Ex Parte Bird et alDownload PDFPatent Trial and Appeal BoardDec 15, 201613728633 (P.T.A.B. Dec. 15, 2016) 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. 13/728,633 12/27/2012 Edwin A. Bird SMB-27USD2 3170 26875 7590 12/19/2016 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER HEWITT, JAMES M ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 12/19/2016 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): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWIN A. BIRD and GEORGE D. GABERT Appeal 2015-003694 Application 13/728,633 Technology Center 3600 Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Edwin A. Bird and George D. Gabert (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-003694 Application 13/728,633 CLAIMED SUBJECT MATTER Sole independent claim 1, reproduced below, represents the claimed subject matter. 1. A split-ring gland configured to engage a flange on a sleeve of a pipe coupling defining a longitudinal axis, the split ring gland comprising: a first partially-circular gland member including a first abutting end, a first spaced end, an annular wall extending between the first abutting end and the first spaced end to define a partially-circular shape of the first gland member, and an inwardly-directed U-shaped wall adjacent the annular wall and configured to receive the flange, the annular wall and the U- shaped wall being centered about the longitudinal axis; and a second partially-circular gland member including a second abutting end, a second spaced end, an annular wall extending between the second abutting end and the second spaced end to define a partially-circular shape of the second gland member, and an inwardly-directed U-shaped wall adjacent the annular wall and configured to receive the flange, the annular wall and the U-shaped wall of the second gland member being centered about the longitudinal axis, the first and second spaced ends configured to be coupled by a first fastener defining a first fastener longitudinal axis, wherein a gap defined between the first and second spaced ends is adjustable in length by the first fastener, wherein the first and second abutting ends include abutting bolt flanges with apertures oriented tangential to the gland members and configured to receive a second fastener defining a second fastener longitudinal axis, the second fastener securely coupling the first and second abutting ends in a gap-free relationship and such that the gap is formed between the first and second spaced ends, the second fastener being oriented to be positioned tangential to the partially-circular shape of the first and second gland members whereby to restrain the gland members from scissoring outwardly at the first and second abutting ends, the first and second fastener longitudinal axes being substantially parallel to one another. 2 Appeal 2015-003694 Application 13/728,633 REJECTIONS1 I. Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as obvious over Lemke (US 2010/0314864 Al; pub. Dec. 16, 2010), Gibb (US 2008/0290652 Al; pub. Nov. 27, 2008), Radzik (US 2003/0062718 Al; pub. Apr. 3, 2003), Okamura (US 5,560,656; iss. Oct. 1, 1996), Northrop (US 2003/0122377 Al; pub. July 3, 2003), and/or Fluid Conveying Products, Aeroquip Corp. (1992) (“Aeroquip Catalog”). Final Act. 2. II. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lemke, Gibb, Okamura, Northrop, and/or the Aeroquip Catalog, and Hackman (US 3,700,008; iss. Oct. 24, 1972). ANALYSIS Rejection I Appellants argue claims 1—6 as a group. Appeal Br. 5—14. We select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 2—6 stand or fall with claim 1. The Examiner finds that Lemke discloses the claimed split-ring gland, except for the second fastener being oriented to be positioned tangential to the partially-circular shape of the first and second gland members. Final Act. 3^4; Ans. 3 (“[t]he only difference between Lemke et al and the 1 The Examiner withdrew the rejection of claim 1—6 under 35 U.S.C. § 103(a) as unpatentable over Lemke and Fluid Conveying Products, Aeroquip Corp. (1992) (“Aeroquip Catalog”) and the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Lemke, Aeroquip Catalog, and Hackman in the Answer. Ans. 2. These specific rejections are not listed in the Final Action, which includes only the rejections listed herein. It appears, however, that the Examiner’s intention was to remove the Aeroquip Catalog as a reference in Rejections I and II, because the illustrations lack clarity. We take withdrawal of the Aeroquip Catalog into consideration in rendering our opinion. 3 Appeal 2015-003694 Application 13/728,633 claimed invention is how the clamp half ends opposite the spaced ends are attached”). The Examiner also finds that each of Gibb, Radzik, Okamura, and Northrop “teaches pipe couplings similar to that of Lemke” and that together, the references establish “that it is well known to substitute a bolt for a hinge as an alternative means by which to join one pair of the mating ends of the coupling halves.” Final Act. 3^4 (citing Gibb, Figs. 14, 18, and 19; Radzik, Figs. 2 and 6; Okamura, Figs. 2, 15, and 21; and Northrop, Figs. 1 and 4); see Ans. 3—5. The Examiner finds that substituting a bolt fastener for a hinge “would allow the predictable results of separable clamp halves that could be individually repaired and/or replaced, providing a stronger, more rigid coupling that could stand more load, and providing a coupling that allows less ‘play.’” Ans. 5. The Examiner concludes that one of skill “would have known to substitute the hinge at one end of Femke et al with a bolt, as taught by [the secondary references] ... to achieve the aforesaid benefits and predictable results of a two[-]bolt arrangement.” Id. at 8—9; see Final Act. 4. Appellants argue that “none of the five secondary references actually show any embodiment including gland members with both spaced ends and abutting ends . . . each connected by tangential and substantially parallel fasteners.” Appeal Br. 7—8; see Reply Br. 3. Appellants’ argument is not persuasive of Examiner error for the following reasons. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Femke discloses a clamping ring 26 made of two separate portions 30, 32, in which 4 Appeal 2015-003694 Application 13/728,633 one pair of ends of the portions are connected by a pivot point 34 and the other pair of ends are spaced and connected by a bolt fastener 36. Lemke 137; Fig. 3. The secondary references teach that it was known to use a bolt fastener to couple the pair of ends opposite the pair of ends already coupled by a bolt fastener, or that a bolt fastener could connect a pair of ends alternatively coupled by a hinge. See Gibb, Figs. 14, 18, and 19; Radzik, Figs. 2 and 6; Okamura, Figs. 2, 15, and 21; and Northrop, Figs. 1 and 4. In particular, Radzik teaches that an alternative to a pair of ends coupled by a hinge (see Radzik, Fig. 6) is a pair of abutting ends coupled by a bolt fastener (see id. Fig. 2). We agree with the Examiner that the claimed invention can be derived from a structure already known in the prior art (i.e., Lemke’s clamping ring) that is altered by the mere substitution of one known element for another, i.e., a hinge for a bolt fastener coupling abutting ends. Appellants also argue that, if Lemke were modified according to the teachings of any of the secondary references, “the gland members would have also been reconfigured as shown in these alternative embodiments . . . (e.g., the two bolt fasteners would be used with two pairs of abutting ends or two pairs of spaced ends).” Appeal Br. 12. According to Appellants, “the particular secondary references chosen by the Examiner do not fairly allow for substitution of a bolt fastener for a hinge without also necessitating changes to other important characteristics of a gland or clamp,” such as the scissoring hinged movement of Lemke’s clamp. Reply Br. 2. We are not persuaded by this argument, because Appellants have provided no evidence or reasoning to support the assertion that changes to other important characteristics would be necessary, particularly given that 5 Appeal 2015-003694 Application 13/728,633 “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellants further argue that the claimed arrangement “unexpectedly provided a new beneficial functionality . . . and this added functionality was not a predictable result.” Reply Br. 5; see Appeal Br. 5—6 (stating that the claimed arrangement “advantageously enables improved functionality of the split-ring gland, including simplified space-efficient assembly and the prevention of the gland scissoring outwardly at the abutting ends”). Appellants’ argument is not persuasive, because Appellants have failed to provide sufficient evidence that the claimed arrangement improves functionality of the split-ring gland, or provides a simplified, space-efficient