Ex Parte Attarwala et alDownload PDFPatent Trial and Appeal BoardSep 29, 201712358798 (P.T.A.B. Sep. 29, 2017) Copy Citation 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. 12/358,798 01/23/2009 Shabbir Attarwala LC-630/US 3189 31217 7590 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER LEE, JAEYUN ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 10/03/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): rhpatentmail @henkel. com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHABBIR ATTARWALA and PRAKASH S. PATEL Appeal 2016-006631 Application 12/358,798 Technology Center 1700 Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35U.S.C. § 134 from the Examiner’s Final Rejection of claims 1, 3—5, 11, 12, 14—21, 23, 25, and 27. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to a method of making a high pressure connection of tubular members using a primer composition and an anaerobically curable composition (Spec. 10-11, 14, 18). Claim 1 is illustrative and reproduced below: Appeal 2016-006631 Application 12/358,798 1. A method of making a high pressure connection, the connection consisting essentially of a first metal tubular member, a second metal tubular member and a cured composition, comprising: providing the first tubular member having a distal joint portion; providing the second tubular member having a distal joint portion; applying a primer composition to one of the distal joint portions; applying an anaerobically curable composition to the other of the distal joint portions; sliding the second tubular member distal joint portion into the first tubular member distal joint portion, the first member outer surface defining an exterior surface of the high pressure connection and the second member inner surface defining an interior surface of the high pressure connection; exposing the applied curable composition to the absence of air to cure the curable composition to maintain the second tubular member distal joint portion within the first tubular member distal joint portion thereby forming the high pressure connection. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Henkel, Material Safety Data Sheet, (http://www. myhenkel.asia/documents/ msds-/tds/AU/MSDS/en/Loctite 640 High Temperature Retaining Compound.pdf) Clark US 4,731,146 Mar. 15, 1988 US 5,380,048 Jan. 10, 1995 US 5,811,473 Sept. 22, 1998 US 2006/0191623 A1 Aug. 31, 2006 Vogel Ramos Lutz 2 Appeal 2016-006631 Application 12/358,798 The Examiner maintains the following grounds of rejection: 1. Claims 1, 3, 4, 11, 12, 14, 15, 17, 19-21, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutz in view of Ramos. 2. Claims 16 and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutz in view of Ramos and Vogel. 3. Claims 5 and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutz in view of Ramos and Henkel. 4. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lutz in view of Ramos and Clark. After review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness adduced by the Examiner, we determine that the Appellants’ arguments are insufficient to identify reversible error in any of the Examiner’s obviousness rejections. In re Jung, 637 E.3d 1356, 1365 (Led. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner’s Answer and in the Final Office Action (Final Act. 2—14; Ans. 2—16). We offer the following for emphasis. Concerning the Examiner’s rejection of 1, 3, 4, 11, 12, 14, 15, 17, 19- 21, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Lutz in view of Ramos, Appellants argue the rejected claims together as a group. Accordingly, we select claim 1 as the representative claim on which we decide this appeal as to this ground of rejection. Appellants argue that the Examiner’s proposed combination of Lutz and Ramos is improper and the rejection lacks a credible motivational basis 3 Appeal 2016-006631 Application 12/358,798 for one of ordinary skill in the art to pursue the combination proposed by the Examiner with a reasonable expectation of success because: 1. Lutz joins thermoplastic pipe using an organoborane initiated adhesive or a component moisture cure initiated adhesive, but Lutz fails to teach using an anaerobic adhesive, and Lutz teaches using pipe that is not threaded; 2. Ramos employs an aerobic adhesive and primer and Ramos does not disclose using its adhesive and primer for bonding thermoplastic pipe and/or non-threaded pipe; and 3. Anaerobic adhesives have limited gap filling ability and may cause cracking of thermoplastic material; hence, one of ordinary skill in the art would lack incentive to purse the Examiner’s proposed combination of references’ teachings because an ordinarily skilled artisan would have believed that the proposed substitution of adhesive of Ramos for use in Lutz would lead to cracking of Lutz’s thermoplastic pipe and result in an unsuccessful outcome (App. Br. 10-25). However, Appellants have not established that their argument is substantiated by the applied prior art and other evidence of record submitted by Appellants (Exhibits A—D). In particular and contrary to a central basis of Appellants’ argument that Lutz is only concerned with joining thermoplastic pipe, Lutz teaches that metal pipe can be joined by their method, as found by the Examiner (Lutz || 15, 38; see final Act. 2—5, 13—14; Ans. 13—15). Hence, Appellants’ argument suggesting a lack of bases for comb inability to the extent it is predicated on Lutz being limited to joining thermoplastic pipe is unavailing. 4 Appeal 2016-006631 Application 12/358,798 Moreover, Ramos teaches that anaerobic adhesives have broad industrial applicability for bonding structural components and does not teach that its anaerobic adhesive and primer activator composition is limited for use with threaded pipe connections only (col. 1,11. 14—18, col. 2,11. 16—18, col. 6,1. 55-col. 7,1. 42). As for Appellants’ gap filling argument with respect to anaerobic adhesives, we observe that representative claim 1 does not require any particular size of gap. Furthermore, Appellants’ Exhibit B (Plexus Guide to Bonding Plastics) teaches that anaerobic adhesives are generally used for threaded connections, not that such adhesives cannot be used for non- threaded connections. While Exhibit B suggests that anaerobic adhesives do not fill gaps well, it does not teach that such adhesives cannot fill gaps. Significantly, Exhibit B suggests that anaerobic adhesives used with a primer, such as employed by Ramos, may obviate any gap filling issue. For reasons set forth above and those set forth by the Examiner in the Final Rejection and in the Answer, we affirm Rejection 1. Appellants’ arguments against the propriety of Rejections 2^4 are generally parallel to and substantially premised on similar reasoning as lodged against Rejection 1 (App Br. 25—34). As for the argued apparent use of a volatile solvent by Clarke with respect to Rejection 4, we observe that Appellants have not established that significantly larger amounts of volatile solvent would be released when employing the primer of Ramos as modified by Clarke in the method of Lutz than would be released in the prior art solvent cementing discussed by Lutz (App. Br. 32—34; Lutz || 4, 10). Hence, we concur with the Examiner’s disposition of Appellants’ argument (Ans. 15—16). Thus, Appellants have not established that the purpose of 5 Appeal 2016-006631 Application 12/358,798 Lutz would be frustrated when joining metal pipe in Lutz with the adhesive activator and adhesive of Ramos, as modified by Clarke. For reasons set forth above and by the Examiner in the Final Rejection and the Answer, we affirm Rejections 2-4. CONCLUSION The Examiner’s decision to reject the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation