Ex Parte Fawley

Board of Patent Appeals and Interferences

Sep 20, 2006

10354491 (B.P.A.I. Sep. 20, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORMAN C. FAWLEY
____________

Appeal 2006-1207
Application 10/354,491
Technology Center 1700
____________

Decided: September 20, 2006
____________

Before GARRIS, KRATZ, and FRANKLIN, Administrative Patent Judges

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the Examiner’s final rejection of
claims 14 through 24.
We AFFIRM-IN-PART.
Appeal 2006-1207
Application 10/354,491

Independent claim 14 is representative of the subject matter on appeal
and is set forth below:
A method comprising:
aligning first and second pipe segments at a first end of each
respective pipe segment, each pipe segment having a core and a
composite reinforcement circumferentially surrounding the core,
each pipe segment further having a cut-back portion at the first
ends in which the core is exposed;
attaching the first pipe to the second pipe at the first ends;
wrapping a composite joint tape circumferentially around the
first pipe and second pipe at the cut-back portions; and
curing the composite joint tape to provide hoop reinforcement
to the first and second pipe segments at the cut-back portions.

The Examiner relies upon the following references as evidence of
anticipation and unpatentability:
Yamauchi JP 61025673 A Feb. 4, 1986
Betteridge US 4,595,607 Jun. 17, 1986
Dempster US 5,300,356 Apr. 5, 1994
Wilhelm (as translated) WO 96/29535 Sep. 26, 1996
Funatsu JP 2000179752 A Jun. 27, 2000

Claims 14, 15, 17, 18, 21, and 22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Wilhelm.
Claims 15, 16, 19, 20, 23 and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wilhelm in view of Dempster.
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The Examiner entered the following new ground of rejection:
Claim 23 stands alternatively rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilhelm and Dempster and further in view of either
Funatsu, Yamuchi or Betteridge.
OPINION
For the reasons set forth below, we sustain the rejections of claims 14,
15, 17, 18, 21, and 22 under 35 U.S.C. § 102(b) over Wilhelm and of claims
15, 16, 20 and 24 under 35 U.S.C. § 103(a) over Wilhelm in combination
with Dempster. We will not sustain the rejection of claims 19 and 23 under
35 U.S.C. § 103(a) as being unpatentable over Wilhelm in view of Dempster
and of claim 23 over Wilhelm and Dempster and further in view of either
Funatsu, Yamuchi or Betteridge.
ANTICIPATORY REJECTION OVER WILHELM
Claims 14, 15, 17, 18, 21, and 22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Wilhelm.
Wilhelm is directed to “corrosion protection on the weld joints of
plastic-coated steel pipes, which, however, have no coating in the area of the
weld joints, whereby laminates of fiber-reinforced, cured unsaturated
polyester resin are applied to the uncoated area, and whereby the laminates
overlap the plastic-coated area” (Translation 2). In Wilhelm, pipes
precoated with plastic and having uncoated ends are welded together
(Translation 8). Once welded, “mats saturated with resin . . .[are] applied to
the steel pipe and then the resin is cured” (id.). The resins used by Wilhelm
are cold curing resins and photocuring resins (Translation 9). Wilhelm also
discloses partially embedding reinforcement glass fibers in the pipe’s plastic
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coating for the purpose of improving the adhesion of the curable resin to the
coating (Translation 10).
According to the Examiner, Wilhelm anticipates claim 14 because:

Wilhelm is directed to a method of providing
corrosion protection for steel pipes comprising
welding adjacent, plastic-coated steel pipes and
wrapping multiple composite joint tapes (laminates
of fiber and resin) in a region where said steel
pipes are uncoated (cutback portion), wherein said
composite reinforcement is cured . . . . Wilhelm
further teaches that the "plastic" coating 3 around
the steel pipes is embedded with fibers 4 and thus
constitutes a "composite reinforcement
circumferentially surrounding the core" . . . . It is
further noted that the benefit of improved hoop
reinforcement would be expected to necessarily
result in the assembly of Wilhelm. The placement
of such a fibrous reinforcement structure in the
hoop direction necessarily results in some degree
of hoop reinforcement. It is agreed that an
optimum reinforcement might occur if the fibrous
structure is entirely oriented in the circumferential
or hoop direction; however, the claim simply
requires a tape "to provide hoop reinforcement". It
is emphasized that the tape of Wilhelm is a
fiber/resin composite that is wrapped over the weld
region (equates to circumferential or hoop
direction)- even if all the fibers are perpendicular
to the hoop direction, some degree of hoop
reinforcement would still be provided due to the
thickness of the respective fibers [Answer para.
bridging 4 and 5].

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With respect to claim 14, Appellant “disagrees with the Examiner's
characterization” that “the plastic coating . . . embedded with fibers . . .
constitutes a ‘composite reinforcement’” (Br. 8). Appellant contends:
Wilhelm does not suggest this technique [of
embedding fibers into the plastic coating to
improve adhesion] in any way provides
reinforcement to the underlying core. Moreover,
the partial embedding of fibers into two separate
10 cm wide regions at only the ends of a plastic
coating which may be anywhere from 10 m to 25
m long, may not be characterized as a ”composite
reinforcement” as required in Claim[] 14 [id.].

The Examiner responds that “the pipe segments are defined by a core
1 and a composite reinforcement, wherein said composite reinforcement is
formed of a polyethylene coating 3 and a fibrous reinforcement material 4”
(Answer 8). According to the Examiner, “in an analogous manner to the
claimed invention, the composite reinforcement is not present over the weld
region” (id.).
In reply, Appellant repeats his position that the plastic coating of
Wilhelm is not a composite reinforcement (Reply Br. 2) and that “the
Examiner has not shown that the coating 3/ [glass] fiber 4 combination of
Wilhelm suggests any sort of ‘composite reinforcement’ as the term is used
within claim[] 14” (Reply Br. 3).
Appellant’s arguments question whether the coating/fiber combination
of Wilhelm is a composite reinforcement. Thus, we must first address what
constitutes a composite reinforcement.
Appellant describes the composite reinforcement as “made with a[n]
isopolyester resin matrix with E glass fibers” (Spec. para. bridging 3 and 4).
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However, Appellant also discloses “the isopolyester resin may be substituted
with any resin with similar strength and elongation characteristics to support
the fibers” (Spec. 4). A composite, as understood in light of the
Specification, appears to be a resin coating in combination with glass fibers.
As indicated above, Wilhelm discloses partially embedding
reinforcement fibers in the pipe’s plastic coating (Translation 10). We also
note that Wilhelm’s disclosure consistently refers to the embedded glass
fibers as reinforcement fibers or material (id.). Thus, one skilled in the art
would interpret the term “composite reinforcement” to encompass the
coating/glass fiber components of Wilhelm. For this reason, we are
unpersuaded by Appellant’s argument that “the Examiner has not shown that
the coating 3/ [glass] fiber 4 combination of Wilhelm suggests any sort of
‘composite reinforcement’ as the term is used within claim[] 14.”
With respect to the limitation in claim 14 regarding "curing the
composite joint tape to provide hoop reinforcement," Appellant further
argues that “[t]he Examiner suggests merely wrapping a reinforcement layer
in the hoop direction would necessarily provide some degree of hoop
reinforcement” (Br. para. bridging 8 and 9).
Regarding the rejection by the Examiner, Appellant submits “Wilhelm
does not expressly teach the laminate provides hoop reinforcement. Instead,
Wilhelm teaches the laminate protects against corrosion and may be used to
improve adhesion” (Br. 9). Appellant additionally argues “Wilhelm further
fails to suggest any particular fiber orientation, number or the strength of the
fibers that may be found within the mat used to make the laminate. Still
further, Wilhelm fails to indicate the tension of application of the mat
layers” (id.).
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The Examiner contends “the joint tapes of Wilhelm are fibrous layers
that are wrapped in the circumferential or hoop direction of the pipe
assembly. The placement of such a fibrous reinforcement structure in the
hoop direction necessarily results in some degree of hoop reinforcement”
(Answer 8). The Examiner further contends:
[T]he claim simply requires a tape ”to provide
hoop reinforcement”. It is emphasized that the
tape of Wilhelm is a fiber/resin composite that is
wrapped over the weld region (equates to
circumferential or hoop direction)- even if all the
fibers are perpendicular to the hoop direction,
some degree of hoop reinforcement would still be
provided due to the thickness of the respective
fibers [Answer para. bridging 8 and 9].

