Ex Parte Chiproot

Patent Trial and Appeal Board

Jun 29, 2015

13116187 (P.T.A.B. Jun. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AVI CHIPROOT
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Appeal 2013-007127
Application 13/116,187
Technology Center 3600
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Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Avi Chiproot (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1–8. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2013-007127
Application 13/116,187

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THE INVENTION
Appellant’s invention is directed to a clamp assembly for pipes.
Independent claim 1, reproduced below, is illustrative:
1. A clamp assembly comprising:

a curved resilient band terminating in a radial direction in
two clamp members and in an axial direction in two end faces
that are bent radially inwards, said resilient band being adapted
to receive therein an elastomeric seal that contacts an outer
contour of a pipe;

wherein said end faces are formed with a plurality of
notches, each of said notches having an open end facing
radially inwards and a closed end opposite to said open end,
said closed end being wider than said open end.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1–5, 7, and 8 under 35 U.S.C. § 102(b) as being anticipated
by Straub (US 5,280,970, issued Jan. 25, 1994); and
(ii) claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Straub.

ANALYSIS
Claims 1–5, 7, and 8--Anticipation--Straub
The Examiner states that side walls 3 and 4 of Straub constitute the
claimed end faces. Ans. 4–5. According to the Examiner, side walls 3 and 4
are bent radially inwards and are formed with a plurality of notches. Id.
Although the notches are actually formed on anchoring ring 10, the
Examiner takes the position that:
Appeal 2013-007127
Application 13/116,187

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The side wall (4) is a part of housing of band (1) and the
anchoring ring 10 is supported on side wall (4) giving Straub
the claimed structure (Col. 3, lines 1-5). That is, each
anchoring ring (10) is a portion of each respective sidewall 3, 4.
It must be noted that Straub discloses the invention as claimed.
The fact that the housing (1) discloses additional structure not
claimed is irrelevant. Furthermore, Appellant's claims do not
prohibit the interpretation of the band being met by the
combination of housing 1, shell 2, sleeve 6, and anchoring ring
10.
Id. at 6–7.
Unlike obviousness, anticipation requires that a prior art reference
disclose all of the limitations of a claim, arranged or combined in the same
way as recited in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). Here, claim 1 requires that the curved
resilient band terminate in an axial direction in two end faces, and that the
end faces are bent radially inwards and are formed with a plurality of
notches. By contrast, Straub includes notchless side wall 4 that is bent
radially inwardly and separate notched anchoring ring 10 supported on side
wall 4. Straub, col. 3, ll. 2–5, Figs. 1, 3. The Examiner’s position that the
claimed “curved resilient band” is sufficiently broad so as to encompass
plural components, e.g., shell 2 and anchoring ring 10 of Straub, is an
unreasonably broad interpretation of that claim term.
Given that the structure of Straub is not arranged in the same way as
recited in claim 1, the Examiner has failed to establish a prima facie case of
anticipation. Thus, the rejection of claims 1–5, 7, and 8 under 35 U.S.C.
§ 102(b) is not sustained.
Appeal 2013-007127
Application 13/116,187

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Claim 6 --Obviousness--Straub
The Examiner’s position relative to the alleged obviousness of claim 6
over Straub does not propose to modify Straub in any manner that would
remedy the deficiencies noted above with respect to the anticipation
rejection of claim 1. Accordingly, the rejection of claim 6 under 35 U.S.C.
§ 103(a) is not sustained.

DECISION
The rejection of claims 1–5, 7, and 8 under 35 U.S.C § 102(b) as
being anticipated by Straub is REVERSED.
The rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Straub is REVERSED.

REVERSED
Ssc