Ex Parte Daykin et alDownload PDFPatent Trials and Appeals BoardJun 25, 201912673971 - (D) (P.T.A.B. Jun. 25, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/673,971 03/01/2011 28268 7590 06/26/2019 Stanley Black & Decker, Inc. 6201 Greenleigh Avenue, MR045 Middle River, MD 21220 FIRST NAMED INVENTOR Damian Daykin 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. SW-INF-1022 2919 EXAMINER THOMAS, BINU ART UNIT PAPER NUMBER 1717 MAIL DATE DELIVERY MODE 06/26/2019 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 DAMIAN DAYKIN, CHRISTO FER RATCLIFFE, and MICHAEL GEORGE Appeal2018-008978 Application 12/673,971 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 2, 5-18, 20, 23, and 25-39 of Application 12/673,971 under 35 U.S.C. § 103(a) as obvious. 1 Non-Final Act. 3-7 (Oct. 24, 2016). Appellants seek reversal of the rejection pursuant to 35 U.S.C. § 134(a). 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 4, 21, 22, 24, 42, and 43 are withdrawn from consideration by the Examiner pursuant to 37 C.F.R. § l.142(b) as drawn to a non-elected invention. Non-Final Act. 2. 2 Pipeline Induction Heat Ltd. is identified as the real party in interest. Appeal Br. 3. Appeal2018-008978 Application 12/673,971 For the reasons set forth below, we reverse. BACKGROUND The '971 Application describes an apparatus for coating pipes and, particularly, the joined end sections of pipes. See Spec. 1 :2--4. Claim 1 is representative of the '971 Application's claims and is reproduced below from the Claims Appendix to the Appeal Brief ( emphasis added): 1. Apparatus for coating a pipe, the apparatus comprising: a first frame arranged to be mounted on the pipe, electrical conductors mounted on the first frame arranged to form an induction heating coil[,] which encircles the pipe when the first frame is mounted on the pipe; a second frame rotatably mounted on the first frame; and a coating applicator mounted on the second frame and arranged to apply a coating onto a surface of the pipe when the apparatus is mounted on the pipe, wherein the first and second frames and the coating applicator are arranged such that when the apparatus is mounted on the pipel] the coating applicator is disposed to one side of the induction heating coil in a direction along the longitudinal axis of the pipe, and able to apply coating to a surface of the pipe alongside the surface of the pipe underlying the induction heating coil; and wherein the second frame is operable with the first frame between an open state and a closed state; and wherein the induction heating coil is radially closer to the pipe than the coating applicator. Appeal Br. 11 (Claims App.). 2 Appeal2018-008978 Application 12/673,971 REJECTION On appeal, the Examiner maintains the following rejection: 1. Claims 1, 2, 5-18, 20, 25-28, and 30-39 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Denman, 3 Betteridge, 4 and Carlson, Jr. 5 Non-Final Act. 3; Answer 3. 6 DISCUSSION With the exception of dependent claim 9, Appellants argue for the reversal of the obviousness rejection of claims 1, 2, 5-18, 20, 25-28, and 30-39 on the basis of limitations present in independent claim 1. See generally Appeal Br. at 5-10; Reply Br. 1-5. We select claim 1 as representative. Accordingly, we limit our discussion to claim 1. In rejecting claim 1, the Examiner relied on Figure 1 of Denman. 3 US 5,417,786, issued May 23, 1995. 4 US 4,595,607, issued June 17, 1986. 5 US 5,186,755, issued Feb. 16, 1993. 6 The Examiner's statement of Rejection 1 included claims 23 and 29. See Non-Final Act. 3. Appellants, however, canceled claims 23 and 29 by Amendment filed July 21, 2014. Accordingly, we view the Examiner's inclusion of claims 23 and 29 in Rejection 1 as a clerical error. 3 Appeal2018-008978 Application 12/673,971 Figure 1 is reproduced below: FIG..1 Figure 1 depicts front roller frame 16, rear frame 18, and four spray heads 82 for applying liquid coating material. Denman 3:26; 3:46; 4:48-55. The Examiner found that Denman describes each limitation of the claim, but does not teach or suggest, inter alia, the claimed arrangement of the induction heating coil, the first and second frames, and the coating applicator. Answer 3--4. According to the Examiner, Denman fails to particularly disclose that front roller frame 16 includes an induction heating coil such that it is located to one side of epoxy coating applicators 82, which are disposed in rear frame 18, when these adjacent frames are mounted on a pipe. Id. at 4. 4 Appeal2018-008978 Application 12/673,971 The Examiner, however, relied on Figure 1 of Betteridge, which is reproduced below. Fig;I Figure 1 depicts coating applicators 100, 102 and heating bank section 104. Betteridge 6:48-56. The Examiner found that Betteridge teaches a plurality of induction heating units 116, which are mounted onto a pair of heating bank sections 104, 106. Answer 4 (citing Betteridge Figs. 1, 4; 6:55---65; 7:8-20). The Examiner determined that it would have been obvious to a person of ordinary skill in the art at the time of the invention to incorporate Betteridge' s plurality of induction heating units 116, which are mounted onto heating banks 104, 106, onto Denman's arms and longitudinally extending frame member 27 of roller frame 16. Answer 4 (citing Betteridge 1 :7-17); see also Answer 8. According to the Examiner, the ordinarily skilled artisan would have been motivated to do so "because Betteridge 5 Appeal2018-008978 Application 12/673,971 teaches th[at] heating []the pipe allows for proper adhesion of the coating." Answer 4 ( citing Betteridge 1 :7-17). Appellants argue that Betteridge's "applicator 100, 102 is longitudinally in line (i.e., not offset) from the heating induction coil 104." Appeal Br. 7. In particular, Appellants contend "Denman fails to teach spray to one side of the induction coil, Betteridge also fails to teach spray to one side of the induction coil, and there is no reasonable motivation to add Betteridge's heat to Denman ... in the inventive offset manner required by claim 1." Reply Br. 4. The patent examiner bears the initial burden of establishing a prima facie case that an application's claims would have been obvious based upon what was known in the prior art. In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990). Furthermore, the patent examiner's "[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). For the following reasons, we determine that the Examiner erred by finding that the applied prior art teaches or suggests the limitation "the first and second frames and the coating applicator are arranged such that when the apparatus is mounted on the pipe the coating applicator is disposed to one side of the induction heating coil" as recited in claim 1 ( emphasis added). The Examiner's conclusion that the ordinarily skilled artisan would have been motivated to modify Denman's roller frame 16 fails to address 6 Appeal2018-008978 Application 12/673,971 why rear frame 18 would not have been a suitable frame for modification. Answer 4. In other words, Betteridge teaches that coating applicators 100, 102, which are not to one side of heating induction coil 104, accomplishes proper adhesion of the coating. See Betteridge Fig. 1. Thus, the Examiner has not provided articulated reasoning why Denman, in combination with Betteridge, would have rendered obvious a coating applicator disposed to one side of the induction heating coil. In the absence of a reasoned explanation why the ordinarily skilled artisan would not have modified rear frame 18 to incorporate Betteridge' s induction heating coil, we agree with Appellants that the Examiner has engaged in impermissible hindsight in concluding that the applied prior art renders claim 1 obvious. In view of the foregoing, we reverse the Examiner's rejection of independent claim 1. Thus, we also reverse the rejection of claims 2, 5-18, 20, 25-28, and 30-39. 37 C.F.R. § 4I.37(c)(l)(iv). We express no opinion regarding Appellants' other arguments for reversal of Rejection 1. CONCLUSION For the reasons set forth above, we reverse the§ 103(a) rejection of claims 1, 2, 5-18, 20, 25-28, and 30-39 of the '971 Application. REVERSED 7 Copy with citationCopy as parenthetical citation