Ex Parte 7712796 et al

Patent Trial and Appeal Board

Feb 21, 2017

95001880 (P.T.A.B. Feb. 21, 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.
95/001,880 02/01/2012 7712796 191322-7022 2629
25944 7590 02/22/2017
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/22/2017 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
____________________

ANVIL INTERNATIONAL, LLC.
Requester, Appellant

v.

VICTALIC COMPANY1
Patent Owner, Respondent
____________________

Appeal 2016-007551
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Patent US 7,712,796 B22
Technology Center 3900
____________________

Before DANIEL S. SONG, RAE LYNN P. GUEST, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
Victaulic Company is the Patent Owner and the real party in interest
(Respondent Brief 1).
2 Patent US 7,712,796 B2 issued to Gibb et al. on May 11, 2010 (hereinafter
“the ’796 patent”), and is a divisional of Patent US 7,086,131 B2 issued
August 8, 2006 to Gibb et al., which was the subject of Appeal 2016-003414
decided on July 12, 2016.
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STATEMENT OF THE CASE
Claims 1–16, 18–28, 30–38, 41, and 43–45 are subject to
reexamination, and have been confirmed (Right to Appeal Notice3 PTOL-
2066). The Requester appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner’s decision to not adopt certain proposed rejections relative to
these claims (App. Br. 1). We have jurisdiction under 35 U.S.C. §§ 134(b)
and 315.
The Patent Owner relies on its Respondent Brief (hereinafter “Resp.
Br.”) and the declarations of Mr. Hayden, Mr. Dole, and Mr. Thau in support
of the Examiner’s position. The Requester relies on its Appeal Brief,
Rebuttal Brief, and the declarations of Mr. Rung, Mr. Sanders, and Mr.
Fleury in support of its appeal. The Requester, although the appellant, has
filed Notice of Non-Participation in Inter Partes Reexamination on October
17, 2016, informing the Patent and Trademark Office of its non-participation
in the present proceeding.
An oral hearing with only the representative of the Patent Owner was
held before the Patent Trial and Appeal Board on November 16, 2016. A
transcript thereof was entered into the electronic record on December 9,
2016. We are also informed that the ’796 patent is involved in various legal
proceedings as identified in the Appeal Brief (see App. Br. 6–7).
We REVERSE the Examiner’s decision to not reject the claims on
appeal, and denominate the reversal as a New Ground of Rejection.

3 We note that the Examiner’s Answer incorporates the Right to Appeal
Notice (hereinafter “RAN”).

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THE INVENTION
The ’796 patent is directed to a deformable pipe coupling (Title),
representative independent claim 1 stating as follows (App. Br. 61, Claims
App.):
1. In combination, interconnectable pipe coupling segments
and a pair of pipe elements, each said coupling segment being
positionable straddling facing end portions of said pair of pipe
elements for securing said pipe elements together in end-to-end
relationship, wherein said end portions of said pipe elements
have an outer surface of substantially cylindrical profile, said
pipe elements each having a circumferential groove in said
outer surfaces of said end portions, and wherein each said
segment comprises:
first and second arcuate surfaces adapted to contact the
outer surfaces of said pipe elements within said circumferential
grooves, said arcuate surfaces being in spaced apart relation to
one another on opposite sides of said segment, each of said
arcuate surfaces subtending an angle of less than 180° and
having a radius of curvature greater than the radius of curvature
of said outer surfaces of said pipe elements exclusive of said
circumferential grooves; and
connection members for adjustably connecting one
coupling segment to another, said connection members being
adjustably tightenable for drawing said arcuate surfaces of said
segments into contact with said outer surfaces of said pipe
elements within said circumferential grooves, said segments
being deformable upon adjustable tightening of said connection
members so as to substantially conform the curvature of said
arcuate surfaces to the outer surfaces of said pipe elements
within said circumferential grooves.

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PROPOSED REJECTIONS4
1. Claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34, 41, 43, and
44 are anticipated or rendered obvious by Reynolds.
2. Claims 1–5, 7–14, 21–28, 32–37, 41, 43 and 44 are obvious
over Webb in view of Reynolds.
3. Claims 1, 21, 41, and 44 are obvious over Webb in view of
Reynolds and further in view of Lane.
4. Claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34, 41, 43, and
44 are anticipated or rendered obvious by Lewis.
5. Claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34, 41, 43, and
44 are obvious over Lewis in view of any one of (1) Reynolds; (2) Reynolds
further in view of Webb; (3) Reynolds further in view of Lane; and (4) Dole.
6. Claims 6, 18–20, 30 and 31 are obvious over Engman in view
of any one of (1) Reynolds; (2) Reynolds further in view of Webb; (3)
Lewis; (4) Lewis further in view of Reynolds; (5) Lewis further in view of
Reynolds and Webb; and (6) Lewis further in view of Reynolds and Lane.
7. Claims 10, 32, and 45 are obvious over Thiessen in view of any
one of (1) Reynolds; (2) Reynolds further in view of Webb; (3) Lewis; (4)
Lewis further in view of Reynolds; (5) Lewis further in view of Reynolds
and Webb; and (6) Lewis further in view of Reynolds and Lane.

4 We utilize the numbering corresponding to the “Issues” enumerated by
Requester in its Appeal Brief (App. Br. 14–15).
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ANALYSIS
Preliminarily, we note that only those arguments timely made in the
briefs of record in this appeal have been considered. Other arguments not
made or those not properly presented to the Board have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any
arguments or authorities not included in the brief permitted under this
section or §§ 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown”).

Proposed Rejection 1
The Requester seeks reversal of the Examiner’s decision to not reject
claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34, 41, 43, and 44 as being
anticipated or obvious by Reynolds. The Examiner declines to reject the
claims finding that:
the Fig. 13 embodiment of Reynolds is separate and distinct
from (i.e., not combinable with) the Fig. 7 embodiment and,
therefore, Reynolds does not teach coupling segments having
both (a) arcuate surfaces engaging grooved pipe elements (as in
Fig. 7) and (b) arcuate surfaces subtending an angle less than
180° and having a radius greater than the radius of the outer
surfaces of the pipe elements (as in Fig. 13).
(RAN 8).
The Examiner also finds that:
the coupling segments in the Fig. 13 and Fig. 14 embodiment of
Reynolds deform upon tightening such that they conform to the
gasket or seal and do not conform to the outer surfaces of the
pipe elements.
(Id.).
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The Examiner further finds that:
The Fig. 13 embodiment is specifically designed to apply
uniform pressure to the gasket/seal, requiring that the coupling
segments must only engage and compress the gasket/seal while
remaining spaced a small distance from the outer surfaces of the
pipe elements. Accordingly, modifying Reynolds such that the
arcuate surfaces are brought into contact with the outer surfaces
of the pipe elements and conform substantially to those outer
surfaces would render the Reynolds coupling unsatisfactory for
its intended purpose and change the principle of operation of
the coupling.
(Id. at 9).
We agree with the Requester that the Examiner erred in not rejecting
these claims, at least based on obviousness in view of Reynolds. The
findings and conclusions of the Examiner, and arguments of the Patent
Owner in support thereof, are addressed infra. Furthermore, we have fully
considered the Patent Owner’s proffered evidence of secondary
considerations, including the assertions of long-felt need, commercial
success, and copying as set forth in the Declaration of Thau, as well as the
Requester’s rebuttal regarding the proffered evidence including the
Declaration of Sanders (see Decl. Thau ¶¶5–23; Decl. Sanders ¶¶52–55; see
also Reply to the Office Action in Inter Partes Reexamination Dated
February 27, 2012, pgs. 28–30; Third Party Requester Comments on Office
Action and Reply dated May 25, 2012, pgs. 21–29). In review of the
evidence, we agree with the Examiner that “the patent owner’s evidence of
secondary considerations fails to persuasively establish long-felt but
unresolved need, commercial success, or copying by competitors.” (RAN
16–17). In this regard, considering that the Patent Owner’s arguments for
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patentability is directed to the prima facie case of obviousness, we do not
find it necessary to explicitly address the secondary considerations evidence
herein.
Turning to the substantive issues in dispute, the Patent Owner agrees
with the Examiner that the pipe coupling shown in Figure 13 is separate and
distinct from the embodiments of Figures 1–10 and 12 so that they cannot be
combined together (Resp. Br. 6–8).5 However, a fair reading of Reynolds
indicates the contrary. Figure 7 of Reynolds is reproduced below.

Figure 7 of Reynolds reproduced above shows a cross-section through
a pipe joint in accordance with one embodiment in which edges of the
coupling segments (i.e., casing k) are received within grooves at ends of pipe
segments g (Reynolds, pg. 1, ll. 67–71; pg. 3, ll. 63–68; Fig. 7).

5 As to the ancillary issue of whether Figures 13 and 14 of Reynolds depict
the same or different embodiment (see RAN 8; App. Br. 19–22; Resp. Br. 6–
7), the Patent Owner argues that this issue need not be addressed by the
Board because it is immaterial to the ultimate conclusion as to whether
Figures 1–10 and 12 are separate, distinct and not combinable with Figure
13 (Resp. Br. 8). While, substantively, we agree with the Requester for the
reasons set forth in its Appeal Brief pages 19 to 22 and in the Declaration of
Rung, paragraph 19, we also agree with the Patent Owner that the issue is
not dispositive as to the issue at hand, and thus, do not discuss the issue
further.
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Reynolds discloses that the embodiment shown in Figure 12 “is a
front elevation of a two part housing suitable for use with any of the pipe
jointing elements illustrated in the preceding figures [Figs. 1–10].”
(Reynolds, pg. 1, ll. 85–89; see also Reynolds, Fig. 12.). With respect to
Figure 13, Reynolds explains that:
In actual practice it has been found that although a
housing k such as is illustrated in Figure 12 gives moderately
satisfactory results, difficulties are introduced in many of the
varied conditions which exist owing to the engagement by parts
of the housing k with the element a before the bolts pp are fully
tightened with the result that upon continued tightening of the
bolts pp defective jointing is apt to arise.
To overcome this, the housing k may comprise two
flexible parts qq which are non-circular in shape as illustrated in
Figure[] 13 and initially only engage with very small areas of
the element a. Upon screwing up the nuts on the bolts pp of
such a housing k the parts qq are gradually deformed into
circular shape and enwrap the element a until it is fully
enclosed within the housing k the pressure of the housing k
being then evenly distributed over the whole of the element a.
(Reynolds, pg. 3, l. 118–pg. 4, l. 8.)
Correspondingly, Reynolds teaches that housing k with flexible parts
q as shown in Figure 13 is a substitute for, or an alternative to, the two part
housing shown in Figure 12, the flexible parts of Figure 13 better addressing
the difficulties introduced by varied conditions than the two part housing of
Figure 12. A person of ordinary skill in the art would have understood the
above disclosure in Reynolds as teaching the applicability of the
embodiment of Figure 13 to the various configurations shown in Figures 1–
10, just like the housing shown in Figure 12 (see also Decl. Rung, ¶18).
There is nothing in the subsequent remaining specification of Reynolds that
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establishes incompatibility of the housing k shown in Figure 13 with the pipe
jointing elements shown in the prior figures, or otherwise restricts its
applicability.
Hence, we agree with the Requester that:
Reynolds teaches that the FIG. 12 housing “is suitable for use
with any of the pipe jointing elements illustrated in the
preceding figures” (1:85-88), which includes FIG. 7. Reynolds
further teaches that the FIG. 13 housing is an improvement to
the FIG. 12 housing, thereby contradicting the notion that the
FIG. 13 housing is “not compatible with” FIG. 7. (Reynolds,
1:85-96, 3:118-4:8; Rung, ¶15.)
(App. Br. 18–19).
As noted, the Examiner also finds that, in Reynolds, the arcuate
surfaces of the coupling segments qq are spaced from the outer surfaces of
the pipe elements g so that they conform to the seal a, and do not conform to
the outer surface of the pipe elements (RAN 8–9). In this regard, the
Examiner finds that in the embodiment shown in Figure 13:
the coupling segments must only engage and compress the
gasket/seal while remaining spaced a small distance from the
outer surfaces of the pipe elements. Accordingly, modifying
Reynolds such that the arcuate surfaces are brought into contact
with the outer surfaces of the pipe elements and conform
substantially to those outer surfaces would render the Reynolds
coupling unsatisfactory for its intended purpose and change the
principle of operation of the coupling.
(RAN 9).
The Patent Owner agrees with the Examiner and asserts that a person
of ordinary skill in the art would understand that, in Reynolds, the coupling
segments qq shown in Figure 13 do not contact, or deform to conform to the
surfaces of pipes g, either within or outside of the grooves (Resp. Br. 8–11).
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Figure 13 of Reynolds is reproduced below.

