Ex Parte FoergDownload PDFPatent Trial and Appeal BoardFeb 12, 201813932163 (P.T.A.B. Feb. 12, 2018) Copy Citation United States Patent and Trademark Office 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. 13/932,163 07/01/2013 Christian Foerg 5068.1134 2193 23280 7590 02/14/2018 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER PANCHOLI, VISHAL J ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 02/14/2018 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): ddk @ ddkpatent .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN FOERG (Applicant: Hilti Aktiengesellschaft) Appeal 2017-002973 Application 13/932,163 Technology Center 3700 Before STEFAN STAICOVICI, JAMES P. CALVE, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hilti Aktiengesellschaft (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2017-002973 Application 13/932,163 SUMMARY OF THE INVENTION Appellant’s disclosure is directed to a method for installing a firestop device or insulation. Spec. 12. Claim 1, reproduced below from page 81 (Claims Appendix) of the Appeal Brief (filed May 3, 2016), is illustrative of the claimed subject matter: 1. A method for installing a firestop device or insulation on a line or pipe, comprising: placing the firestop device or the insulation completely around the line or pipe in the circumferential direction; and wrapping a flexible adhesive tape containing heat- resistant fibers in a lengthwise direction of the tape in the circumferential direction of the line or pipe completely around the firestop device or the insulation. REJECTIONS Claims 1—3, 8, 9, and 12—14 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Lequeux (US 5,307,842, issued May 3, 1994).2 Claims 4—7 and 15—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lequeux. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lequeux and Chang (US 4,139,669, issued Feb. 13, 1979). 1 We note that Appellant did not number the pages of the Appeal or Reply Briefs. Our references herein refer to pages numbered consecutively from one to 12 for the Appeal Brief and from one to three for the Reply Brief. 2 Although the rejection heading does not reference claim 12, the claim is addressed in the body of the rejection. 2 Appeal 2017-002973 Application 13/932,163 ANALYSIS Anticipation Rejection The Examiner finds that Lequeux discloses all of the elements of independent claim 1. Final Act. 2 (citing Lequeux 5:5—10, Figs. 1, 3); see also Ans. 6 (“summarizing the invention of Lequeux in brief for clarity”). In particular, the Examiner finds that Lequeux discloses wrapping a fiber- reinforced adhesive tape (adhesive tape 14, 15)3 around a firestop device or insulation (thermal protection cover/sheath 7). Id. The Examiner finds that the fibers in the adhesive tape are oriented “in a lengthwise direction of the tape in the circumferential direction of the line or pipe.” Id. The Examiner makes similar findings regarding independent claim 8. Id. at 2—3. Appellant traverses, noting that claim 1 requires heat-resistant fibers in a lengthwise direction of the tape and arguing that “Lequeux does NOT disclose, inherently or explicitly, such fibers running in the lengthwise direction of the tape.'” Appeal Br. 4. According to Appellant, “[t]he Final Office Action is in error for failing to consider the proper claim language and meaning of fibers in a lengthwise direction of the tape as claimed.” Id. The Examiner answers that “the claim only recites that ‘heat-resistant fibers in a lengthwise direction’” but “do[es] not recite that one longitudinal end of the fiber extends from one longitudinal end of the adhesive tape and the second longitudinal end of the fiber extends from the second longitudinal end of the adhesive tape.” Ans. 6. Continuing, the Examiner states that “the broadest reasonable interpretation is that the fibers are arranged throughout 3 Parentheticals refer to the terminology of Lequeux. 3 Appeal 2017-002973 Application 13/932,163 the entire length of the adhesive tape and not necessarily deployed in a longitudinal direction extending from one end to another.” Id. at 6—7. The Examiner answers further that “the claim does not make it clear what is the ‘lengthwise direction’ of the tape.” Id. at 7. According to the Examiner, “[a] lengthwise direction can be either an axial direction around the pipe axis or a radial direction around the pipe axis since a length is a measurement that requires a reference direction.” Id. Continuing, the Examiner states “[i]n either interpretation, the glass fibers on adhesive tapes 14 and 15 would have to be deployed in one of those two configuration^] in the invention of Lequeux. Therefore, Lequeux teaches the claimed limitations as recited in claims 1 and 14.” Id. Appellant replies that “[t]he Examiner’s Answer contains clear misunderstandings of the claim language and the prior art. Specifically, claims 1, 8 and 14 recite that ‘fibers in a lengthwise direction of the tape.’” Reply Br. 2. Appellant also argues that “[Lequeux] simply does not show or disclose, inherently or explicitly, fibers that run in the lengthwise direction of the tape” and that “[t]here simply is NO fiber direction indicated in [Lequeux].” Id. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must also “disclose[] within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 4 Appeal 2017-002973 Application 13/932,163 545 F.3d 1359, 1371 (Fed. Cir. 2008). We are persuaded by Appellant’s arguments that the Examiner’s rejection fails to satisfy these requirements. We first address the Examiner’s position that “[a] lengthwise direction can be either an axial direction around the pipe axis or a radial direction around the pipe axis.” Ans. 7; see also Final Act. 6 (“the lengthwise direction can be any directions of the pipe since the claim recitation does not make it clear as to if the lengthwise direction is an axial, radial, longitudinal, horizontal, vertical or any other direction”). Claim 1 recites “a flexible adhesive tape containing heat-resistant fibers in a lengthwise direction of the tape.” Appeal Br. 8 (Claims App.) (emphasis added). Claim 8 similarly recites “an adhesive tape including heat-resistant fibers running in a lengthwise direction of the tape.” Id. at 9 (Claims App.) (emphasis added). Thus, the Examiner’s reference to the pipe axis or radius, rather than to the tape, is unavailing. A person of ordinary skill in the art would readily understand the plain meaning of “lengthwise direction of the tape” to mean the longitudinal direction of the tape as it is unwound. This construction is consistent with the Specification. See, e.g., Spec. 24—25, Figs. 2—3. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citations omitted) (“It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification, and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” (citations omitted)). We also note that the Examiner refers to the length of the tape (see Ans. 6—7 (“the broadest reasonable interpretation is that the 5 Appeal 2017-002973 Application 13/932,163 fibers are arranged throughout the entire length of the adhesive tape”)), thus indicating an understanding of the tape’s length dimension. We next address the Examiner’s position that “the broadest reasonable interpretation is that the fibers are arranged throughout the entire length of the adhesive tape and not necessarily deployed in a longitudinal direction extending from one end to another.” Ans. 6—7. We do not agree with this interpretation, as claim 1 requires “heat-resistant fibers in a lengthwise direction of the tape” and claim 8 similarly requires “heat-resistant fibers running in a lengthwise direction of the tape.” Appeal Br. 8—9 (Claims App.). The claims, thus, require heat-resistant fibers positioned parallel to or collinear with the tape’s lengthwise direction (or, using the Examiner’s language, the tape’s longitudinal direction). Turning to the Examiner’s rejection, we agree with Appellant that Lequeux does not provide any information regarding the orientation of the fibers that reinforce adhesive tapes 14, 15. The totality of Lequeux’s description of the reinforcing fibers is: In a particular form of embodiment shown in FIG. 3, the flexible pipe comprises, between the outer tube 10 and the outer sheath 6, two wound strips made from agglomerated cork 12 and 13 and at least one and preferably two adhesive tapes 14 and 15 that can be reinforced, if required, by glass fiber or any other equivalent material, tape 15 being laid between cork bands 12 and 13. Lequeux 5:4—11. The Examiner’s determination that Lequeux’s fibers are oriented in a lengthwise direction of the tape is speculation, which is improper for an anticipation rejection. 6 Appeal 2017-002973 Application 13/932,163 Accordingly, for the foregoing reasons, we do not sustain the rejection of independent claims 1 and 8, nor of their respective dependent claims 2, 3, 9, and 12—14, as being anticipated by Lequeux. Obviousness Based on Lequeux Claims 4—7 and 18—20 depend from claim 1, and claims 15—17 depend from claim 8. The Examiner’s modification of Lequeux does not remedy the deficiencies noted above with respect to the anticipation rejection of independent claims 1 and 8. Therefore, we do not sustain the rejection of claims 4—7 and 15—20 as being unpatentable over Lequeux. Obviousness Based on Lequeux and Chang Claims 10 and 11 depend from claim 8. Chang is not relied upon by the Examiner in any manner that would remedy the deficiencies noted above with respect to the anticipation rejection of claim 8. Therefore, we do not sustain the rejection of claims 10 and 11 as being unpatentable over Lequeux and Chang. DECISION The Examiner’s decision to reject claims 1—20 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation