Ex Parte DiPierdomenico et al

Patent Trials and Appeals Board

May 14, 2019

14811889 - (D) (P.T.A.B. May. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/811,889 07/29/2015
23859 7590 05/16/2019
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
FIRST NAMED INVENTOR
Louis A. DiPierdomenico
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.
22150.0381U2 1054
EXAMINER
ANDERSON,JOSHUAD
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
05/16/2019 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS A. DIPIERDOMENICO, PAULINA A. OLESINSKA,
and DOUGLAS R. DOLE
Appeal2018-006409
Application 14/811,889
Technology Center 3700
Before BRETT C. MARTIN, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Victaulic Company is the Applicant and real-party-in-interest. Appeal
Br. 1.
Appeal2018-006409
Application 14/811,889
THE INVENTION
Appellants' invention relates to roll forming pipes. Spec. 1. Claim 1,
reproduced below, with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A roller for roll forming pipe elements, said roller
compnsmg:
a body rotatable about an axis;
a flange extending circumferentially about said body and
projecting radially outwardly therefrom relative to said axis,
said flange comprising a surface having at least
a first surface portion oriented angularly with respect to
said axis at a first orientation angle, and
a second surface portion oriented angularly with respect
to said axis at a second orientation angle;
wherein said body comprises an outer surface having at
least one raised feature extending radially outwardly therefrom,
the border between said first surface portion and said second
surface portion positioned radially beyond said at least one
raised feature.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Rung
Williams
us 5,246,256
US 6,196,039 B 1
Sept. 21, 1993
Mar. 6, 2001
The following rejections are before us for review:
1. Claims 1-32 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
2. Claims 1-8, 13-15, 17, 19, 20, 25-30, 32, and 33 are rejected
under 35 U.S.C. § 102(a)(l) as being anticipated by Williams.
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3. Claims 9-12 and 21-24 are rejected under 35 U.S.C. § 103 as
being unpatentable over Williams.
4. Claims 16, 18, and 31 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams and Rung.
OPINION
Written Description
The written description requirement of 35 U.S.C. § 112 requires that
the disclosure of the application relied upon reasonably convey that the
inventor had possession of the claimed subject matter as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( en bane). The written description requirement is met when the disclosure
"allow[ s] one skilled in the art to visualize or recognize the identity of the
subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 968 (Fed. Cir. 2002).
The Examiner determines that the "border" recited in independent
claims 1 and 20 is not sufficiently described in the originally filed
Specification and drawings. Final Action 2. The Examiner finds that the
original Specification does not mention a "border" at all. Id. Finally, the
Examiner finds that neither the importance nor the necessity of the border
being positioned radially beyond a raised feature is pointed out in the
Specification, causing the Examiner to question whether placement of the
border has a newly discovered utility. Id.
Appellants' invention is entitled "Roller with Compound Angle
Flange." The Figure 7 embodiment disclosed in Appellants' Specification
features flange 44 with surface 58. Spec. 8, Figure 7. Surface 58 has a first
surface portion 60 and a second surface portion 62. Spec. 8. First surface
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portion 60 is oriented relative to axis of rotation 32 at a first orientation
angle 64. Id. Second surface portion 62 is oriented relative to axis 32 at a
second angle 66 that is greater than angle 64. Id. Surface portions 60
and 62 are contiguous with one another. Id. Consequently, a person of
ordinary skill in the art would understand that portions 60 and 62 come
together at a point somewhere along surface 58. The point where
portions 60 and 62 come together along the length of surface 58 is referred
to in claims 1 and 20 as the "border." Claims App.
Particularly in light of the disclosure on page 8 of the Specification,
the feature that Appellants refer to as the "border" can be visually discerned
from viewing Figure 7. Contrary to the Examiner's position, it is not fatal to
Appellants' claim that the word "border" is not used in the Specification.
See Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 1000 (Fed.
Cir. 2000) ( explaining that the claimed invention does not have to be
described in ipsis verbis in the Specification to satisfy the written description
requirement).
In view of the disclosure on page 8 of the Specification and the
depictions of Figure 7, we determine that a person of ordinary skill in the art
would have had no difficulty in recognizing the identity of the claimed
subject matter. Furthermore, we determine that Appellants' disclosure
reasonably conveys that Appellants had possession of the claimed subject
matter as of the filing date. Ariad, 598 F.3d 1351.
With respect to the Examiner's concern that the border surfaces might
have a newly discovered utility or advantage that was unknown to
Appellants' as of the filing date, such consideration is not relevant to our
inquiry as a matter of law. It is well settled that it is not a requirement of
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patentability that an inventor correctly set forth, or even know, how or why
the invention works. In re Cortright, 165 F.3d 353, 1359 (Fed. Cir. 1999);
see also Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570 (Fed.
Cir. 1983) ("an inventor need not comprehend the scientific principles on
which the practical effectiveness of his invention rests").
We do not sustain the Examiner's Section 112 written description
rejection of claims 1-32.
Anticipation of
Claims 1---8, 13-15, 17, 19, 20, 25-30, 32, and 33 by Williams
Claim 1
The Examiner finds that Williams discloses all of the limitations of
claim 1. Final Action 4--5. In particular, the Examiner finds that Williams'
flange exhibits first and second surface portions and that the border between
such portions is positioned radially beyond a raised feature of the roller
body. Id. at 5. The Examiner supports such findings with an annotated
version of Figure 6 of Williams. Id. at 4.
Appellants traverse the rejection by arguing, among other things, that
the feature identified by the Examiner as Williams' "border" is not
positioned radially beyond raised surface feature 213. Appeal Br. 5.
In response, the Examiner finds that raised feature 213 is below the
border when the rollers are fully actuated together. Ans. 15. Once again,
the Examiner relies on an annotated version of Figure 6 to support such
position. Id. at 15-18.
Williams depicts protrusion 221 that corresponds to Appellants'
claimed flange. Williams, Fig. 6. In operation, protrusion 221 fits into
alignment slot 217 of outside roller 202. Id. Outside roller 202 also features
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protrusion 212 that is adjacent alignment slot 217. Id. Protrusion 212 urges
the end of pipe 216 into notch 222. Id. Notch 222 is substantially U-shaped
with spaced apart opposing side walls. Id. The side walls of notch 222
appear to be substantially vertical in angular orientation vis-a-vis the axis of
rotation of inside roller 204. Id. The right side wall of notch 222 is
contiguous with pipe abutment surface 242 of protrusion 221. Id. Pipe
abutment surface 242 is disposed at an orientation angle vis-a-vis the axis of
rotation of roller 204 that is different from the orientation angle of the right
side wall of notch 222. Id. The place where notch 222 and pipe abutment
surface 242 come together corresponds with the Examiner's finding of a
"border" within the meaning of claim 1.
There is no discussion in Williams' Specification that defines or
describes the junction of notch wall 222 and pipe abutment surface 242 or
specifically where such junction is disposed relative to other features of
inside roller 204, in general, and raised feature 213, in particular. Thus, the
Examiner's findings of fact that Williams anticipates claim 1 rests entirely
on the Examiner's interpretation of Figure 6. We have reviewed Figure 6
and find that it is, at best, ambiguous whether pipe abutment surface departs
from the angular orientation of the sidewall of notch 22 radially above,
below, or at the same radial distance as raised feature 213. Williams, Fig. 6.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
Given the ambiguous nature of Figure 6 on this critical fact combined with
the complete absence of any disclosure or description in Williams'
Specification on this matter, we are not able to conclude that the Examiner's
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finding of fact that there is a "border" between two angularly distinct surface
portions of surface 242 that is radially outward of raised feature 213 is
supported by a preponderance of the evidence.
For the reasons set forth above, we do not sustain the Examiner's
anticipation rejection of claim 1.
Claim 20
Claim 20 is an independent claim that, like claim 1, contains a
limitation directed to a border that is positioned radially beyond a raised
feature of the body of a roller. Claims App. The Examiner's rejection of
claim 20 suffers from the same infirmity that was identified above with
respect to claim 1. Thus, for essentially the same reason expressed above in
connection with claim 1, we do not sustain the rejection of claim 20.
Claims 2---8, 13-15, 17, 19, 25-30, and 32
Each of these claims depends, directly or indirectly, from either
claim 1 or claim 20. Claims App. As such, the Examiner's rejection of
these claims suffers from the same infirmity that was identified above with
respect to claims 1 and 20. Thus, for essentially the same reason expressed
above in connection with the rejection of claims 1 and 20, we do not sustain
the rejection of claims 2-8, 13-15, 17, 19, 25-30, and 32.
Claim 33
Claim 33 is an independent claim that is substantially similar in scope
to claim 1 except that it does not recite a border, but it does recite a flange
that has a curved surface with a center of curvature such that the curved
surface retreats away from an end of a pipe element. Claims App. The
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Examiner finds that the top, annular circumferential perimeter of
protrusion 221 has a curved surface that satisfies the claim element.
Having reviewed Figure 6 of Williams, we determine that the
Examiner's finding that the curved surface of protrusion 221 "retreats away"
from pipe 208 is in error. Thus, we do not sustain the Examiner's
anticipation rejection of claim 33.
Unpatentability of Claims 9-12 and 21-24
over Williams
Each of these claims depends, directly or indirectly, from either
claim 1 or claim 20. Claims App. In each case, the Examiner's rejection
relies on a finding that there is a border between two surface portions and
that such border is radially outward of a surface feature. Final Action 9-11.
Such finding is an error for reasons previously discussed. The Examiner's
rejection does not postulate that a person of ordinary skill in the art would
have modified Williams to have two surface portions with diverse angular
orientations as claimed or that such person would have had a reason to do
so. 2 Thus, we do not sustain the rejection of claims 9-12 and 21-24.
Unpatentability of Claims 16, 18, and 31
over Williams and Rung
Each of these claims depends, directly or indirectly, from either
claim 1 or claim 20. Claims App. In each case, the Examiner's rejection
depends on a border being between two surface portions and that such
border is radially outward of a surface feature. Final Action 11-13. For
reasons previously discussed, the record does not support a finding that such
2 The Examiner openly questions whether Appellants even understood the
reason for having such a border at the time of invention. Final Action 2-3.
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a border is present in Williams and such deficiency is not cured by Rung.
Consequently, we do not sustain the rejection of claims 16, 18, and 31.
DECISION
The decision of the Examiner to reject claims 1-33 is REVERSED.
REVERSED
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