Figure 13 of Reynolds reproduced above shows a front elevation view
of an especially arranged housing adapted to apply pressure to the pipe
jointing element a in a graduated manner (Reynolds, pg. 1, ll. 90–96).
Contrary to the findings of the Examiner and the assertions of the
Patent Owner, we find that Figure 13 of Reynolds, more likely than not,
discloses that the end edge of the coupling segments qq contact the bottom
surface of the groove of the pipe elements g (Reynolds, Fig. 13). While the
Patent Owner asserts that the depiction of two dashed lines representing the
bottom of the groove on the pipe g and the end of the coupling segment qq
indicates a space therebetween (Resp. Br. 10), Figure 13 illustrates these two
dashed lines are in contact with each other thereby indicating the
corresponding components are in contact.
Moreover, as the Requester points out, Figure 13 of Reynolds
illustrates the pipe coupling “prior to any significant tightening of the bolts”
(App. Br. 23). Hence, to any extent that the contacting dashed lines do not
mean that the represented components are in actual contact, such actual
contact would have occurred upon tightening of the bolts, considering the
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seal a is compressible. Correspondingly, tightening of the bolts would have
caused the arcuate surfaces to contact the pipe within the grooves and the
pipes would thereafter serve as a mandrel around which the coupling
segments must deform to conform the arcuate surfaces of the pipes.
(App. Br. 25). A person of ordinary skill in the art would reasonably infer
such contact based on the disclosure of Reynolds. See In re Preda, 401 F.2d
825, 826 (CCPA 1968)(in considering the scope and content of the prior art,
“it is proper to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”).
In the above regard, we find that Reynolds more likely than not,
discloses conforming arcuate surfaces of the two flexible parts qq of the
housing k shown in Figure 13, to the pipe elements g within the groove. We
find no persuasive basis to conclude that, in Reynolds, “the coupling
segments must only engage and compress the gasket/seal while remaining
spaced a small distance from the outer surfaces of the pipe elements” as
found by the Examiner (RAN 9) and as asserted by the Patent Owner (see
Resp. Br. 9; Decl. Rung ¶29). The Patent Owner asserts that “[a]ny
engagement of the annular surfaces of the Reynolds housings with the pipes
would limit the ability of the housings, including flexible segments qq, to
compress seal a.” (Resp. Br. 9, citing Decl. Hayden ¶20). The Patent
Owner further argues that “[i]f the Reynolds coupling segments contacted
the bottom of the grooves, one key may ‘bottom out’ on the uppermost pipe
and prevent the other key from moving ‘down’ enough to sufficiently
compress and enwrap the seal.” (Id., citing Decl. Hayden ¶22).
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We do not find these arguments persuasive because they are
speculative, and the functionality of the Reynolds coupling, as well as all
couplings generally, depends on the relative sizes of the components (i.e.,
segments, seal, pipes, grooves on pipes), as well as the axial displacement or
eccentricity of the pipes, or the lack thereof. Situations can always be
envisioned wherein a coupling would not properly function or seal.
However, appropriate dimensioning and application of an appropriate pipe
coupling to a given application and situation, including the presence or
absence of misalignment of the pipes, is well within the ordinary skill of
those in the art as generally evidenced by the prior art of record. For
example, Mr. Hayden declares that “[i]f the annular surfaces of the Reynolds
housings engage the outer surfaces of the pipes within the grooves,” it would
“cease any further deformation of the seals by the coupling segments.”
(Decl. Hayden ¶21). However, the components of the coupling would have
been appropriately dimensioned by one of ordinary skill such that upon such
contact, the desired amount of compression of the seal is attained to
effectuate the sealing function.
Moreover, Mr. Hayden further observes that “Reynolds addresses pipe
joints having axial displacement or eccentricity between the two pipe ends
being joined,” and that contact between the coupling segments and the
bottom of the grooves would cause alignment of the pipes, “thus negating a
condition for which the seals are designed.” (Decl. Hayden ¶22). However,
not only is this argument speculative, while Reynolds does teach the added
functionality of sealing around slightly, axially misaligned pipe elements
through its seal construction, nowhere does Reynolds disclose that such
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misalignment of the pipe elements is desirable or necessary for the disclosed
pipe coupling to function or be used (see App. Br. 26 (“Nothing within
Reynolds suggests that the couplings are designed to require gaps or that the
housing should not contact the outer surfaces of the pipes”); see also Reb.
Br. 9). The disclosure of Reynolds makes clear that the disclosed pipe
coupling with its seal can be used in broader situations than can
conventional pipe couplings because it can accommodate slight
misalignment of the pipe elements, but not that it cannot be used with
properly aligned pipe elements.
Reynolds also does not disclose that a space or gap between the
bottom of the groove and end of the coupling segments is necessary for the
disclosed pipe coupling to function. In this regard, the focus of Reynolds is
in providing enhanced sealing to even accommodate certain amount of pipe
misalignment by providing flanges c with an internal corner (i.e., the
upwardly pointed tip of the distal end of the seal) that contacts web b, such
that the flange c is compressed into the pipe surface via mechanical
compression acting on the flanges, as well as hydraulic pressure, to maintain
the sealing interface at the distal end of the seal, instead of merely relying
upon hydraulic forces (see Reynolds, pg. 2, ll. 60–107; Figs. 3, 5, 7). Such
functionality of the enhanced seal does not require a gap between the
segments of the coupling and the pipe elements. We do not find a basis for
the Examiner’s position to the contrary.
A person of ordinary skill in the art would appreciate that the
disclosed pipe coupling of Reynolds and its seal can be used with properly
aligned pipe elements. The fact that the seal of Reynolds is designed to
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accommodate such slight misalignment that results in the illustrated space or
gap does not mean that it is teaching that such space or gap is necessary or
even desirable. The space or gap in the illustrations of Reynolds appear to
be an artifact of applying the pipe coupling of Reynolds to axially
misaligned pipe elements, thereby highlighting the capability of the pipe
coupling disclosed therein. In addition, as noted by the Requester (App. Br.
7), Reynolds does not specify that various illustrations such as that shown in
Figure 7, illustrate the pipe joint in the fully tightened configuration so that
such gaps may no longer be present upon tightening of the coupling.
Nevertheless, we recognize that the small gap illustrated between the
bottom of the groove and end of the coupling segments in the various figures
of Reynolds calls into question as to whether arcuate surfaces of the
coupling elements necessarily contact the bottom surface of the grooves (see
Resp. Br. 11). Moreover, it is not entirely clear whether Figure 13 by itself
necessarily discloses each and every limitations of the claims, or requires
modification in view of Figure 7. Correspondingly, in view of these
uncertainties, we decline to reverse the Examiner’s decision to not reject the
claims based on anticipation by Reynolds.
However, as pointed out by the Requester (App. Br. 29; Reb. Br. 11–
12), to the extent that Figure 13 is a separate and distinct embodiment,
“[c]ombining two embodiments disclosed adjacent to each other in a prior
art patent does not require a leap of inventiveness.” Boston Scientific v.
Cordis, 554 F.3d 982, 991 (Fed. Cir. 2009). In this regard, even if the above
finding regarding contact interface between the arcuate surface of the
coupling segment and the bottom of the groove on the pipe elements is not
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correct, such an interface would have been obvious to a person of ordinary
skill in the art based on Reynolds alone to ensure proper seal compression
and to avoid seal over-compression/seal crush. In contrast to the Patent
Owner’s assertions, we find persuasive and agree with the Requester’s
declarant, Mr. Rung, who attests that a person of ordinary skill in the art
would have been motivated to “maintain contact with the bottom surfaces of
the groove along the entire periphery of the pipes for the purpose of ensuring
uniform pressure on the seal along the entire periphery of the pipes,” and
that “contact between the arcuate surfaces of the housing and the outer
surface of the pipes would actually help ensure uniform gasket compression
around the pipes and would not hinder gasket compression.” (Decl. Rung ¶¶
22, 25–26; see also Reb. Br. 9). We further find persuasive and generally
agree that “contact between the arcuate surfaces of the housing and the outer
surface of the pipes is necessary to prevent over-compression of the gasket
at the mid-points of the flexible parts qq of the housing.” (Decl. Rung ¶ 26;
see also Reb. Br. 9). Such contact, even if not necessary, would have been
desirable to prevent over-compression of the sealing gasket in some, if not
all, applications of the pipe couplings, and thus, obvious to one of ordinary
skill in the art. Reynolds discloses deforming the arcuate surfaces of the
clamp so that the arcuate surfaces are received within the grooves of the
groove-ended pipes. With such contact between the arcuate surfaces and the
grooves of the pipes, the pipes would serve as a mandrel upon which the
arcuate surfaces conform to the pipe surface.
In this regard, the assertion that the coupling segments of Reynolds
remains a spaced distance from the pipe elements is not only unpersuasive,
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but it does not fully account for the obvious variation in which the arcuate
surfaces of the coupling segments and the depth of the groove on the pipes
are used to control the compression of the seal so as to avoid over-
compression and crush. To any extent that the assertion of the Patent Owner
and the Examiner is valid, the above noted variation of the pipe coupling in
Reynolds would have been obvious to a person of ordinary skill and
creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)(“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.); see also id. at 417 (“When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.”).
Specifically, as the Requester points out (App. Br. 29–30),
engagement between arcuate surfaces and grooves of grooved-ended pipes
are admitted prior art (see Spec., col. 1, ll. 30–58). Moreover, such
engagement having contact between the arcuate surfaces of the coupling and
the bottom of the grooves was also well-known in the art.6 Hence, we agree
with the Requester that:

6 In this regard, while not explicitly relied upon, we observe that such
contact between the couplings and the bottoms of the grooves of the pipes
are demonstrated in the art of record. For instance, Webb (Figs. 3, 12),
Tribe (Fig. 6), and Thiessen (Figs. 5, 8–11), each disclose pipe couplings
wherein the arcuate keys contact the bottoms of the grooves of the pipes.
See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (prior art
of record not specifically relied upon in the rejection considered as evidence
of the state of the art, common knowledge, and common sense of one of
ordinary skill in the art).
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it has been well known in the pipe coupling industry since well
before the date of invention that the arcuate keys may be sized
to contact the bottoms of the grooves around the entire
periphery of the pipes to ensure the pipes remain coupled.
(App. Br. 29; see also Rung, ¶66).
Having reviewed claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34,
41, 43, and 44, we discern no patentable subject matter in view of Reynolds
as discussed above. As to independent claims 21 and 41, and claims
ultimately depending therefrom, they merely require “said connection
members being adjustably tightenable for drawing said arcuate surfaces of
said segments into contact with said outer surfaces of said pipe elements
within said circumferential grooves when said pipe elements are inserted
into said central space.” (App. Br. 64, 68, Claims App., emphasis added).
Such language merely recites intended use, and is satisfied by Reynolds,
which discloses bolts p capable of tightening the pipe coupling after the pipe
ends are in the coupling (Reynolds, pg. 4, ll. 28).
Thus, the claimed pipe coupling is a predictable variation of the pipe
coupling of Reynolds that would have been obvious to a person of ordinary
skill and creativity. KSR, 550 U.S. at 417, 421. Correspondingly, in view of
the above considerations, we reverse the Examiner’s decision to not reject
these claims as being obvious under 35 U.S.C. §103 based on Reynolds
alone, and denominate the same as a New Ground of Rejection.

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Proposed Rejection 2
The Requester also argues that claims 1–5, 7–14, 21–28, 32–37, 41,
43 and 44 are obvious over Webb in view of Reynolds. The Requester
argues that like Reynolds,
Webb also teaches the “radius of curvature” and “substantially
conform” limitations by disclosing that, e.g., “prior to
tightening down of the nuts, each coupling segment is of a
radius slightly greater than the radius of the pipe” (8:33-35),
and that “upon tightening of the bolts, the respective coupling
segments flex about the center thereof” (8:49-51) to bring the
arcuate surfaces into engagement within the grooves. (Rung,
¶¶38-39.)
(App. Br. 32).
Indeed, Webb discloses a pipe coupling having coupling segments
with “a radius slightly greater than the radius of the pipe,” that “subtend an
arc of slightly less than 180 degrees,” and upon tightening of the bolts, “the
coupling segments flex about the center thereof, which at that time is in line
or face engagement with the pipes.” (Webb, col. 8, ll. 33–40, 49–52; Figs.
4, 5). Webb further discloses that the coupling segments include keys that
engage corresponding grooves in the pipes upon engagement with the pipes
(see, e.g., Webb, col. 8, ll. 5–8; Fig. 3).
The Examiner declines to reject the claims based on the finding that
such a combination “would render the coupling disclosed in Webb
unsatisfactory for its intended purpose” because, whereas Webb’s coupling
is designed for “high pressure applications requiring increased strength and
stiffness/rigidity,” the “Reynolds coupling is designed for low pressure
applications and has a high degree of flexibility.” (RAN 9; see also Resp.
Br. 14–15; Decl. Hayden ¶¶35–40). The Requester disagrees and argues that
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“[w]hile the Webb coupling may have ‘particular utility’ in high pressure
applications, there is no suggestion that the Webb coupling, like other
segmented couplings, would not find satisfactory use in other pressure
environments,” and further argues that the claims are not restricted to a
particular pressure environment (App. Br. 35).
While we generally agree with the Requester, we especially find
persuasive, the Requester’s alternative argument that is more appropriately
characterized as being based on modifying Reynolds in view of Webb. In
particular, as the Requester argues:
even if, arguendo, Reynolds does not disclose arcuate surfaces
contacting or substantially conforming with the bottom surfaces
of the grooves, one of ordinary skill in the art would be
motivated to lengthen the arcuate keys of FIG. 13 of Reynolds
to bring the arcuate surfaces into “axial face” contact with the
bottom surfaces of the grooves because Webb explicitly states
that this is “desirable.” (Webb, 7: 1-5).
(App. Br. 38).
Specifically, Webb evinces that it was well-known in the art to
provide such a contacting interface between the arcuate end surfaces of the
coupling segments and the bottom of the grooves in the pipe elements
(Webb, Figs. 3, 12; col. 7, ll. 1–5). In addition to Figures 3 and 12 that
explicitly show such contact, Webb states “[i]t may further be desirable that
each key be formed for it to be of maximum permissible radial extent, and
may, at least under certain conditions, be in close juxtaposition or even in
axial face contact with the axial bottom surface of the associated groove.”
(Webb, col. 7, ll. 1–5). Webb further teaches that the pressure handling
capability of a segmented coupling utilizing a key and groove is increased
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by increasing the area of surface contact between the key and the groove
(Webb, col. 6, ll. 38–42).
The Patent Owner argues that the contact disclosed in Webb is in
reference to the contact between “radial sidewalls of the grooves and the
keys,” and observes that Webb does not state that contact with the bottoms
of the grooves contributes to the firm mechanical coupling, or to conforming
of the arcuate surfaces (Resp. Br. 16; see also Decl. Hayden ¶33). However,
this argument is unpersuasive because the surface contact between the
sidewalls of the grooves and the keys is maximized by having the key extend
and protrude to the bottom of the groove (i.e., the full depth of the groove).
In such a configuration, the key would have contacted the bottom of the
groove. Moreover, notwithstanding the fact that in view of such contact, the
coupling segments of Webb would conform to the surface of the pipes upon
tightening, to any extent that Reynolds lacks explicit disclosure of contact
between the arcuate surface of the coupling segment and the bottom of the
groove in the pipe elements, it would have been obvious to one of ordinary
skill in the art to modify the coupling of Reynolds in order to maximize the
area of surface contact between the key and the groove as explicitly taught
by Webb. Such modification to the coupling of Reynolds would have
resulted in contact with the bottom of the groove, and conformance of the
coupling segments as the pipe coupling is tightened.
As previously noted relative to Rejection 1, having reviewed claims 1,
2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34, 41, 43, and 44, we discern no
patentable subject matter in view of Webb and Reynolds as discussed above.
Correspondingly, in view of the above, we also reverse the Examiner’s
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decision to not adopt Rejection 2 based on the combination of Webb and
Reynolds (or more appropriately, Reynolds in view of Webb), and
denominate the same as a New Ground of Rejection.

Proposed Rejection 3
The Requester argues that claims 1, 21, 41, and 44 are obvious over
Webb in view of Reynolds and further in view of Lane (App. Br. 39). As
noted, independent claims 21 and 41 merely require “said connection
members being adjustably tightenable for drawing said arcuate surfaces of
said segments into contact with said outer surfaces of said pipe elements
within said circumferential grooves when said pipe elements are inserted
into said central space.” (App. Br. 64, 68, Claims App., emphasis added).
As discussed relative to Rejection 1, such language merely recites intended
use, and is satisfied by Reynolds, which discloses bolts p capable of
tightening the pipe coupling after the pipe ends are in the coupling
(Reynolds, pg. 4, ll. 28). In this regard, Requester had argued that “the
claims of the ’796 patent that are subject to this reexamination do not require
that the prior art coupling be installed by insertion of the pipe ends into a
preassembled coupling. Thus, the prior art need only disclose the structural
limitations recited by the claims.” (App. Br. 37–38). Indeed, none of the
other claims include insertion language at all, except for claims 27 and 43,
which ultimately depend from claims 21 and 41 respectively.
Nevertheless, the Requester argues that claims 1, 21, 41, and 44 are
obvious over Webb in view of Reynolds and further in view of Lane, relying
on Lane for explicitly teaching “a deformable coupling that is installed in a
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pre-assembled state over a pair of pipes.” (App. Br. 39, quoting Lane, col. 7,
ll. 22–31; Figs. 2, 4). Indeed, Lane discloses that:
Insertion of the pipe ends into the coupling is achieved with a
minimum of resistance because there is a clearance between the
gripper ring gripping edges and the outside of the pipes, and the
sealing rings have a clearance between their inner edges and the
outside of the pipes, or at worst a light interference fit.
(Lane, pg. 7, ll. 27–32).
Lane further discloses that subsequent to such insertion, the two
enclosure rings are clamped together “and drawn inwardly” (Lane, pg. 7, ll.
17–19). While the above disclosure is directed to the embodiment of
Figures 1–3, Lane is also clear that the various embodiments shown in the
other figures operate on the same principle while having different physical
forms (Lane, pg. 9, ll. 15–19), thereby indicating similar method of
installation for the other embodiments disclosed. In this regard, the Patent
Owner’s own declarant Mr. Hayden states that the pipe elements can be
inserted in the annular enclosure rings of embodiments shown in Figures 4–8
of Lane, and then tightened (1st Decl. Hayden ¶ 21).
The Examiner declines to reject the claims stating that “one of
ordinary skill in the pipe coupling industry would not have combined Webb
and Reynolds for the reasons already summarized.” (RAN 10). The
Examiner further finds that the combination would not be made because
“Lane discloses a coupling that is very structurally diverse from the Webb
coupling and the Reynolds coupling” because the “Lane coupling is
designed for use with relatively soft plastic pipe and utilizes gripping
surfaces to engage the outer surfaces of plain end pipes,” wherein the
deformation occurs in the plastic tubular body (RAN 10). The Patent Owner
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agrees with the Examiner’s assessment (App. Br. 18; see also Decl. Hayden
¶¶42–46).
However, the Examiner’s objection to combining Webb and Reynolds
is unpersuasive for the reasons discussed supra relative to Rejection 2. In
addition, as noted above, Lane is being relied upon for teaching a
deformable coupling that is installed in a pre-assembled state over a pair of
pipes (App. Br. 39; Reb. Br. 19). Thus, to any extent that the above noted
recitation “when said pipe elements are inserted into said central space” can
be construed to require actual slip-on insertion of the pipe ends, Lane
discloses this limitation and reasons for combining the references.
Specifically, as further argued by the Requester,
Lane provides significant motivation to combine Reynolds and
Webb. Lane teaches that a preassembled, slip-on coupling
provides numerous advantages, including providing a coupling
that is “easy to fit,” “has good sealing characteristics,” “can be
easily removed,” and addresses difficulties in “attaching or
removing the coupling to or from the pipe.”
(App. Br. 40, quoting portions of Lane, col. 2, ll. 6–24, col. 3, ll. 7–23).
As such, we also agree with the Requester (App. Br. 41) that it would
have been obvious to one of ordinary skill to have applied the teachings of
Lane with the combination of Webb and Reynolds. Accordingly, we reverse
the Examiner’s decision not to reject claims 21 and 41 and denominate the
same as a New Ground of Rejection. As to claims 22–28, 30–38, and 43
that ultimately depend from claim 21 or 41, we discern no patentable subject
matter in these claims as well. Correspondingly, we reject these claims as
well, denominating the same as a new ground of rejection. As to claims 1
and 44, Rejection 3 is moot in view of Rejections 1 and 2.
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Rejections 4 and 5
The Requester argues that claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28,
33, 34, 41, 43, and 44 are anticipated by Lewis, or are obvious based on
Lewis alone, or in combination with various secondary references.
However, each of these claims have been rejected in Rejections 1 and 2
discussed supra. Correspondingly, Rejections 4 and 5 are also moot and we
decline to reach the same.

Proposed Rejection 6
The Requester argues that claims 6, 18–20, 30 and 31 are obvious
over Engman in view of any one of (1) Reynolds; (2) Reynolds further in
view of Webb; (3) Lewis; (4) Lewis further in view of Reynolds; (5) Lewis
further in view of Reynolds and Webb; and (6) Lewis further in view of
Reynolds and Lane (App. Br. 53). These claims require an arcuate surface
to have a cutout or a segment that increases bending flexibility to facilitate
deformation of the arcuate surface (see, e.g., App. Br. 62, Claims App.; see
also Spec., col. 6, ll. 33–41). The Examiner found the claims to be
patentable based on their dependency, stating that Reynolds “is not
compatible with the coupling of Engman.” (RAN 10, citing Patent Owner’s
Comments filed March 13, 2014, pgs. 17–23, and Decl. Hayden ¶¶13–41).
Engman is being relied upon as a secondary reference for disclosing
“a coupling segment having an arcuate surface 18 with a cut-out in the form
of a notch 22 to increase the bending flexibility of the segment. (Engman,
1:50-2:23, FIG. 2.)” (App. Br. 54). Indeed, Engman discloses pipe clamp
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10 having a saddle 12 that defines semi-circular opening 18, and includes
slots 22 “that converge or collapse towards each other” when the pipe clamp
is tightened so that saddle 12 and U-bolt 26 “tightly conform to the outer
perimeter of pipe 36.” (Engman, col. 1, l. 50–col. 2, l. 23; Figs. 1, 2).
The Requester contends:
one of ordinary skill in the art would combine the notched
arcuate surface of Engman with any one of the deformable,
slip-on coupling segments taught by (i) Reynolds, (ii) Reynolds
with Webb, (iii) Lewis, (iv) Lewis with Reynolds; (v) Lewis
with Reynolds and Webb, and (vi) Lewis with Reynolds and
Lane (all discussed above) to predictably increase the bending
flexibility of the coupling segment and “tightly conform to the
outer perimeter” of the pipes, thereby rendering claims 6, 18-
20, and 30-31 obvious. (Rung, ¶33.)
(App. Br. 54–55).
Thus, the Requester’s proposed rejection augments the above
Rejections 1, 2, 4 and 5 with the slots of Engman and its teaching that such
slots can be used to facilitate bending of a portion of a pipe clamp. The
Requester argues that, in declining to adopt the rejection, the Examiner
appears to conclude incompatibility based on bodily incorporating the slots
of Engman into the coupling of Reynolds, and does not fully consider what
Engman teaches (App. Br. 55). In that regard, the Requester argues that
“Engman’s teachings with respect to cut-outs would [have been] considered
by one of ordinary skill seeking to increase the bending flexibility of
Reynolds’ coupling even if the Reynolds coupling is not exactly ‘compatible
with’ Engman’s coupling.” (Id.).
We generally agree with the Requester. Initially, we note our
agreement with the Requester and entry of Rejections 1 and 2 supra as to
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obviousness based on Reynolds alone, or in combination with Webb. To the
extent that a specific application of a pipe coupling required the coupling to
be more flexible, it would have been obvious to one of ordinary skill in the
art to incorporate cut-outs on the arcuate surface of Webb or Reynolds, both
disclosing deforming of the segments during installation of the pipe coupling
(see Decl. Rung ¶33).
Accordingly, we reverse the Examiner’s decision not to adopt
Rejection 6 only as to the combination with Reynolds alone (Rejection 1),
and as to the combination of Webb and Reynolds, or vice versa (Rejection
2). We also denominate our reversal as a New Ground of Rejection.

