Ex Parte Fawley

Board of Patent Appeals and Interferences

Oct 26, 2011

10695252 (B.P.A.I. Oct. 26, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/695,252 10/27/2003 Norman C. Fawley 59910P003 4350
8791 7590 10/26/2011
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
10/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORMAN C. FAWLEY
____________

Appeal 2010-006654
Application 10/695,252
Technology Center 1700
____________

Before CHARLES F. WARREN, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-006654
Application 10/695,252

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DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 4, 6-10, 17, and 18.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim, and dependent claim 17 are
representative of the invention and are reproduced below from the Claims
Appendix to the Appeal Brief:
1. A method of bending Composite Reinforced Pipe (CRP)
comprising:

placing a heater proximate to a a [sic] plurality of longitudinally
displaced locations along the pipe where the pipe is to be bent, the
pipe having a composite reinforcement comprising a resin and
reinforcement fibers coupled thereto;

heating the pipe to a temperature above a heat distortion
temperature of the resin such that the composite reinforcement is
heated to a temperature below a heat distortion temperature of the
composite reinforcement; and

bending the pipe incrementally at the plurality of longitudinally
displaced locations, the longitudinally displaced locations separated
by a distance equal to approximately ¼ of a diameter of the pipe.

17. The method of claim 1 wherein the reinforcement fibers are
positioned circumferentially and longitudinally along the pipe.

Appellant requests review of the following grounds of rejection (App. Br.):

1 Final Office Action mailed Mar. 31, 2009 (“Final”).
2 Appeal Brief filed Sep. 8, 2009 (“App. Br.”).
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Application 10/695,252

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1. claims 1, 4, 6-10, 17, and 18 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement (Ans.3 4-5);
2. claims 1, 4, 6, 7, and 9 under 35 U.S.C. §103 as unpatentable over Smith
(US 2004/0060497 A1, published Apr. 1, 2004) in view of Clavin (US 4,132,104,
issued Jan. 2, 1979) and Lewis (EP 1086760 A2, published Mar. 28, 2001) as
evidenced by Drobny (Handbook of Thermosplastic Elastomers, 2007, William
Andrew Publishing, 137-138) (Ans. 5-8);
3. claims 8 and 10 under 35 U.S.C. §103 as unpatentable over Smith in view of
Clavin and Lewis as evidenced by Drobny as applied to claim 1, and further in
view of Miller (US 4,255,378, issued Mar. 10, 1981) (Ans. 8-9); and
4. claims 17 and 18 under 35 U.S.C. §103 as unpatentable over Smith in view
of Clavin and Lewis as evidenced by Drobny, and further in view of Wolfe (US
5,435,867, issued Jul. 25, 1995) (Ans. 9-10).

Rejection of claims 1, 4, 6-10, 17, and 18 under
35 U.S.C. §112, first paragraph, written description requirement

The Examiner contends the claim 1 limitation of “placing a heater proximate
to a plurality of longitudinally displaced locations” is not supported by the
originally filed Specification because “[c]laim 1 includes having multiple heaters,
which is not disclosed in the Specification as originally filed.” (Ans. 4-5.) For the
reasons explained on page 7 of the Appeal Brief (second full paragraph), we are in
agreement with Appellant that “[t]he ordinary plain meeting [sic, meaning] of ‘a
heater,’” as used in the context of claim 1, “would be understood by a person of
ordinary skill in the art is [sic, as] a single heater and not a plurality of heaters as

3 Examiner’s Answer mailed Dec. 9, 2009.
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Application 10/695,252

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argued by the Examiner.” The originally filed Specification clearly supports the
use of a single heater (see Spec. [0012] (“induction heater 30”).)
Accordingly, we do not sustain this ground of rejection.
Rejection of claims 1, 4, 6-10, 17, and 18 under 35 U.S.C. §103(a)
Appellant presents arguments in support of separate patentability of claim
17. (App. Br. 12-13.) Claim 18 depends from claim 17 and, therefore, stands or
falls with claim 17. (See id. at 13.) The remaining dependent claims, i.e., claims
4, and 6-10, stand or fall with independent claim 1. (See id. at 10-11.)
Claim 1
The issue we consider with respect to claim 1 is whether the Examiner relied
on impermissible hindsight reasoning in determining it would have been obvious at
the time of the invention to modify Smith’s pipe bending method by forming the
bends at increments equal to ¼ of the pipe diameter, as required by the bending
step of claim 1.
Appellant does not dispute the Examiner’s findings with respect to the
teachings of Smith. (See App. Br. 9-10; compare App. Br. 4-5 with Ans. 5-7
(discussing Smith’s disclosure).) As found by the Examiner (Ans. 6), Clavin
discloses it was known in the art at the time of the invention to form a bend of less
than one degree per arc foot (col. 5, ll. 3-5) in twelve inch diameter coated pipe
(col. 2, ll. 51-53). Appellant concedes that this is a teaching of bending a pipe 1º,
at increments equal to the diameter of the pipe. (App. Br. 9.)
Appellant does not dispute the Examiner’s determination that it would have
been obvious to have modified Smith’s process based on the teachings of Clavin
(Ans. 6), and that the combined teachings of Smith, Clavin and Drobny4 disclose

4 Drobny is relied on to establish the use of induction heating would result in
Appellant’s claimed heating step. (See Ans. 7.)
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the invention as claimed in claim 1 with the exception of an explicit teaching of
bending at increments equal to ¼ the length of the pipe’s diameter (Ans. 7). (See
App. Br. 9-10.)
Appellant does not disagree with the Examiner’s finding that Lewis teaches
a desired overall arc can be achieved through incremental ¼º bends. (See id. at 5
and 9-10.)
The Examiner determined “[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to combine Lewis’ bend
increments [of ¼º ] with Smith’s pipe bending because Lewis teaches that ¼º
bends can incrementally achieve the larger overall arc desired to be obtained.”
(Ans. 7 (citations omitted).) The Examiner’s proposed motivation to modify the
process of Smith in view of Clavin is supported by Lewis’s disclosure that “[b]y
making each incremental bend uniform, . . . highly accurate overall bends can be
accomplished. This . . . reduces the number of pipes that may be damaged, over
bent or otherwise rendered unusable.” (Lewis col. 12, ll. 11-16.)
Appellant does not dispute that if Lewis’ ¼º incremental bending process
were used in Smith’s method to achieve Clavin’s desired overall bend of less than
1º per arc foot in twelve inch diameter pipe, the bends would be longitudinally
displaced by a distance equal to approximately ¼ of the pipe diameter as required
by appealed claim 1 (Ans. 7). (See App. Br. 9-10.)
Appellant’s sole argument is that the Examiner’s obviousness determination
is based on impermissible hindsight reasoning “because there is no teaching or
suggestion in either Clavin or Lewis to separate bends by [increments equal to ¼
of the pipe diameter].” (App. Br. 10 (emphasis added).)
Like the Examiner (see Ans. 11-12), we find Appellant’s argument
unpersuasive because it is directed to the references individually, and does not
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Application 10/695,252

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address the Examiner’s proposed motivation to modify Smith, which is based on
the combined teachings of Clavin and Lewis. In our view, the Examiner’s fact
finding and reasoning is sufficient to establish that one of ordinary skill in the art
would have been motivated to combine the references in the manner claimed. As
indicated above, Appellant has not disputed that the references, if properly
combined, would result in the method recited in appealed claim 1. Accordingly,
we affirm the rejections of claims 1, 4, and 6-10 under 35 U.S.C. §103(a).
Claim 17
The issue we consider with respect to claim 17 is whether the Examiner
reversibly erred in determining it would have been obvious, based on the teachings
of Wolfe, to have positioned the fibers of Smith’s composite reinforcement
circumferentially and longitudinally along the pipe, because Wolfe teaches away
from using such configuration in a non-static pipe.
Wolfe teaches it was known in the art to use “a variety of continuous fibre
reinforcement patterns to achieve the required effective laminate properties” for
composite tubular structures. (Wolfe col. 2, ll. 50-62.) One such pattern combined
“longitudinal-oriented reinforcing fibres (parallel to the cylinder axis) to resist
axial loads together with circumferential oriented reinforcing fibres (perpendicular
to the cylinder axis) to resist hoop loads.” (Wolfe col. 2, l. 65-col. 3, l. 2.)
Appellant relies on the following paragraph in Wolfe to establish “that this
positioning of fibers should not be used when the pipe will be flexed or bent” (Rep.
Br.5 9 (citing Wolfe col. 3, ll. 15-20)):
Where the structure is intended to be relatively rigid and is not
required to exhibit significant flexibility, the laminate may employ
appropriate patterns to meet the anticipated loading conditions.

5 Reply Brief filed Feb. 9, 2010.
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However, where a flexible structure is required, additional
considerations apply.

“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). See also,
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“A
statement that a particular combination is not a preferred embodiment does not
teach away absent clear discouragement of that combination.”).
The Examiner acknowledges that Wolfe teaches there can be inconsistencies
in strength in composite tubular structures which use Appellant’s claimed fiber
pattern. (Ans. 12-13 (citing Wolfe col. 3, l. 56-col. 4, l. 16).) However, like the
Examiner, we do not view Wolfe’s disclosure as teaching away from using this
particular arrangement. The above-quoted paragraph from Wolfe applies to
composite tubular structures requiring “significant flexibility.” Appellant has not
shown that significant flexibility is needed to effect the type of bends required in
Smith’s large diameter pipes. Moreover, we are in agreement with the Examiner
that the ordinary artisan could readily view the advantages achieved by using a
fiber orientation as claimed as outweighing any adverse effect on flexibility. (See
Ans. 13.)
Accordingly, because we are not persuaded the Examiner reversibly erred in
determining it would have been obvious, based on the teachings of Wolfe, to have
positioned the fibers of Smith’s composite reinforcement circumferentially and
longitudinally along the pipe, we affirm the rejections of claims 17 and 18 under
35 U.S.C. §103(a).
Appeal 2010-006654
Application 10/695,252

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In sum, we reverse the rejection of claims 1, 4, 6-10, 17, and 18 under 35
U.S.C. §112, first paragraph, but affirm the rejections of these claims under 35
U.S.C. §103(a).
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).

AFFIRMED

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