90012624 (P.T.A.B. Dec. 18, 2014)

Ex Parte 6524031 et al

Patent Trial and Appeal BoardDec 18, 2014

90012624 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/012,624 09/14/2012 6524031 50-11375 1836 77741 7590 12/19/2014 Brannon Sowers & Cracraft PC 1 North Pennsylvania Street Suite 800 Indianapolis, IN 46204 EXAMINER FOSTER, JIMMY G ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/19/2014 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 TRADEMARKOFFICE 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. 90/012,624 09/14/2012 6524031 50-11375 1836 77741 7590 12/19/2014 Brannon Sowers & Cracraft PC 1 North Pennsylvania Street Suite 800 Indianapolis, IN 46204 EXAMINER FOSTER, JIMMY G ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/19/2014 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 TRIC TOOLS, INC. Appellant ____________ Appeal 2014-008225 Reexamination Control 90/012,634 Patent 6,524,031 Technology Center 3900 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and BRANDON J. WARNER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 2 STATEMENT OF THE CASE1 Tric Tools, Inc. (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 4–19 and 25–31. Claims 1–3 and 20–22 have been canceled and claims 23 and 24 have been allowed by the Examiner.2,3 See Final Act. 2 and 31–33. We have jurisdiction over this appeal under 35 U.S.C. §§ 6(b) and 134(b). INVENTION Appellant’s invention relates to “devices and methods for the trenchless replacement of underground pipes.” Carter, col. 1, ll. 19–21 and Fig. 1. Claims 4, 6, 23, 25, and 29–31 are independent. Claim 4 and claim 30, with underlining omitted, are illustrative of the claimed invention and read as follows: 4. A device for the trenchless replacement of in-situ pipe, comprising: a mole; a length of cable, said cable being engagable to said mole; 1 This is the second Reexamination proceeding of US Patent 6,524,031, issued Feb. 25, 2003 (hereafter “Carter”). In the first Reexamination proceeding, Control No. 95/000,024, an Inter Partes Reexamination Certificate was issued on Mar. 18, 2008 as US 6,524,031 C1. 2 The Examiner did not provide page numbers on the Answer. As such, for ease of referring to the Examiner’s Answer, we have assigned page numbers 1 through 46. 3 We agree with the Examiner that Appellant’s Brief is incorrect in stating that claims 12–19 are allowed; rather, these claims are subject to rejections and are before us for review and discussed herein. Compare Br. 5, Ans. 2, n.1, with Final Act. 14–25 and 31–33. Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 3 a means for pulling said cable in a series of cyclic strokes that include a pulling stroke and a recovery stroke; a first cable engaging member that engages said cable on said pulling stroke and releases said cable on said recovery stroke; and a second cable engaging member that engages said cable on said recovery stroke and releases said cable on said pulling stroke; and wherein said first cable engaging member is formed for the sideways insertion of said cable therewithin. 30. A method for the trenchless replacement of pipe having a first end and a second end, comprising the steps of: digging a first hole to expose the first end; digging a second hole to expose a second end; disposing a cable through the pipe between the first end and the second end; engaging a mole to the cable at the first end; disposing a cable pulling means in the second hole; engaging a cable pulling means to the cable at the second end; pulling the mole through the pipe utilizing the cable pulling means in a series of cyclic strokes including a pulling stroke and a recovery stroke; and engaging the cable with a first cable engagement device on a second pulling stroke, and engaging said cable with a second cable engagement device on a recovery stroke. SUMMARY OF DECISION We AFFIRM. Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 4 REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 29–31 under 35 U.S.C. § 305 as enlarging the scope of the claims of the '031 patent.4 II. The Examiner rejected claim 31 under 35 U.S.C. § 112, second paragraph, as being indefinite. III. The Examiner rejected claims 4–8, 11, and 29 under 35 U.S.C. § 103(a) as unpatentable over Miller (XPANDIT Trenchless Pipe Replacement System Brochure, 1994), Vano (US 3,378,892, issued Apr. 23, 1968), and Brieuc (US 4,427,180, issued Jan. 24, 1984). IV. The Examiner rejected claims 12–14, 19, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Miller, Brieuc, and Handford. V. The Examiner rejected claims 9, 10, 15–18, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Miller, Brieuc, Vano, and Handford (US 5,328,297, issued July 12, 1994). VI. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as unpatentable over Miller, Cravy (US 5,544,977, issued Aug. 13, 1996), and Brieuc. VII. The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as unpatentable over Miller, Cravy, and Handford. 4 When referring to the “patented claims,” or “the '031 patent,” we refer to the claims of US 6,524,031 C1. Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 5 ANALYSIS Rejection I Claim 29 The Examiner determines that claim 29 is broadened with respect to claim 4 of the '031 patent because the limitation of “a cable pulling assembly” is broader than the means-plus-function recitation of “a means for pulling said cable.” Final Act. 3. In contrast, Appellant takes the position that the “language in claim 29, ‘a cable pulling assembly’ is actually narrower than the language in [patented] claim 1 or [pending] claim 4, as it refers to specific language supported by the specification of the application rather than the broader means-plus-function language of claim 1 or 4.” Br. 17. We are not persuaded by Appellant’s position because, as the Examiner correctly notes, under 35 U.S.C. § 112, sixth paragraph, a means- plus-function limitation “is to be construed to cover the [specific] structure described in the specification or equivalents thereof.” Final Act 3. Although we appreciate that Appellant’s Specification provides support for the limitation of “a cable pulling assembly” (see, e.g., Carter, col. 7, ll. 20–23), nonetheless, the disputed limitation is broader than the specific structure described in the Specification (see, e.g., id. at ll. 23–46), because it is not limited to the specific structure described in Appellant’s Specification, in contrast to the means-plus-function recitation of claim 4, which is so limited. Accordingly, we sustain the rejection of claim 29 under 35 U.S.C. § 305 as enlarging the scope of the claim of the '031 patent. Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 6 Claim 30 The Examiner finds that: Broadening in claim 30 with respect to the ['031] patent is present because relative to claim 23 (which is the broadest patented method claim after the first reexamination (Control. No. 95/000,024)) [the] following limitations are found to be missing in the new claim 30: wherein said cable pulling means includes a cable pulling device and a frame having said cable pulling device mounted thereto; and wherein said step of engaging a cable pulling means to said cable includes the further step of placing said frame upon a side surface of said cable after said cable has been disposed through said pipe. Final Act. 3. In response, Appellant argues that, “[t]he Examiner failed to compare [pending] claim 30 to claim 20 of the [originally] issued patent and thus erred in rejecting claim 30 due to broadening.” Br. 18. We are not persuaded by Appellant’s contention because, as the Examiner correctly noted, “the reexamination proceeding of a patent can effectively define a process by which previously broader patent coverage . . . has become substantially narrowed.” Ans. 36. Accordingly, we agree with the Examiner that, “the previous reexamination proceeding operated to narrow the scope of the patent claims of US Patent No. 6,524,031.” Id. As such, the Examiner is correct to compare pending claim 30 to claim 23 of US 6,524,031 C1 and not to canceled claim 20 of US 6,524,031 B2, as Appellant urges. Thus, because pending claim 30 fails to recite the last two Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 7 “wherein” clause limitations of claim 23, we agree with the Examiner that pending claim 30 includes improper broadening relative to the scope of the '031 patent. As such, we likewise sustain the rejection of claim 30 under 35 U.S.C. § 305 as enlarging the scope of the claim of the '031 patent. Claim 31 The Examiner finds that “claim 31 fails to recite all the components in claim 12 regarding the cable pulling device mounting frame.” Final Act. 4. In response, Appellant argues that, because claim 31 recites that, “the cable pulling device and the mounting frame are positionable in the hole,” claim 31 recites—in addition to patented claim 12—the orientation with respect to the ground, and thus pending claim 31 is narrower than patented claim 12. Br. 20. Although we appreciate Appellant’s position that claim 31 includes a limitation that is not present in claim 12, nonetheless, the Examiner is correct in that “[a] claim is broadened if it is broader in any one respect, even though it may be narrower in other respects.” See Final Act. 2; see also In re Rogoff, 261 F.2d 601, 603 (CCPA 1958). As such, although pending claim 31 includes a limitation not present in patented claim 12, nonetheless, because claim 31 fails to recite the specific components of claim 12’s “cable pulling device mounting frame,” we agree with the Examiner that merely because “claim 31 is narrower in a single respect, is unpersuasive.” See Ans. 39. Accordingly, we also sustain the rejection of claim 31 under 35 U.S.C. § 305 as enlarging the scope of the claims of the '031 patent. Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 8 Rejection II As Appellant does not address this rejection (see Br. 15–16), Appellant has waived any argument of error, and we thus summarily sustain the rejection of claim 31 under 35 U.S.C. § 112, second paragraph, as being indefinite. See In re Berger, 279 F.3d 975, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Rejections III and V Appellant presents essentially identical arguments for the rejections of claims 4–8, 11, and 29 and claims 9, 10, 15–18, 27, and 28, respectively. See Br. 21–23. As such, the following analysis applies equally to the two sets of claims, i.e., claims 4–8, 11, and 29, rejected over Miller, Vano, and Brieuc, and claims 9, 10, 15–18, 27, and 28, rejected over Miller, Brieuc, Vano, and Handford. With respect to the rejections of claims 4–11, Appellant argues that the Examiner relied on impermissible hindsight when combining the teachings of Miller, Vano, and Brieuc. Br. 21–22. According to Appellant, because Brieuc discloses a cyclical pulling stroke/recovery stroke engine, “the proposed combination of Vano with Miller and Brieuc (and Handford) would be antithetical to the teachings and operations of the Vano clamp, which is intended to engage a cable and remain engaged.” Id. at 23. Thus, Appellant concludes that the Examiner’s proposed combination “would both render Vano and/or Miller unsatisfactory for its respective intended purpose, Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 9 as well as change the principle of operation of one or both references.” Id. at 22–23 (citation omitted). We are not persuaded by Appellant’s arguments because obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner is not proposing to the use the particular construction of Vano’s clamp 2. Rather, the Examiner is proposing to provide the teaching of Vano’s sideways insertion passage 17 to the cable engagement members of Miller and Brieuc “for the purpose of permitting sideways entry into the engagement member” which “would be expected to be quicker than otherwise having to thread the cable through the engagement member.” See Final Act. 7–8 (citing Vano, col. 1, ll. 15–18 and 38–40; col. 3, ll. 14–18; and Figs. 1, 4, 5, and 8). Appellant fails to show error in the Examiner’s reasoning. Moreover, we note that because in the Examiner’s rejection, Miller’s device is being modified and not Vano’s, we do not agree with Appellant’s position that “[t]he Vano device would have to be impermissibly modified for cyclical use, which would render it unfit for its intended rescue/retrieval purpose.” See Br. 23. With respect to the rejection of claims 15–18, 27, and 28, Appellant relies on the arguments presented supra. See id. at 25. Furthermore, we note that, as to the rejection of claim 29, as Appellant does not address this rejection, Appellant has waived any argument of error. In conclusion, for the foregoing reasons, we sustain the rejections under 35 U.S.C. § 103(a) of claims 4–8, 11, and 29 as unpatentable over Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 10 Miller, Vano, and Brieuc and of claims 9, 10, 15–18, 27, and 28 as unpatentable over Miller, Brieuc, Vano, and Handford. Rejection IV Appellant presents essentially identical arguments with respect to the rejection of independent claims 12 and 25 under 35 U.S.C. § 103(a) as unpatentable over Miller, Brieuc, and Handford. See Br. 24–25. Appellant argues that, “[n]one of the references of record disclose, teach, or suggest the requisite cable mounting means for the sideways mounting of a side surface of said cable into said frame.” Id. at 24. According to Appellant, because Handford’s presser plate 18.7 is located remotely from frame 24 and winch assembly 12, “the frame and winch do not allow for side entry and engagement of the cable, while . . . claims 12 and 25 require side