Ex Parte Burkes

Patent Trial and Appeal Board

Aug 29, 2013

11040512 (P.T.A.B. Aug. 29, 2013)

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.
11/040,512 01/21/2005 Daniel O. Burkes I212.12-0008 1798
27367 7590 08/30/2013
WESTMAN CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
08/30/2013 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
____________

Ex parte DANIEL O. BURKES
____________

Appeal 2011-008399
Application 11/040,512
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008399
Application 11/040,512

2

STATEMENT OF THE CASE
Daniel O. Burkes (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 5-18 and 23-31.1 We have
jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 5 and 28 are the independent claims on appeal. Claims 5 and
28 are illustrative of the claimed subject matter and are reproduced below.
5. A lined support element comprising:
a support element;
a rubber liner portion disposed on a surface of the
support element; and
a heat-cured polyurethane liner portion disposed on a
surface of the rubber liner portion,
wherein the polyurethane liner portion covers the
rubber liner portion.
28. A lined pipe comprising:
a pipe element, comprising an inner surface defining an
internal passageway therein;
a rubber layer disposed on the inner surface of the pipe
element; and
a heat-cured polyurethane layer covering the rubber
layer, thereby preventing material being transported through the
internal passageway from contacting the rubber layer.
App. Br. 3, 16 (Claims App’x, Claims 5, 28).

1 Claims 1-4 and 19-22 were previously cancelled. App. Br. 3.
Appeal 2011-008399
Application 11/040,512

3
References
The Examiner relies upon the following prior art references:
Albro US 3,228,096 Jan. 11, 1966
Upchurch US 5,037,600 Aug. 6, 1991
Campagna US 2002/0005223 A1 Jan. 17, 2002
Camberlin US 6,612,343 B2 Sept. 2, 2003
Rejections
The Examiner makes the following rejections:
I. Claims 5-7, 10-18, and 23-31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Campagna, Upchurch, and
Camberlin; and
II. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campagna, Upchurch, Camberlin, and Albro.
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I
The Examiner concluded that the combination of Campagna,
Upchurch, and Camberlin would have rendered the subject matter of claims
5-7, 10-18, and 23-31 obvious to one of ordinary skill in the art at the time
of invention. Ans. 3-5. The Examiner found that Campagna discloses a
protective coating comprising, inter alia, a rubber liner portion and an
outermost nylon or thermoplastic elastomer (“TPE”) layer. Id. at 3.
Pertaining to claims 5 and 28, the Examiner found that Campagna discloses
the recited structure except a polyurethane outermost layer and forming the
protective layers as a liner instead of on the outside of the pipe. Id. at 3-4.
Appeal 2011-008399
Application 11/040,512

4
The Examiner found that Upchurch discloses that it is old and well-
known in the art of protective layers for metal pipes to utilize a polyurethane
layer as an innermost layer to protect another layer as a pipe lining. Id. at 4.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of invention to
modify the outermost TPE layer of Campagna by forming such
of a polyurethane layer as such is an equivalent material used to
form layers of a protective layer system for a steel pipe as
suggested by Upchurch where such is a known equivalent type
of material used to form these coatings and would provide
specific benefits that polyurethanes have over other TPE’s such
as resistance to specific environmental materials that will come
in contact with the layer and resistance to corrosion and wear
thereby saving money in repair costs.
Id.
Additionally, the Examiner found that Camberlin discloses that it is
old and well-known in the art to use protective layers on the outside of a
steel pipe as well as on the inside of a pipe as a liner. Id. at 4-5. The
Examiner determined that it would have been obvious to one of ordinary
skill in the art
to modify the protective layer system of Campagna to be
formed as a liner in a steel pipe as suggested by Camberlin
where such is an equivalent use for such protective systems of
layers, and would prevent corrosion of the inside of the pipe as
well as the outside to extend the life of the pipe and thereby
save money in repair or replacement costs.
Id. at 5. The Examiner also indicated that
[i]t is considered merely intended use to use the material in the
presence of any material being conveyed through the pipe
where the pipe of Campagna as modified would be capable of
being used an [sic] any pipe including one carrying a slurry of
Appeal 2011-008399
Application 11/040,512

5
materials of any size and make up where the materials used
above would have the same properties as applicants inherently
and would have the same resistances with no structural
difference being claimed.
Id.
Appellant raises several arguments in response to this rejection. First,
Appellant contends that there is no teaching or suggestion in Campagna of
the claimed structure where the rubber layer and the heat-cured polyurethane
are disposed on an inner surface of a pipe as called for by claims 7 and 28.2
App. Br. 8.
As noted above, the Examiner relied upon Camberlin, not Campagna,
as disclosing multilayer coatings that can be provided as outer coatings and
inner liners for pipes. See Ans. 4-5, 6-8. Accordingly, Campagna’s failure
to disclose the use of a rubber layer and heat-cured polyurethane on an inner
surface of a pipe is inapposite where another reference discloses the missing
elements. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot

2 Appellant raises separate arguments for claims 5 and 28. App. Br. 7-11.
Appellant asserts that dependent claims 6, 7, 10-18, 23-27, and 29-31 are not
rendered obvious based on their dependence upon claims 5 and 28, but do
not assert additional arguments directed to any of those claims, aside from
noting that claim 7 calls for the rubber liner and polyurethane liner to be
disposed on the inner surface of the pipe. See id. at 8, 11; Reply Br. 4-8.
We address each of Appellant’s arguments pertaining to claims 5 and 28
(which arguments include those directed to claim 7). Claims 6, 8, 9, 12-18,
and 23-27 stand or fall with claim 5 from which they depend; and, claims
29, 30, and 31 stand or fall with claim 28 from which they depend. See
37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349,
1351 (Fed. Cir. 2011). Even though claim 7 depends upon claim 5,
Appellant’s arguments with respect to claim 7 align with claim 28 based on
the claims’ requirements for liners on the inner surface of the pipe.
Accordingly, our treatment of claim 28 also addresses Appellant’s
arguments with respect to claim 7.
Appeal 2011-008399
Application 11/040,512

6
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”); see also In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (same); In re Young,
927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art.”).
Second, Appellant asserts that a reference, such as Campagna, that
discloses a coating on an exterior surface of a pipe is not relevant to a claim
to a coating on an inner surface of a pipe because the inner surface is
subjected to different (i.e., more extreme) conditions than the outside the
pipe. App. Br. 8. Appellant alleges that Camberlin supports the position
that the inside and outside of a pipe are subjected to different conditions. Id.
at 9. Accordingly, Appellant contends that one simply cannot allege that
any outside surface liner can be used on an inner surface of a pipe simply
because a reference indicates that a particular liner can be used on either the
inner or outer surface of a pipe. Id.
We agree with Appellant that simply because a reference discloses the
use of a material on the outside of a pipe does not necessarily mean that one
of ordinary skill in the art would consider using the same material as a liner
on the inside of the pipe. Even so, Appellant’s arguments with respect to the
harsh conditions inside a pipe as compared to the conditions outside a pipe
are entirely dependent upon the actual use to which the pipe is employed.
Claims 5 and 28 (as well as claim 7) are directed to a lined support element
and lined pipe, respectively, and do not recite any specific intended use for
the claimed structures. Thus, Appellant’s arguments based on differing
conditions inside as compared to outside of a pipe, when the conditions are
Appeal 2011-008399
Application 11/040,512

7
not claimed as here, are inapposite. In other words, when a pipe is claimed
solely as a pipe and without any specific use, a specific use cannot
distinguish the claims from the prior art as Appellant attempts to do with
respect to Campagna and Camberlin. Accordingly, we agree with the
Examiner’s finding that Camberlin’s disclosure of using a protective
material on the outside or inside of a pipe is relevant to the patentability of
the claims before us, and are not persuaded by Appellant’s arguments to the
contrary.
Third, Appellant contends that the Examiner’s combination of
Campagna and Camberlin is erroneous because Campagna’s TPE “would
quickly erode in the rigorous environment in which the claimed invention
can be utilized.” App. Br. 9. This argument suffers from the same defect
noted above—the “rigorous environment” is not an element of claims 5, 7,
or 28—and thus does not distinguish the claims over Campagna.
Fourth, Appellant asserts that “Upchurch does not disclose or suggest
a heat-cured polyurethane layer. Nor does Upchurch disclose or suggest a
heat-cured polyurethane layer covering a different (e.g. rubber) layer.” Id.
Appellant notes that while Upchurch “repeatedly discloses that the
intermediate, mixed cement-polymer layer is cured, [it] . . . never discloses
or suggests that the surface polymer layer is cured, or that either of these two
layers is heat-cured, or that heat curing of any layer might occur in another
embodiment.” Id. at 10. In light of Upchurch’s teaching regarding the
intermediate layer and omission regarding the surface polymer layer,
Appellant, contends that Upchurch “teach[es] away from any suggestion of a
heat-cured polyurethane surface layer.” Appellant also asserts that while
Upchurch indicates polyurethane can be a suitable coating material,
Appeal 2011-008399
Application 11/040,512

8
Upchurch does so in the context of indicating that the coating material is
thermoplastic. Id. at 10-11. Appellant contends that because polyurethane
is by itself a “somewhat broad” term, it may encompass a variety of different
types of polyurethane with different structures and different uses, that a
given type is or is not suitable for. Id. at 11. Thus, this disclosure
“contradicts any suggestion that the outer layer could be heat-cured (and
therefore thermoset instead of thermoplastic)” (id. at 10), and “teaches away
from . . . a surface layer of heat-cured polyurethane” (id. at 11).
We find the Examiner’s response to Appellant’s arguments, with
respect to heat-cured polyurethane, both comprehensive and persuasive, and
hereby adopt the Examiner’s response as reflected on pages 10-14 of the
Examiner’s Answer as though the response were set forth herein.
Additionally, we disagree with Appellant’s contention that Upchurch
teaches away from heat-curing the polyurethane layer. “A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, . . . would be led in a direction divergent from the path that was
taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001)
(quoting Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed.
Cir. 1999)). Even accepting, for the purpose of this inquiry, that Upchurch
discloses heat-curing the intermediate layer and not the polyurethane layer,
Appellant has not pointed to any disclosure in Upchurch that would
discourage or lead one of ordinary skill in the art away from heat-curing the
polyurethane layer. Accordingly, Upchurch does not teach away.
Fifth, Appellant contends that the intermediate cement mixture layer
of Upchurch “would be substantially inflexible and would not absorb any
impact if utilized to transport a slurry. In contrast, the claimed invention
Appeal 2011-008399
Application 11/040,512

9
includes a rubber intermediate layer that absorbs some of the force from the
impact from particles in the process fluid that contacts the heat-cured
polyurethane layer.” App. Br. 11.
Appellant’s argument, similar to his second and third arguments, is
unpersuasive because it focuses on the specific use of the claimed line
support element/pipe, which, for the reasons we discussed supra, is not
commensurate in scope with claims 5 or 28 (or claim 7).
In the Reply Brief, Appellant first reiterates arguments we found
unpersuasive, as discussed above. Appellant also contends that “not one
cited reference discloses using a flexible rubber layer on an interior of a
pipe.” Reply Br. 7. Appellant further asserts that
utilizing the claimed invention where the rubber layer is utilized
along with a polyurethane layer to coat an inner surface of [a]
pipe provides unexpected results. The unexpected results is
proven by the lack of any cited prior art reference utilizing a
rubber layer for a coating of the inner layer of the pipe. If, in
fact, . . . it is old and well known that the same liner can be
utilized to coat the inner and outer surface of the pipe as
alleged, then there surely should have been at least one
reference that would disclose utilizing a flexible, rubber coating
on the inner surface of the pipe. No such reference is known to
the Appellant or cited by the Examiner in this case.
Id. at 7-8. Appellant points to pages 3-5 of a Declaration of Background
Information signed by the inventor, Daniel O. Burkes, and filed Jan. 21,
2005 (“Burkes Declaration”), as supporting his argument of unexpected
results.
Appellant’s argument with respect to the lack of a single reference
disclosing a flexible rubber layer on the interior of a pipe suffers from the
same deficiency we discussed above in the context of Appellant’s first
Appeal 2011-008399
Application 11/040,512

10
argument because the Examiner’s finding that this element of the claims was
disclosed in the prior art was based on the combination of two references.
Thus, the Examiner’s lack of citation of a single reference disclosing rubber
on the interior of a pipe is inapposite where another reference discloses the
missing elements. See, e.g., In re Keller, 642 F.2d at 426 (“one cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”).
Further, that the Examiner did not cite a single reference disclosing
rubber on the interior of a pipe and instead relied upon a combination of
references, does not, in and of itself, demonstrate unexpected results. See
In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements . . . [do] not suffice.”) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984)).
Additionally, Appellant alleges unexpected results without indicating
what results were allegedly unexpected. See Reply Br. 7-8. The Burkes
Declaration similarly does not appear to address what results were allegedly
unexpected. See Burkes Decl. 3-5. Thus, we are not persuaded by
Appellant’s bald assertion of unexpected results.
Further, we are puzzled by Appellant’s comments regarding his lack
of knowledge of a reference disclosing the use of a rubber liner on the inner
surface of a pipe given Appellant’s admission in the Specification that the
use of a rubber liner on the inner surface of a pipe was known in the art.
Specifically, the Background of the Invention section of Appellant’s
Specification states the following: “A breakthrough came with the
introduction of a rubber liner in the steel pipe, which raised the functional
Appeal 2011-008399
Application 11/040,512

11
lifetime of a steel pipe by around 500%. Rubber-lined steel became
commonly used for pipelines in mining and energy development
applications around the world.” Spec. 1.
Considering all the evidence anew, we conclude that the evidence of
the obviousness of the claimed subject matter outweighs the evidence of
non-obviousness of the subject matter of these claims. Accordingly, for the
reasons discussed above, we sustain Rejection I.
Rejection II
Appellant relies solely upon the dependency of claims 8 and 9 to
claim 5, without raising any new argument, in response to this rejection.
Appeal Br. 11-12; Reply Br. 8. For the reasons we expressed in response to
Rejection I, we sustain Rejection II.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 5-18 and
23-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

hh