Appellant repeats the arguments in the Reply Brief. (Reply Br. 3-4).
Our reviewing courts have held that, if a prior art device inherently
possesses the capability of functioning in the manner claimed, anticipation
exists regardless of whether there was recognition that it could be used to
perform the claimed function. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). When relying upon the theory
of inherency, the Examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
Appellant attempts to refute the Examiner’s position by arguing that
“if hoop reinforcement were necessarily provided, Wilhelm would at the
very least need to teach circumferential fiber orientation” (Br. 9). We note
that the Examiner provides a technical reasoning of why the composite joint
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tape of Wilhelm provides hoop reinforcement, “even if all the fibers are
perpendicular to the hoop direction” (Answer 9). The Examiner’s technical
reasoning in support of the inherency position regarding the “hoop
reinforcement” characteristic under consideration is adequate to establish a
prima facie case for the following reason.
Appellant’s invention addresses the problems related to “stronger
steels [that] tend to suffer from increased brittleness, corrosion, and
difficulties associated with welding, bending and laying during installation”
(Spec. 1). Like Appellant, Wilhelm’s invention is directed to “corrosion
protection . . . of steel pipes” (Translation 1). We also note that both
disclose the use of a joint tape comprising a resin curable matrix reinforced
with fibers wrapped around the pipe joint (Translation 8; Spec. 6-7).
Appellant and Wilhelm, thus, are directed to at least one common problem
(i.e., corrosion) with steel pipes and employ what appears to be the same
type of joint tape to solve this problem. Thus, if wrapping the joint with a
composite joint tape achieves the common goal of preventing corrosion, it is
fair to say that it also provides “some degree of hoop reinforcement,” as
urged by the Examiner (Answer para. bridging 8 and 9).
In a situation where, as here, the claimed and prior art products appear
to be identical, the Patent and Trademark Office can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977). Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, or on “prima facie obviousness” under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and
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its fairness is evidenced by the inability of the Patent and Trademark Office
to manufacture products or to obtain and compare prior art products.
Id., 562 F.2d at 1255, 195 USPQ at 433-34.
As indicated above, the Examiner has provided an adequate technical
reasoning of why Wilhelm’s composite joint tape provides some degree of
hoop reinforcement. On the record before us, the Appellant has submitted
no evidence that proves otherwise. Thus, it is our determination and that the
Examiner has established that Wilhelm anticipates the invention of claim 14
and that the Appellant has failed to successfully rebut the Examiner’s
reasoning that Wilhelm provides “some degree of hoop reinforcement. ”
Accordingly, we sustain the anticipatory rejection of claim 14.
Claim 15 requires “preheating the first pipe and the second pipe at the
cut-back portion of the first ends.” The Examiner contends “Wilhelm
describes a preheating step in order to melt the plastic coating . . . . In this
instance, heating would occur at the boundary between the coated and
uncoated regions and thus, it appears that some of the uncoated region
(cutback region) would be heated” (Answer 5).
Appellant argues:
Wilhelm teaches the heat is applied to melt the
plastic to assist in embedding fibers within the
plastic. Certainly, this is not ”preheating” as the
term is understood in light of Appellant’s
Specification, which teaches preheating the core to
drive off moisture, provide a dry surface and kick
off curing [Br. 10].

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The Examiner responds:
[T]he heating [in Wilhelm] only occurs in the
region where the coating is present. Thus, heating
terminates at the boundary between the coated and
uncoated regions of the pipe. As currently drafted,
the claim requires ”preheating at the cut-back
portion”. The above noted heating step would heat
the cutback portion at the above noted boundary-
the claim fails to require that the entire curt-back
[sic, cut-back] portion is heated” [Answer 9].

In reply, Appellant counters, “neither the claims nor Appellant's
Specification support the reading of ‘preheating at the cut-back portion’
relied upon by the Examiner” (Reply Br. 4). Specifically, Appellant argues
that, while “[t]he claim language may not require preheating of the entire
exposed portion of the core as noted by the Examiner, however, it certainly
requires heating more than just a boundary between the core and composite
reinforcement” in view of the language of claim 14 and the Specification
(Reply Br. para. bridging 4 and 5).
It is well settled that a limitation of the Specification must not be read
into a claim where no express statement of the limitation is included therein.
Comack Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87,
48 USPQ2d 1001, 1005 (Fed. Cir. 1998); In re Priest, 582 F.2d 33, 37,
199 USPQ 11, 15 (CCPA 1978); In re Prater, 415 F.2d 1393, 1405, 162
USPQ 541, 551 (CCPA 1969).
We first note that Appellant concedes that “[t]he claim language may
not require preheating of the entire exposed portion of the core as noted by
the Examiner” (Reply Br. 4). In addition, as also noted by the Examiner,
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claim 15 has no limitations concerning the extent of the cut-back portion of
the pipe that is to be preheated (Answer 9).
We agree with the Examiner’s contention, as apparently conceded by
Appellant (Reply Br. 4), that the language of claim 15 does not require “that
the entire curt-back [sic, cut-back] portion is heated” (Answer 9) for the
following reasons.
While Appellant points to sections of the Specification to support the
allegation that claim 15 “requires heating more than just a boundary between
the core and composite reinforcement 140” (Reply Br. para. bridging 4 and
5), the sections relied on do not address preheating of the cut-back portion.
Even if the Specification disclosed the extent of the cut-back portion to be
heated, to read the claim as argued by Appellants would impermissibly read
a limitation into claim 15. LizardTech, Inc. v. Earth Resource Mapping,
Inc., 424 F.3d 1336, 1344, 76 U.S.P.Q.2d 1724, 1731 (Fed. Cir. 2006).
Further, as pointed out by the Examiner, Wilhelm’s “heating [of the
plastic coating] terminates at the boundary between the coated and uncoated
regions of the pipe” (Answer 9). We do not envision how Wilhelm’s cut-
back portion would not be preheated to some extent, and Appellant has
provided no evidence or pointed to no portion of Wilhelm in support of his
argument. Thus, we also agree with the Examiner’s conclusion that “some
of the uncoated region (cut-back region) would be heated” (Answer 5).
Accordingly, we sustain the rejection of claim 15 under 35 U.S.C.
§ 102(b) as being anticipated by Wilhelm.
Claim 17 further requires the step of “wrapping a resin saturated
reinforcement tape circumferentially around the joint tape to prevent surface
cracking of the joint tape.”
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The Examiner contends that the structure of the resin laminates of
Wilhelm “includes multiple laminates or reinforcement layers, the innermost
one of which can be viewed as a ‘composite joint tape’ and the adjacent one
(with respect to the innermost one) of which can be viewed as a ‘resin
saturated tape’” (Answer para. bridging 5 and 6). The Examiner refers to the
sole figure of Wilhelm as depicting “multiple fiber reinforced laminates 5, 6
. . . wrapped around the uncoated portion of the weld region” (Answer 6).
The Examiner explains that “the innermost laminate 5, 6 can be viewed as
the joint tape and the outermost laminate can be viewed as the fabric- the
claims as currently drafted fail to exclude the respective layers from being
the same” (id.).
Appellant argues that “different claim terms (‘composite joint tape’
and ‘resin saturated reinforcement tape’) [are used] to identify these
elements, necessarily [suggesting] the presence of two separate elements
differing in scope. Thus, identical mats of Wilhelm, regardless of how many
layers are applied, may not be relied upon to teach both a ‘composite joint
tape’ and a ‘resin saturated reinforcement tape’” (Br. para. bridging 10 and
11).
The Examiner states that “[t]he mere use of different claim terms does
not restrict a first and second laminate formed of the same material from
being viewed as a ‘composite joint tape’ and a ‘resin saturated tape.’ The
claims as currently drafted fail to identify any specific characteristics or
arrangements for the respective layers other than one being a composite tape
and the other being a resin saturated tape- in this instance, the laminates of
Wilhelm are fiber/resin composites [and] are seen to constitute either layer
of the claimed invention” (Answer 10).
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Appellant replies, “the resin saturated reinforcement tape prevents
surface cracking of the joint tape. Such features are not recited with respect
to the joint tape. Thus, not only does Appellant's use of different claim
terms (‘composite joint tape’ and ‘resin saturated reinforcement tape’) to
identify each layer require the presence of two separate elements differing in
scope, so to [sic, too] does Appellant's identification of specific
characteristics of the resin saturated reinforcement tape not identified with
respect to the composite joint tape” (Reply Br. 6).
We concur with the Examiner that the language of claim 17 does not
require the composite tape and the resin saturated reinforcement tape to be
separate materials. The claims do not recite any structural limitations that
distinguish the resin saturated reinforcement tape from the composite joint
tape. Wilhelm’s tape is a cloth or fleece mat saturated with resin matrix
(Translation 8). According to Wilhelm, “[l]aminates of glass mats (5) . . .
saturated with resin (6), are applied to the uncoated area, whereby the upper
laminate overlaps the coated area” (Figure; Translation 11). Thus, the
claimed and prior art products again appear to be identical. If identical,
Wilhelm’s wrapped joint tape necessarily performs the function in claim 17
of preventing surface cracking (i.e., of the underlying laminate). The
Appellant has submitted no evidence proving that Wilhelm’s wrapped joint
tape does not necessarily or inherently perform the function of claim 17.
Best, 562 F.2d at 1255, 195 USPQ at 433.
Accordingly, we sustain the anticipatory rejection of claim 17 over
Wilhelm.
Independent claim 18 differs from independent claim 14 in that the
curing step need not “provide hoop reinforcement to the first and second
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pipe segments at the cut-back portions.” Appellant’s argument directed to
claim 18 mirrors the argument made with respect to claim 14 concerning the
composite reinforcement. The argument is unpersuasive for reasons
discussed above.
Claim 21, dependent from claim 18, was not separately argued and,
therefore stands or falls with claim 18.
Claim 22 is essentially of the same scope as claim 17. The argument
raised against claim 22 is the same as the argument directed to claim 17.
This argument also is unpersuasive as discussed above.
Accordingly, we sustain the anticipatory rejections of claims 18, 21
and 22 over Wilhelm.
OBVIOUSNESS REJECTION OVER WILHELM AND DEMPSTER
Dempster is directed to “[a] tape wrap system adapted for protecting
metal tubular articles, particularly pipes, from corrosion comprising in order,
a primer coating covering the surface of the article, an innerwrap over the
primer coating and an outerwrap placed over the innerwrap” (Abstract).
Both the innerwrap and the outerwrap comprise heat fusible materials
(Abstract). Dempster also discloses:
The general process of producing the tape wrap
system of this invention includes well known plant
tape coating methods. By way of illustration, pipe
may initially be cleaned by any of the conventional
ways known in the art such as by shot or grit
blasting and preheated, e.g. to 125o-200 oF. Primer
is then applied to the pipe by way of well known
processes such as spraying or brushing [col. 4,
lines 42-47].

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Under 35 U.S.C. § 103(a), the Examiner presents the following
alternative rejection of claim 15 as well as a first rejection of claims 16, 19,
20, 23 and 24:
While Wilhelm fails to expressly describe the
processing of the steel pipes prior to receiving the
composite joint tapes, there are a series of well
known processing steps such as blasting,
pretreatment (primer application), and pre-heating
(residual heat would be expected to contribute
somewhat to curing of resin) that are extensively
used in the application of protective tape wraps or
laminates to steel pipes, as shown for example by
Dempster (Column 4, Lines 42-50). It is
emphasized that Dempster is directed to the
application of a tape wrap system (to steel pipes)
in order to provide corrosion resistance and while
the reference fails to expressly describe a pipe
weld region, a fair reading of Dempster suggests
that the above noted techniques are applicable to
individual pipes or a welded pipe assembly.
Absent any conclusive showing of unexpected
results, one of ordinary skill in the art at the time
of the invention would have found it obvious to
process the steel pipes in a conventional manner,
such as shown by Dempster, prior to applying the
respective composite tapes in the method of
Wilhelm. It is additionally noted that Wilhelm
does suggest the use of a blasting technique in
order to clean the weld region (Page 11, Example 1
of translation) and thus, Wilhelm expressly
discloses one of the conventional processing
techniques [Answer para. bridging 6 and 7].

Appellant argues that “one of ordinary skill in the art would
understand the materials used, such as resin mixtures, to be specific to the
type of cure desired” (Br. para. bridging 11 and 12) and that “a resin mixture
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suitable for cold curing or photo curing such as that of Wilhelm, would not
necessarily be interchangeable with a heat curing system as taught by
Dempster” (Br. 12).
The Examiner contends:
Dempster . . . [evinces] a heating step as
representing a common technique in the treatment
of metallic pipes prior to the application of a
reinforcement material . . . . [T]he treatments are
carried out to provide a clean surface for the
application of a reinforcement material and would
have been practiced on any metallic pipe surface
prior to the application of a reinforcement
material” [Answer 9].

In reply, Appellant repeats the arguments made in the Brief (Reply Br.
5).
Claim 15 recites the limitation of “preheating the first and the second
pipe at the cut-back portion of the first ends.” According to Appellant’s
Specification, “preheating [of the metal core] drives off moisture and
provides a dry surface for subsequent welding and reinforcement adhesion”
(Spec. 5). Appellant’s Specification also indicates that “[t]he [steel] core
130 may be preheated . . . to remove excess moisture and to kick off the cure
of the composite reinforcement 140 during subsequent application” (Spec.
8).
Like Appellant, both Wilhelm and Dempster are directed to protecting
metal pipes from corrosion (Wilhelm Translation 2; Dempster col. 3, lines 7-
10). Both Wilhelm and Dempster also address protection of welded joints
(Wilhelm Translation 8; Dempster col. 5, lines 12-13). In addition, Wilhelm
and Dempster teach cleaning at least a portion of the pipe surface prior to
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application of the reinforcement material. Specifically, Wilhelm teaches
cleaning at least the weld joint by sandblasting (Translation 11). Dempster
discloses “conventional ways known in the art [to clean pipe surfaces] such
as by shot or grit blasting and preheat[ing], e.g. to 125o-200 oF” (col. 4, lines
46-47).
Based on these disclosures and the common purpose of corrosion
prevention, we agree with the Examiner’s conclusion that one of ordinary
skill in the art at the time of the invention would have found the disclosure
of Dempster regarding the preheating step applicable to the process of
Wilhelm as “a conventional manner [to treat steel pipes] prior to applying
. . . composite tapes” (Answer 7).
Accordingly, we sustain the alternative rejection of claim 15 under
35 U.S.C. § 103(a) over Wilhelm in view of Dempster.
Claim 16 recites “priming the first ends of the cut-back portions.”
The Examiner relies on the combination of Wilhelm and Dempster to meet
this limitation for the reasons expressed in the above quotation from the
paragraph bridging pages 6 and 7 of the Answer.
Appellant argues “the adhesion mechanism of Wilhelm is not
facilitated by priming, thus one of ordinary skill in the art would not be
motivated to add a useless or redundant step to the process of Wilhelm” (Br.
13).
According to the Examiner:
A fair reading of Dempster suggests that the
disclosed treatment techniques are generally
applicable to methods in which a reinforcement
material is applied to a metallic pipe surface. This
is further supported by the suggestion of one of the
treatment techniques by Wilhelm in a method
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involving a weld region of adjacent, metallic pipes
[Answer 10].

We are unpersuaded by Appellant’s argument that the adhesion
mechanism of Wilhelm is not facilitated by priming. Appellant has pointed
to no disclosure in Wilhelm that supports this argument. On the contrary,
Wilhelm offers an alternative manner to apply the joint tape that includes
“first paint[ing] the . . . resin onto the weld joint, then lay the fiber form on
top, press it into the resin and cure this” (Translation para. bridging 8 and 9).
This step is suggestive of a priming step.
As noted above, Wilhelm and Dempster are directed to protecting
metal pipes from corrosion, particularly welded joints. Dempster teaches
applying primer to the surface of the pipe for the purpose of “provid[ing]
better adhesion at both the pipe/primer interface and the innerwrap/primer
interface and also to coat any irregularities which may be present on the
pipe surface” (col. 1, lines 31-34).
In view of the aforenoted common objective of Wilhelm and
Dempster, we agree with the Examiner’s contention that “one of ordinary
skill in the art at the time of the invention would have found it obvious to
process the steel pipes in a conventional manner, such as shown by
Dempster, prior to applying the respective composite tapes in the method of
Wilhelm” (Answer para. bridging 6 and 7).
The arguments concerning claim 20 correspond to the arguments
concerning claim 16, which are unpersuasive for reasons given above.
Accordingly, we sustain the rejection of claims 16 and 20 under
35 U.S.C. § 103(a) over Wilhelm in view of Dempster.
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Independent claim 24 differs from independent claim 14 in that it
requires a priming step and further requires “wrapping a fabric over the
wrapped joint tape to provide hoop reinforcement to the first and second
pipe segments at the cut-back regions” prior to the curing step.
The Examiner contends that “the innermost laminate is seen to
constitute a joint tape and the adjacent laminate is seen to constitute the
fabric” (Answer 7). This rationale for the rejection over Wilhelm and
Dempster parallels the rationale presented against claim 17.
Appellant’s arguments also parallel the arguments and are
unpersuasive for reasons analogous to those discussed previously.
Accordingly, we sustain the obviousness rejection of claim 24.
Claim 19 requires “heating the metallic core to kick off cure of the
resin in the composite joint tape.” The Examiner again relies on the
combination of Wilhelm and Dempster to meet the recited limitation.
Appellant argues, “Wilhelm fails to teach the element of ‘heating the
metallic core to kick off cure of a resin in the composite joint tape’ as recited
in Claim 19. Instead, Wilhelm teaches ‘curing is carried out under radiation
with UV-light or sunlight’” (Br. para. bridging 13 and 14).
While conceding that “Wilhelm discloses a method in which the resin
is cured via UV light or sunlight” (Answer 10), the Examiner contends that
“the above noted heated [sic, heating] steps (of the plastic coating [as taught
by Wilhelm] or of the pipe prior to wrapping the reinforcement [as taught by
Dempster]) would be expected to contribute a small amount to the curing of
the resin- as currently drafted, the claim only requires that the metallic core
is heated to kick off cure of the resin” (Answer para. bridging 10 and 11).
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We disagree with the Examiner’s contention. As correctly pointed out
by Appellant, the resin of Wilhelm is cold cured or photocured (Translation
9). The rationale advanced by the Examiner has no support or explanation
on how heating the metallic core of Wilhelm’s pipe will kick off cure of the
resin in a cold cure resin system or photocurable resin system of the type
disclosed by Wilhelm. The Examiner’s rationale is unacceptably based on
assumption and speculation.
Accordingly, we will not sustain the rejection of claim 19 under
35 U.S.C. § 103(a) over Wilhelm in view of Dempster.
Claim 23 depends from claim 19, the rejection of which has not been
sustained. Accordingly, we also will not sustain the rejection of claim 23 for
the reasons presented above.
OBVIOUSNESS RJECTION OVER WILHELM AND DEMPSTER,
FURTHER IN VIEW OF EITHER FUNATSU, YAMUCHI OR
BETTERIDGE

This rejection only concerns claim 23. As indicated above, claim 23
is dependent on claim 19. Since the rejection of claim 19 has not been
sustained, we again will not sustain the rejection of claim 23 for the reasons
presented above.
OTHER ISSUES
We note that the subject matter of the claim 14 limitation "curing the
composite joint tape to provide hoop reinforcement" is not described in the
Specification as filed. “The claim or claims must conform to the invention as
set forth in the remainder of the Specification and the terms and phrases used
in the claims must find clear support or antecedent basis in the description so
that the meaning of the terms in the claims may be ascertainable by
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Appeal 2006-1207
Application 10/354,491

reference to the description.” 37 CFR § 1.75(d)(1). We also note the
limitation in question appears in original claim 14. Claims filed in the
original Specification are part of the disclosure. Therefore, if an application
as originally filed contains a claim disclosing material not disclosed in the
remainder of the Specification, the applicant may amend the Specification to
include the claimed subject matter. In re Benno, 768 F.2d 1340, 1346,
226 USPQ 683, 686-687 (Fed. Cir. 1985). Appellant should submit an
amendment to correct the above-noted omission and thereby comply with
37 CFR § 1.75(d)(1).
In addition, claim 24 recites “wrapping a fabric over the wrapped joint
tape to provide hoop reinforcement to the first and second pipe segments at
the cut-back regions.” In our review of the Specification, we find the
following disclosure concerning the step of wrapping fabric: “[a] woven
fabric [can be] wrapped circumferentially around the joint to prevent
circumferential cracking during subsequent cure of the [composite]
reinforcement joint tape” (Spec. 2). However, the above noted claim
limitation appears to lack descriptive support with respect to providing
“hoop reinforcement to the first and second pipe segments at the cut-back
regions.”
In any future prosecution that may occur, Appellant and the Examiner
should address whether and how this limitation complies with the written
description requirement of the first paragraph of 35 U.S.C. § 112.
CONCLUSION
The Examiner’s rejection of claims 14, 15, 17, 18, 21, and 22 under
35 U.S.C. § 102(b) as being anticipated over Wilhelm is affirmed.
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Appeal 2006-1207
Application 10/354,491

The Examiner’s rejection of claims 15, 16, 20 and 24 U.S.C. § 103(a)
as being unpatentable over Wilhelm and Dempster is affirmed.
The Examiner’s rejection of claims 19 and 23 U.S.C. § 103(a) as
being unpatentable over Wilhelm and Dempster is reversed.
The Examiner’s rejection of claims 23 U.S.C. § 103(a) as being
unpatentable over Wilhelm and Dempster and further in view of either
Funatsu, Yamuchi or Betteridge is reversed.
Thus, the decision of the Examiner is AFFIRMED-IN-PART.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (effective Sep.
13, 2004; 69 Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office
21 (Sep. 7, 2004)).

AFFIRMED-IN-PART

APJ Initials:

BRG/TF
Blakeley, Sokoloff, Taylor & Zafman
12400 Wilshire Blvd.
Seventh Floor
Los Angeles, CA 90025-1030
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