entry and engagement of the cable with the frame and pulley portions of the cable pulling means disposed.” Id. at 25; see also Handford, Fig. 1. We are not persuaded by Appellant’s arguments because, once more, Appellant is not addressing the Examiner’s proposed combination. More specifically, the Examiner finds that Miller discloses a mounting frame E, H, J, K and Handford discloses a mounting frame 14, 16, 18 having a presser plate 18.7 “for supporting the mounting frame against the side of the service pit, and with a peripheral recess (18.10) for extending the pulling cable (36) through the plate.” Final Act. 15–16. As such, the Examiner is not proposing to use the particular construction of Handford’s frame and winch assembly. Rather, the Examiner is proposing to provide Miller’s frame E, Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 11 H, J, K with a presser plate having a peripheral recess, as taught by Handford, “for supporting the frame of Miller against the side of the service pit/hole, and with a peripheral recess in the presser plate for permitting passage of Miller’s cable through the plate.” Id. at 16. Moreover, we agree with the Examiner that Appellant has failed to provide any persuasive evidence or technical reasoning “why elements 14, 16, 18 of Handford do not together define a frame.” See Ans. 42. We also agree with the Examiner that Appellant’s argument with respect to the location of the frame and the cable pulling means (i.e., winch) is unpersuasive because neither claim 12 nor claim 25 has such a requirement. See id. at 43. It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Lastly, we note that, as to the rejection of claims 13, 14, 19, and 26, because Appellant does not address this rejection, Appellant has waived any argument of error. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of claims 12–14, 19, 25, and 26 as unpatentable over Miller, Brieuc, and Handford. Rejections VI and VII As Appellant does not address the rejection of claims 30 and 31 (see Br. 15–16), Appellant has waived any argument of error, and we thus summarily sustain the rejections under 35 U.S.C. § 103(a) of claim 30 as unpatentable over Miller, Cravy, and Brieuc and of claim 31 as unpatentable Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 12 over Miller, Cravy, and Handford. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002). Secondary Considerations Appellant argues that the claimed invention exhibits “unexpected results and superior properties,” which are summarized by Appellant on page 26 of the Appeal Brief. A showing that a claimed combination produces superior results is entitled to significant weight in determining whether the combination would have been obvious only if the superior results would have been unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). In this case, however, Appellant’s submission fails to persuade us that the superior results of the claimed process and apparatus are unexpected. For example, as the Examiner correctly finds, the sideways mounting of a cable is known from Vano and providing less expensive components “constitutes an expected” result. See Ans. 47–48. We further agree with the Examiner’s finding that the properties of (1) locating the mounting frame above ground; (2) providing small, lightweight components; and (3) providing a larger pulling force by cable pulling device, are not being claimed. See id. at 47. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” Moreover, “[f]or objective [evidence of secondary considerations] to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 13 As such, on balance, the Examiner’s evidence of obviousness outweighs the Appellant’s assertions of unexpected results. Accordingly, the subject matter of claims 4–19 and 25–31 would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a) at the time Appellant’s invention was made. DECISION I. The Examiner’s decision to reject claims 29–31 under 35 U.S.C. § 305 as enlarging the scope of the claims of the patent being reexamined is AFFIRMED. II. The Examiner’s decision to reject claim 31 under 35 U.S.C. § 112, second paragraph, as being indefinite, is AFFIRMED. III. The Examiner’s decision to reject claims 4–19 and 25–31 under 35 U.S.C. § 103(a) is AFFIRMED. AFFIRMED rvb Appeal 2014-008225 Reexamination Control 90/012,624 Patent 6,524,031 14 Patent Owner BRANNON SOWERS & CRACRAFT, PC 1 North Pennsylvania Street Suite 800 Indianapolis, IN 46204 Third Party Requester SCHWEGMAN, LUNDBERG & WOESSNER, P.A. P.O. Box 2938 Minneapolis, MN 55402