Ex Parte Baruh

Patent Trial and Appeal Board

May 19, 2016

10779471 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
101779,471 02/13/2004
21839 7590 05/23/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Bradford G. Baruh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
033151-026 5526
EXAMINER
DUNWOODY, AARON M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADFORD G. BARUH
Appeal2014-002182
Application 10/779,471 1
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bradford G. Baruh (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1---6, 11, and 23-32. 2,3 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellant, the real party of interest is BGB Enterprises,
LLC. Appeal Br. 2 (filed July 8, 2013).
2 Claims 7-10 and 12-22 have been canceled and claims 33-35 have
been withdrawn. Id.
3 Although Appellant lists claim 36 as appealed (see id.), the Examiner
does not appear to have set forth any rejection against claim 36 or indicate
that claim 36 is allowable. Accordingly, the status of claim 36 is not clear
Appeal2014-002182
Application 10/779 ,4 71
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellant's invention relates to "a device and method for coupling
pipe ends." Spec. i12.
Claims 1, 11, and 23 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A pipe coupling comprising:
an elongated housing having a first end and a second end,
the housing defining an elongated bore therein;
a stop located on an inner diameter of the housing, the
stop located between the first end and the second ends of the
housing, wherein a distance from the stop to one of the first and
second ends is at least two times a distance from the stop to the
other of the first and second end of the housing;
a first cylindrical bore extending from the first end to the
stop; and
a second cylindrical bore extending from the second end
to the stop, wherein an angle between the first cylindrical bore
and the second cylindrical bore is about 15 degrees to about 165
degrees, and wherein each of the cylindrical bores are
configured to allow a pipe end to advance into the pipe
coupling until reaching the stop.
and, if further prosecution should occur in this application, the status of
claim 3 6 needs to be resolved.
2
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Application 10/779 ,4 71
REJECTIONS
The following rejections are before us for review: 4,5
I. The Examiner rejected claim 4 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejected claims 1-5, 11, 23-27, and 29-32 under
35 U.S.C. § 103(a) as being unpatentable over Williams (US
3,594,021, iss. July 20, 1971), Waterhouse (US 5,499,882, iss.
Mar. 19, 1996), and Demler (US 3,378,282, iss. Apr. 16, 1968).
III. The Examiner rejected claims 1, 6, 11, 23, and 28-31under35
U.S.C. § 103(a) as being unpatentable over Williams, Webb,
(US 4,676,241, iss. June 30, 1987), and Demler.
ANALYSIS
Rejection I
Appellant requests entry of Appellant's amendment filed May 6,
2013, and states that "reversal of the rejection[] is respectfully requested."
Appeal Br. 10; see also Reply Br. 2 (filed Nov. 12, 2013). Refusal of an
Examiner to enter an amendment, in whole or in part, is a petitionable
matter, not an appealable matter, and is not within the jurisdiction of the
4 An objection to the drawings is a petitionable matter, not an
appealable matter, and is not within the jurisdiction of the Board. See In re
Mindick, 371F.2d892, 894 (CCPA 1967).
5 The rejections of claims 4 and 26 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement,
and of claim 26 under 35 U.S.C. § 112, second paragraph, as being
indefinite, have been withdrawn by the Examiner and thus are not before us
for review as part of the present appeal. See Ans. 11 (transmitted Sept. 10,
2013).
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Appeal2014-002182
Application 10/779 ,4 71
Board. As Appellant does not present any substantive arguments with
respect to the rejection of claim 4 under 35 U.S.C. § 112, second paragraph,
as being indefinite, the rejection is summarily affirmed.
Rejection II
Appellant presents essentially identical arguments with respect to the
rejection of claims 1, 11, and 23 under 35 U.S.C. § 103(a) as unpatentable
over Williams, Waterhouse, and Demler. See Appeal Br. 10-17. As such,
the following analysis applies equally to claims 1, 11, and 23.
The Examiner finds that Williams discloses most of the limitations of
independent claims 1, 11, and 23, but "does not disclose [that] an angle
between the first cylindrical bore and the second cylindrical bore is about 15
degrees to about 165 degrees." See Final Act. 5---6 (transmitted Jan. 4, 2013)
(citing Williams, Fig. 2). To address this deficiency in Williams, the
Examiner finds that Waterhouse discloses couplings 1, 5, 6, 9, 13, 14 having
the claimed angles between first and second cylindrical bores. See id. at 6
(citing Waterhouse, col. 1, 11. 45-57). Thus, the Examiner concludes that a
person of ordinary skill in the art at the time the invention was made would
"fabricate couplings with an angle between a first cylindrical bore and a
second cylindrical bore being about 15 degrees to about 165 degrees, to
employ different angles for conventional plumbing." See id. Furthermore,
the Examiner introduces Demler as evidence illustrating ordinary skill in the
art, and concludes that a person of ordinary skill in the art "would have
known that [it] is obvious to modify a straight coupling into an angled
coupling." See id. at 7.
4
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Application 10/779 ,4 71
In response, Appellant argues that the Examiner's modification of
Williams, according to Waterhouse, would compromise functionality of
Williams' s expansion joint because "second sleeve or piston 18 is not fixed
or solvent welded within the barrel or first sleeve 16." Appeal Br. 13-14.
Thus, according to Appellant, as Williams' s expansion joint is not fixed or
solvent welded, if the second sleeve or piston 18 is operated at an angle as
the Examiner's rejection states, the second sleeve or piston 18 would
undergo both a vertical and a horizontal force and thus, "would present an
additional point of failure, i.e., an additional horizontal force." Appeal Br.
14 (citing Williams, col. 1, 11. 24--26). Moreover, Appellant notes that,
"nothing in Williams teaches or suggests that the expansion joint of
Williams would be used in any orientation other than 'between vertical
piping 12 and 14 of a drain, waste or vent plumbing system."' Id. at 11.
We are not persuaded by Appellant's arguments because they do not
address the Examiner's rejection. The Examiner is not proposing to add an
angular joint to Williams's expansion joint 16, 18 as Appellants argue, but
rather is "modifying the bore nearest 22 with respect to the other bore" of
the expansion joint, as shown below in the Examiner's annotated Figure 2 of
Williams. Ans. 13.
Williams's Figure 2, as annotated by the Examiner, is reproduced
below:
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Appeal2014-002182
Application 10/779 ,4 71
Unmodified bore
Bore being modified
Angled bore after being modified
The Examiner's annotated Figure 2 of Williams depicts the bore nearest 22
modified to be at an angle. Id. at 14.
As such, because Williams's expansionjoint 16, 18 is not being
modified, we agree with the Examiner that Williams' s "piston 18 would be
able to slide up and down the sleeve 16 after the first bore is modified with
an angle ... of about 15 degrees to about 165 degrees." Id. at 16. Thus, the
Examiner is correct in that, "the expansion joint of Williams can perform its
desired function," and hence, "the functionality of the expansion joint would
not be compromised." Id. at. 13. See id. at 14--15.
Appellant further argues that the Examiner's reasoning to modify
Williams is a "conclusory statement" and thus, lacks rational underpinnings.
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Appeal2014-002182
Application 10/779 ,4 71
See Appeal Br. 14--15. We are not persuaded because Appellant's argument
fails to point out the error in the rationale provided by the Examiner, namely,
"to employ different angles for conventional plumbing." Final Act. 6.
Given that Waterhouse discloses a variety of geometrical structures related
to plumbing joints, the Examiner's reasoning has a rational underpinning.
See Waterhouse, col. 1, 11. 45-57.
Lastly, Appellant contends that the Examiner's modification of
Williams "goes directly against the teachings of Williams, which is
specifically designed to be located between vertical piping." Reply Br. 3
(emphasis omitted). We are not persuaded by Appellant's argument because
Appellant does not point to any passage in Williams that "criticize[ s ],
discredit[s] or otherwise discourage[s]" adding an angular joint to a straight
pipe. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Furthermore,
contrary to Appellant's assertions, Williams merely shows in the drawings
vertical piping, but does not explicitly rule out other arrangements.
Furthermore, as discussed supra, the Examiner is not modifying the
expansion joint 16, 18 of Williams. See Ans. 14.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claims 1, 11, and 23 as being
unpatentable over Williams, Waterhouse, and Demler.
With respect to the rejection of dependent claims 2-5, 24--27, and 29-
32, Appellant does not set forth any arguments for the patentability of these
claims apart from those made for the patentability of claim 1, 11, and 23.
See Appeal Br. 15, 16, and 18-20. Accordingly, we likewise sustain the
rejection of dependent claims 2-5, 24--27, and 29-32 over the combined
teachings of Williams, Waterhouse, and Demler.
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Application 10/779 ,4 71
Re} ection III
With respect to Rejection III, Appellant has not provided any
substantive arguments other than the arguments presented supra. See
Appeal Br. 15-20; see also Reply Br. 2--4. For example, with respect to the
teachings of Webb, Appellant merely states that, "Webb, however, does not
cure the deficiencies of Williams or Demler as noted above." Appeal Br. 15.
Therefore, as Williams and Demler are not deficient, for the reasons stated
above, we also sustain the rejection under 35 U.S.C. § 103(a) of claims 1, 6,
11, 23, and 28-31 as unpatentable over Williams, Webb, and Demler.
SUMMARY
The Examiner's decision to reject claim 4 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is affirmed.
The Examiner's decision to reject claims 1-5, 11, 23-27, and 29-32
under 35 U.S.C. § 103(a) as being unpatentable over Williams, Waterhouse,
and Demler is affirmed.
The Examiner's decision to reject claims 1, 6, 11, 23, and 28-31 under
35 U.S.C. § 103(a) as being unpatentable over Williams, Webb, and Demler
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)(l )(iv).
AFFIRMED
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