assembly. Appellants also have not provided evidence or explanation to support the assertion that any of these results are unexpected or unpredictable. Appellants then argue that the Examiner’s conclusion of obviousness is flawed because, among the predictable results of the substitution identified by the Examiner, the benefits of the separable clamp halves identified by the Examiner in the Answer (i.e., the halves could be individually repaired and/or replaced) would also be present in the hinge-type arrangement of Lemke because the hinge can be disassembled to allow the separation of the clamp halves. Reply Br. 5—6. Appellants’ argument is not persuasive, because substitution of parts only requires that the results of the substitution be predictable (not different or improved) and Appellants have not disputed that the resulting separability would be predictable. Appellants also argue that the Examiner has failed to provide an articulated reasoning, and that the rejection is based on impermissible 6 Appeal 2015-003694 Application 13/728,633 hindsight. Appeal Br. 12. We are not persuaded by Appellants’ arguments. As discussed supra, the Examiner has articulated a reason why one skilled in the art would be led to modify Lemke, i.e., that the bolt fastener coupling taught by Radzik is being substituted for the hinge in Lemke to yield predictable results because they are known substitutes and perform similar functions. Appellants have failed to provide sufficient reasoning or evidence to show that the Examiner’s substitution would have yielded no more than predictable results. Further, Appellants have not identified any portion of the Examiner’s reasoning gleaned solely from Appellants’ disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants lastly argue that the secondary references “effectively lead one of ordinary skill in the art away from the [claimed] pipe coupling arrangement.” Reply Br. 5. Teaching away requires that a reference “criticize, discredit, or otherwise discourage” the solution claimed. See In re Fulton, 391, F.3d 1195, 1201 (Fed. Cir. 2004). Appellants’ argument is unconvincing, because Appellants have not identified any portion of the references that criticizes, discredits, or otherwise discourages the substitution of the bolt fastener coupling abutting ends for a hinge in a clamp or gland. For these reasons, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Lemke, Gibb, Radzik, Okamura, and/or Northrop, and claims 2—6 fall therewith. 7 Appeal 2015-003694 Application 13/728,633 Rejection II Claim 7 recites that “the central wall of the armor includes a plurality of corrugations configured to engage the at least one annular gasket.” Appeal Br. 19, Claims App. The Examiner finds that Hackman teaches “an improved gap bridge that is provided with stiffening ribs/corrugations so as to prevent the seal from extruding from the gap [and] provide a thinner, yet just as strong bridge.” Final Act. 3 (citing Hackman, col. 2,11. 13—35). The Examiner concludes that it would have been obvious to modify Lemke’s armor to include the ribs or corrugations of Hackman for the benefits described in Hackman. Appellants argue that Lemke and Hackman “fail to disclose that [a] central wall of an armor includes a plurality of corrugations providing the same functionality as those in the application on appeal,” which Appellants identify as “reducing frictional contact with the annular gasket.” Appeal Br. 14—15. Claim 7, however, does not recite the corrugations reducing frictional contact with the annular gasket. See Appeal Br. 19, Claims App. Appellants’ argument is therefore not commensurate with the scope of the claim, and is not persuasive. Appellants also argue that claim 7 is patentable because it depends from claim 1 and Hackman does not cure the deficiencies of Lemke, Gibb, Radzik, Okamura, and/or Northrop with respect to claim 1. Appeal Br. 14. For the reasons discussed supra with respect to Rejection 1, we do not find Appellants’ argument persuasive. For these reasons, we sustain the Examiner’s rejection of claim 7. 8 Appeal 2015-003694 Application 13/728,633 DECISION We AFFIRM the Examiner’s rejection of claims 1—6 as obvious over Femke, Gibb, Radzik, Okamura, and/or Northrop. We AFFIRM the Examiner’s rejection of claim 7 as obvious over Femke, Gibb, Radzik, Okamura, and/or Northrop and Hackman. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation