
AFFIRMED