Proposed Rejection 7
The Requester argues that claims 10, 32, and 45 are obvious over
Thiessen in view of any one of (1) Reynolds; (2) Reynolds further in view of
Webb; (3) Lewis; (4) Lewis further in view of Reynolds; (5) Lewis further in
view of Reynolds and Webb; and (6) Lewis further in view of Reynolds and
Lane (App. Br. 56). These claims require the coupling to have one arcuate
surface with a smaller radius of curvature than a second arcuate surface (see,
e.g., App. Br. 62, Claims App.). The provision of such arcuate surfaces
having different radius of curvature allows for the coupling to join pipes
having different diameters (Spec. col. 7, ll. 1–7; Fig. 9). The Examiner
found the claims to be patentable based on their dependency on a patentable
claim, and stating that Reynolds “is not compatible with the coupling of …
Thiessen et al.” (RAN 10, citing Patent Owner’s Comments filed March 13,
2014, pgs. 17–23, and Decl. Hayden ¶¶13–41).
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Thiessen is being relied upon for disclosing a pipe coupling that joins
“‘two pipe ends of different diameters in such manner as to provide a leak-
proof joint and also restrain the pipe ends from moving apart or from
moving together and allowing the smaller pipe to telescope into the larger
pipe.’ (Thiessen, 2:20-25.).” The Requester also points out that “Thiessen
shows the arcuate surfaces contacting, and thereby conforming to, the
bottoms surface of each groove in each pipe.” (App. Br. 58; see also id. at
59; Thiessen Figs. 5, 8–11). Indeed, Thiessen discloses a pipe coupling for
coupling ends of two pipes having different diameters wherein end rims 47,
48 have key sections that engage, and contact the bottoms of grooves 12, 17
in outer surfaces 10, 15 of the pipes (Thiessen, col. 2, ll. 20–25; col. 6, ll.
30–34; Figs. 5, 8–11).
The Requester also contends:
one of ordinary skill in the art would combine the arcuate
surfaces having different radii of curvature of Thiessen with
any one of the deformable, slip-on coupling segments taught by
(i) Reynolds, (ii) Reynolds with Webb, (iii) Lewis, (iv) Lewis
with Reynolds, (v) Lewis with Reynolds and Webb, and (vi)
Lewis with Reynolds and Lane (all discussed above) to
predictably join pipes of different diameters and restrain the
pipes from moving apart or together, thereby rendering claims
6, 18-20, and 30-31 obvious. (Rung, ¶34.)
(App. Br. 54–55).
Thiessen establishes that it was known in the art to provide a pipe
coupling having one arcuate surface with a smaller radius of curvature than a
second arcuate surface, to allow for joining pipes of differing diameters.
The Requester argues that in declining to adopt the rejection, the Examiner
appears to conclude incompatibility based on physically combining the
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features of Thiessen into the pipe coupling of Reynolds, and does not fully
consider what Thiessen teaches (App. Br. 58). In that regard, the Requester
argues that the art’s “teachings regarding using arcuate surfaces of different
radii of curvature would [have been] considered by one of ordinary skill
seeking to connect and seal pipes of different diameters with Reynolds’
coupling even if the Reynolds coupling is not exactly ‘compatible with’
Thiessen’s coupling.” (Id.).
We generally agree with the Requester. Initially, we note our
agreement with the Requester and entry of Rejections 1 and 2 supra as to
obviousness based on Reynolds alone, or in combination with Webb. To the
extent that a specific application of a pipe coupling required the pipe
coupling to couple pipe ends having different diameters, it would have been
obvious to one of ordinary skill in the art to modify the pipe couplers of
Webb or Reynolds in the manner suggested by Thiessen (see Decl. Rung
¶¶34–35).
Accordingly, we reverse the Examiner’s decision to not adopt
Rejection 7 only as to the combination with Reynolds alone (Rejection 1),
and as to the combination of Webb and Reynolds, or vice versa (Rejection
2). We also denominate our reversal as a New Ground of Rejection.

CONCLUSIONS
The Examiner’s decision to not adopt Proposed Rejections 1, 2, 6 and
7 is reversed, and the reversal is denominated as a New Ground of Rejection.
We further reverse the Examiner’s decision to not adopt Proposed Rejection
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3 as to claims 21–28, 30–38, 43, and 44, that ultimately depend from claim
21 or 41, and denominate the same as a New Ground of Rejection.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
This decision also contains new grounds of rejection pursuant to
37 C.F.R. § 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. …
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Should the Patent Owner elect to prosecute further before the
Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right
to seek review under 35 U.S.C. § 141 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If the Patent Owner elects prosecution before the Examiner and this
does not result in patentable claims, abandonment or a second appeal, this
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case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

REVERSED; 37 C.F.R. § 41.77(b)

DM

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REQUESTER:
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA VA 22320-4850

PATENT OWNER:
Taylor English Duma LLP
1600 Parkwood Circle
Suite 400
Atlanta, GA 30339