Ex Parte 7712796 et al

Patent Trial and Appeal Board

Aug 28, 2018

95001880 (P.T.A.B. Aug. 28, 2018)

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.
95/001,880 02/01/2012 7712796 191322-7022 2629
25944 7590 08/28/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/28/2018 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.

VICTAULIC COMPANY
Patent Owner, Respondent
____________________

Appeal 2018-007169
Inter partes Reexamination Controls 95/001,880
Patent US 7,712,796 B21
Technology Center 3900
____________________

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

SONG, Administrative Patent Judge

NEW DECISION UNDER 37 C.F.R. § 41.77(f)

1 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 also to Gibb et al. Victaulic Company is the Patent Owner
of both the ’796 patent and the parent Patent US 7,086,131 B2.
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STATEMENT OF THE CASE
The ’796 patent was the subject of inter partes reexamination Appeal
2016-007551 (hereinafter “the ’7551 Appeal”) for which the Board’s
Decision was mailed on February 22, 2017 (hereinafter “Decision”). In the
Decision, the Board reversed the Examiner’s refusal to reject claims 1–14,
16, 18–28, 30–38, 41, and 43–45 based on combinations of various
references, and denominated the reversal as a New Ground of Rejection
under 37 C.F.R. § 41.77(b) (Decision 28–29).
In response, the Patent Owner requested reopening of prosecution in
its Patent Owner’s Response Requesting Reopening of Prosecution Under 37
C.F.R. § 41.77(b)(1), filed April 24, 2017 (hereinafter “Reopen Request” or
“Reopen Req.”). The Reopen Request amends claims 21, 41, 43, and 44
(Reopen Req. 2–5). In addition to the previously submitted evidence, the
Reopen Request submits, and relies on, newly submitted evidence in the
form of various declarations, together with numerous exhibits attached
thereto in support of patentability (id. at 1). The Reopen Request, together
with the declarations and exhibits therein, were entered for consideration by
the Examiner in Order Remanding Inter Partes Reexamination, entered
November 29, 2017. The Requester had previously filed Notice of Non-
Participation in Inter Partes Reexamination on October 17, 2016, and thus,
did not file any comments in response to the Reopen Request.
The Examiner issued Examiner’s Determination Pursuant to 37 C.F.R.
§ 41.77(d) on January 26, 2018 (hereinafter “Examiner’s Determination” or
“Ex. Det.”), determining that the rejections as entered in the Decision were
overcome by the amendments and evidence submitted by the Patent Owner,
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especially in view of the Board’s New Decision Under 41.77(f) in a related
Appeal 2016-011013 (Ex. Det. 5–6). Neither party filed any comments in
response to the Examiner’s Determination.
This reopened reexamination is now before the Board for issuance of
a New Decision under 37 C.F.R. § 41.77(f). A New Decision “is deemed to
incorporate the earlier decision, except for those portions specifically
withdrawn.” 37 C.F.R. § 41.77(f). In this New Decision, we withdraw the
previously entered rejections of claims 1–14, 16, 18–28, 30–38, 41, and 43–
45.

AMENDMENT
Amended independent claim 21 illustrative of the claimed subject
matter reads as follows:
21. (Amended) In combination, a pair of pipe elements and a
pipe coupling, said pipe coupling 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 said pipe coupling comprises:
first and second coupling segments, each said coupling
segment having 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
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said first and second coupling segments being connected
to one another end to end surrounding a central space, each said
coupling segment having connection members adjustably
connecting one said 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 when said pipe elements are inserted into said central
space, said segments being deformable upon adjustable
tightening of said connection members, because of the contact
between said arcuate surfaces and said outer surfaces of said
pipe elements, so as to substantially conform the curvature of
said arcuate surfaces to the outer surfaces of said pipe elements
within said circumferential grooves as said connection members
are tightened.
(Reopen Req. 2–3).
Substantially the same amendments were made to independent claims
41 and 44 (id. at 3–5). Independent claim 1, also rejected in the Decision,
was not amended.

REJECTIONS
In the Decision, the Board reversed the Examiner’s refusal to reject
claims 1–14, 16, 18–28, 30–38, 41, and 43–45, and denominated the reversal
as a New Ground of Rejection under 37 C.F.R. § 41.77(b) (Decision 28–29).
The entered rejections were principally based on Reynolds alone, or in
combination with Webb (Decision 17, 21). In particular, the Decision
rejects claims 1, 2, 4, 5, 7–9, 11–14, 21, 22, 24–28, 33, 34, 41, 43, and 44 as
obvious over Reynolds alone (Decision 17), and rejects claims 1–5, 7–14,
21–28, 32–37, 41, 43 and 44 as obvious over Reynolds in view of Webb
(Decision 21). Other entered rejections were also based on Reynolds alone
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or in view of Webb, further relying on additional reference to Lane
(Decision 23), Engman (Decision 25–26), or Thiessen (Decision 28), to
address certain limitations of the remaining claims.

ANALYSIS
The arguments set forth by the Patent Owner in its Request to Reopen
in support of patentability overlap, but expounds upon, its arguments
submitted during its initial response to the Requester’s cross-appeal
addressed in the Decision. The Request to Reopen also includes new
evidence to supplement the evidence already considered, the new evidence
being a Declaration of Lani G. Ache (Exhibit 1), a Declaration of Herman F.
Nied, Ph.D. (Exhibit 2), and a second Declaration of Lawrence W. Thau, Jr.
(Exhibit 3), together with numerous exhibits attached thereto (Reopen Req.
1). In addition, the Patent Owner also submits a second Declaration of Louis
E. Hayden (Exhibit 5).2
As noted, the Board reversed the Examiner’s refusal to reject the
claims and entered various rejections principally based on Reynolds alone,
or in further combination with Webb (Decision 17, 21, 28–29). In that
regard, the Decision states:

2 While this second Declaration of Louis E. Hayden (executed September 9,
2016) was submitted by the Patent Owner with its Reopen Request, and
entered into the record of the present proceeding on May 31, 2017, we note
that this declaration actually identifies related merged Reexamination Nos.
95/001,878 and 95/002,401, which were the subject of related Appeal 2016-
003414 and Appeal 2016-011013. Nonetheless, in view of the close
relatedness of the patents reexamined, and issues involved between these
proceedings, we overlook this error and consider this declaration.
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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).
(Decision 10).
Thus, the Decision finds 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.”
(Decision 11).
The Decision further states:
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 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.
(Decision 14–15).
In further rejecting various claims based on the combination of
Reynolds and Webb, the Decision finds that:
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).
(Decision 19).
Accordingly, the Decision concludes that:
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
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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.
(Decision 20).
Thus, the Decision concluded that even if Reynolds did not provide
such a disclosure, it would have been obvious to one of ordinary skill to
provide such recited contact in order to “ensure proper seal compression and
to avoid seal over-compression/seal crush” (Decision 14–15), or in further
combination with Webb, which teaches such contact (Decision 20).
In its Reopen Request, the Patent Owner does not argue any claim in
particular, but instead, submits additional arguments and evidence seeking to
rebut our findings with respect to Reynolds and Webb, and the conclusion of
obviousness based thereon. While many of the submitted arguments and
evidence are unpersuasive for various reasons, we do find persuasive Patent
Owner’s arguments and its submitted evidence tending to show that: the
coupling segments of Reynolds, including that shown in Figure 13, do not
contact the surface of the pipe grooves (Reopen Req. 11–23); a person of
ordinary would not modify Reynolds so that the coupling segments contact
the pipes and deform so as to conform the coupling segments to the pipes
(Reopen Req. 28–31); and Webb also would not have provided a reason to
modify Reynolds (Reopen Req. 38–40).
Indeed, these substantive issues raised pertaining to Reynolds and
Webb have already been addressed previously by the Board. In particular,
as noted above, the subject ’796 patent is a divisional of Patent US
7,086,131 B2. This parent patent was the subject of merged inter partes
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Reexamination Controls 95/001,878 and 95/002,401, which resulted in
Appeal 2016-003414 decided on July 13, 2016 (hereinafter “’3414
Decision”), and Appeal 2016-011013 decided January 2, 2018. In the ’3414
Decision, the Board, inter alia, entered a new ground of rejection for various
claims directed to methods for securing pipe elements together using a pipe
coupling of the type recited in the claims of the subject ’796 patent (’3414
Decision 19–35). These entered rejections relied on Reynolds and Webb for
substantially the same reasons set forth above in the Decision in the ’7551
Appeal, while also relying on the installation method disclosed in Lane
(’3414 Decision 21–23, 27–34).
In response to the ’3414 Decision, the Patent Owner reopened
prosecution, inter alia, submitting supplemental arguments and additional
new evidence with respect to Reynolds and Webb, in support of
patentability, which the Board found persuasive in its New Decision Under
37 C.F.R. § 41.77(f) in Appeal 2016-011013 decided January 2, 2018
(hereinafter “’1013 New Decision”).
The arguments and evidence submitted by the Patent Owner in the
present Reopen Request are substantively the same as that addressed in the
’1013 New Decision. Indeed, as noted, the record includes the submitted
second Declaration of Hayden, the persuasive portions of which is further
supported in varying degrees by: the second Declaration of Thau (2nd Decl.
Thau ¶¶ 52–54); the Declaration of Nied (Decl. Nied ¶¶ 14–16, 18–20, 33–
39); and the Declaration of Ache (Decl. Ache ¶¶ 16, 24).
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Accordingly, we refer to, and adopt, the analysis set forth in the
related ’1013 New Decision. In particular, as set forth in the ’1013 New
Decision:
in reconsidering other submitted arguments and evidence that
are more credible, we are persuaded that, more likely than not,
Reynolds does not disclose actual contact between the coupling
segments and the pipe elements. We find collectively
persuasive, the declaration evidence and arguments relying on
Reynolds’s disclosure that the embodiment in Figure 13
completely enwraps and encloses the seal [. . .], in conjunction
with the argument that a radial gap would have been necessary
and desirable in order to allow accommodation of misaligned
pipes segments, which is an important objective of the coupling
of Reynolds [. . .]. The complete enwrapping and enclosing of
the seal in Figure 13, and accommodation of misaligned pipe
segments would imply that there is some clearance/gap between
the arcuate surfaces of the coupling segments and the bottom
surfaces of the grooves in the pipe segments. Unlike many of
the other unpersuasive arguments that are based on self-serving
hypotheticals, drawings, and declarative assertions, these
arguments and testimony stem from the technical disclosure of
Reynolds itself, and cumulatively persuade us that more likely
than not, Reynolds does not disclose actual contact between the
coupling segments and the pipe elements.
(’1013 New Decision 15–16).

In addition, as to the rejection in the Decision based on
modifying Reynolds alone to provide such contact, we adopt the
analysis set forth in the ’1013 New Decision, which states:
In rejecting the claims, the Decision further concluded
that even if the coupling segment of Reynolds did not contact
the pipe elements, it would have been obvious to one of
ordinary skill to provide such contact in view of Reynolds
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alone, or in combination with Webb, in order to “ensure proper
seal compression and to avoid seal over-compression/seal
crush.” . . .. However, the above-discussed, submitted
declaration evidence and arguments that are based on the actual
disclosure in Reynolds now persuade us that a person of
ordinary skill would not have found it obvious to have modified
Reynolds to have the coupling segments thereof contact the
pipe elements. Specifically, such modification would require
deviating from the teaching in Reynolds as to Figure 13 to
completely enwrap and enclose the seal, and undermine the
applicability of Reynold’s couplings in sealing misaligned pipe
elements.
In summary, although Reynolds does disclose coupling
segments that subtend less than 180º, and deforming the same
upon tightening of the coupling segments together, we are
persuaded that it fails to disclose actual contact between the
coupling segments and the grooves of the pipe elements so that
the coupling segments deform by such contact and conform to
the pipe elements. We are further persuaded that a person of
ordinary skill in the art would not have found it obvious to
modify Reynolds to provide such contact in view of its teaching
to completely enwrap and enclose the seal, and the resulting
loss of the ability to accommodate misalignment.
(’1013 New Decision 17).

Therefore, we withdraw our findings in the Decision with
respect to Reynolds as it pertains to contact between the coupling
segments and pipe elements, and withdraw our conclusion that it
would have been obvious to modify Reynolds to provide such contact
based on Reynolds alone.
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Furthermore, as to modifying Reynolds in combination with
Webb to provide such contact, we adopt the analysis also set forth in
the ’1013 New Decision, which states:
The position of the Patent Owner and the declarants has
some merit and we find this line of reasoning persuasive.
Webb recognizes that, in high-pressure applications, there
exists the problem of collapse of the pipe ends when utilizing a
groove for the reception of a key on the coupling, Webb
specifically disclosing that “[a] common point of failure of such
joints is between the grooved portion of the pipe and the pipe
end, which elastically deforms radially inwards thereby
allowing the key to disengage the groove.” (Webb, col. 2, ll.
37–41). Webb discloses that such problems are mitigated by:
providing plural keys on the coupling segments at
positions spaced axially thereof and by intentionally
forming the operative surface of each key with a textured
surface in the form of inverse pebbling. The respective
arrangements p[]rferably provides a total surface area for
contact by the engagement members on the pipe which
exceeds the surface area heretofore available in single
contact members. The present invention permits the
radial extent of the respective keys to be decreased . . .
This results in an increase in the minimum cross-
sectional area of the pipe at any point longitudinally
thereof, with an increase in the strength of the grooved
pipe and an optimized distribution of the stresses exerted
on the pipe and the coupling.
(Webb, col. 2, l. 60–col. 3, l. 11; see also Figs. 2, 3, 6, 12; col.
3, ll. 21–39).
Accordingly, Webb teaches the use of multiple keys that
engage the sides of multiple grooves as a solution in order to
avoid problems associated with other potential solutions that
can increase the failure of the joint at the groove via inward
deflection of the pipe elements.
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While Webb clearly discloses contact between the keys
of the segments and the grooves of the pipe elements, we
ultimately agree that, when viewed as a whole, a person of
ordinary skill in the art would not have viewed this teaching as
suggesting the desirability of such contact in a manner to
deform the coupling segments so that they conform the
coupling segments to the pipe elements as required by the
claims. Accordingly, Webb does not provide an adequate
rational basis for modifying Reynolds so as to provide contact
between the coupling segments and the grooves of the pipe
elements such that the coupling segments deform by such
contact to conform to the pipe elements. Without such
teaching, and in further consideration of the teachings of
Reynolds discussed above relative to completely enwrapping
and enclosing the seal, and the disclosed ability to
accommodate misaligned pipe elements, it is not apparent that
such modification to Reynolds would have been pursued by
those of ordinary skill in the art.
(’1013 New Decision 19–20).
In view of the above, we also withdraw our conclusion in the Decision
that it would have been obvious to modify Reynolds in view of the teachings
in Webb, and withdraw the obviousness rejections based on the combination
of Reynolds and Webb.

CONCLUSION
The rejections entered in the Decision are withdrawn herein.

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
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timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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