Ex Parte Gillanders et al

Patent Trial and Appeal Board

Jun 27, 2016

95001717 (P.T.A.B. Jun. 27, 2016)

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.
95/001,717 09/13/2011 Larry Gillanders 24811-001 5680
7590 06/27/2016
LAW OFFICES OF BRIAN S. STEINBERGER
101 BREVARD AVENUE
COCOA, FL 32922
EXAMINER
TILL, TERRENCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/27/2016 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
____________

ROY A. TERRY
Requester and Appellant

v.

PIPE RESTORATION TECHNOLOGIES, LLC
Patent Owner and Respondent
____________

Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2
Technology Center 3900
____________

Before HUBERT C. LORIN, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)
This is a decision under 37 C.F.R. § 41.77(f) in an inter partes
reexamination of U.S. Pat. 7,858,149 B2 (“the ’149 Patent”). This
Decision incorporates the previous PTAB Decisions mailed March 18,
2014 (“2014 PTAB Decision”) and January 16, 2015 (“2015 PTAB
Decision”). In the 2014 and 2015 PTAB Decisions, new grounds of
rejection under 37 C.F.R. § 41.77(b) were made. The new grounds of
rejection are as follows:
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

2

1. Claims 1–7 and 9–18 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of Naf ’209 and Reimelt. 2014 PTAB Decision 8, 9.
2. Claims 8 and 71 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of Naf ’209, Reimelt, and NRL. 2014 PTAB Decision
9; 2015 PTAB Decision 4.
3. Claim 23, 24, 30, 41, 45, 54, and 68, 30, 45, 58, and 72, 77–
80, and 85–88 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in view
of Naf ’209, Reimelt, NRL, and Toya. 2015 PTAB Decision 3, 4.
4. Claims 29, 44, 57, 73, and 74 under 35 U.S.C. § 103(a) (pre-
AIA) as obvious in view Naf ’209, Reimelt, and NRL, Toya, and the
ABSS Visual Comparator. 2015 PTAB Decision 3–4.
The full citations to the cited publications are listed in the 2014
and 2015 PTAB Decisions.

Request to Re-Open Prosecution and Requester’s New Evidence
Patent Owner requested to re-open prosecution under 37 C.F.R.
§ 41.77(b)(1). PO Request to Reopen (Feb. 17, 2015). An
amendment to the claims accompanied the request. Requester had the
opportunity under 37 C.F.R. § 41.77(c) to respond with “comments”
following Patent Owner’s request to re-open prosecution and
accompanying amendment, but did not. The Examiner subsequently
made a determination under 37 C.F.R. § 41.77(d) that the new and
amended claims were in compliance with the written description
requirement of 35 U.S.C. § 112 and that the new grounds of rejection
from the 2014 PTAB Decision and the 2015 PTAB Decision were
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

3

overcome by the amendments. Examiner 41.77(d) Determination 7–8
(July 27, 2015). After the Examiner’s § 41.77(d) Determination,
Requester responded with comments and new evidence, that included
newly cited prior art. Requester § 41.77(e) Comments (Aug. 27,
2015). Requester proposed new rejections based on the newly cited
prior art, arguing that the amended claims were obvious to one of
ordinary skill in the art. Id.
Requester’s new evidence is untimely and not admissible under
the rules. 37 C.F.R. § 41.77(e) states that “the owner or any requester
may once submit comments in response to the examiner’s
determination.”
37 C.F.R. § 41.77(c) permits a requester to file “written
comments” after the patent owner’s amendment under § 41.77(b)(1).
A § 41.77(c) response contemplates new evidence since the
subsequent Examiner’s determination under § 41.77(d) is to consider
“an amendment or new evidence not previously of record,” if any has
been presented. Therefore, Requester had the opportunity to file new
evidence after Patent Owner’s amendment re-opening prosecution, but
chose to not do so. The Examiner’s subsequent determination under
37 C.F.R. § 41.77(d) that the new grounds of rejection were overcome
addressed only the claim amendments and evidence submitted by the
Patent Owner under 37 C.F.R. § 41.77(b)(1) and did not raise new
issues for which Requester’s “new evidence” would have been
appropriate. In this case, to permit entry of new evidence after the
Examiner’s Determination circumvents the Examiner’s opportunity to
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

4

have considered it because once the 37 C.F.R. § 41.77(d)
Determination is made the Requester’s Comments under 37 C.F.R. §
41.77(e) are limited to responding to the Examiner’s Determination.
After that, “the proceeding [is] returned to the Board which shall
reconsider the matter and issue a new decision.” 37 C.F.R. § 41.77(f).
The Examiner has had no opportunity to review the Requester’s new
evidence and the newly proposed rejections raised for the first time in
Requester’s comments under 37 C.F.R. § 41.77(e).
Requester contends that they “had the necessity of finding new
counsel” and that “the references in the new grounds of rejection were
located by Requester and Requester’s new counsel only upon
preparing the present Comments” (Requester § 41.77(e) Comments
20), but provides no explanation why a search wasn’t done when the
claim amendments were first filed by Patent Owner and why it was
necessary to find a new counsel. Consequently, we do not find this
argument persuasive.
In sum, the new evidence is untimely and has not been
considered in the Decision.

New Grounds of Rejection
In an attempt to overcome the new grounds of rejection, the
claims were amended.
Independent claims 1, 9, 12, and 18 were amended, inter alia,
to include the step of “providing the barrier coating leak sealant
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

5

adheres to the interior walls of the piping system/pipes in excess of
approximately 400 PSI.”
Dependent claims 30, 45, 58, and 72, which at the time of the
2014 and 2015 PTAB Decisions recited the “400 PSI” limitation that
has been added to the independent claims, were amended to recite
“providing the barrier coating leak sealant adheres to the interior walls
of the piping system/pipes in excess of approximately 2,500 PSI.”
(Emphasis added.)
Independent Claims 12 and 18 were further amended to change
the viscosity range of the “epoxy material” from “approximately
10,000 cps to approximately 60,000 cps,” which had been found to be
obvious, to “approximately 10,001 cps to approximately 15,000 cps.”
Each of the limitations as amended in the Request are discussed
below.

“providing the barrier coating leak sealant adheres to the interior
walls of the piping system in excess of approximately 400 PSI”
Independent claims 1, 9, 12, and 18 were amended to include
the limitation of “providing the barrier coating leak sealant adheres to
the interior walls of the piping system in excess of approximately 400
PSI.” PO Request to Reopen 2.
The Examiner found that the limitation is not described or
suggested in the prior art. Examiner 41.77(d) Determination 7. As
explained below, the Examiner’s determination is not supported by a
preponderance of the evidence.
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

6

Patent Owner identified the following disclosure in the ’149
Patent which discussed the “in excess of approximately 400 PSI”
limitation:
A twenty second objective of the invention is to
provide methods, systems and devices for repairing
interior walls and sealing leaks in pipes, in a single
operation, where the barrier coating material is designed
to operate safely under NSF (National Sanitation
Foundation) Standard 61 criteria in domestic water
systems, with adhesion characteristics within piping
systems in excess of approximately 400 PSI.
’149 Patent, col. 5, ll. 9–15.
Patent Owner also referenced a document from American
Water Works Association (“AWWA”), identified as ANSI/AWWA
C210-97, “AWWA STANDARD FOR LIQUID-EPOXY COATING
SYSTEMS FOR THE INTERIOR AND EXTERIOR OF STEEL
WATER PIPELINES,” effective date, Feb. 1, 1998 (hereinafter
“AWWA C210-97”). PO Response Board Dec. 36. Section 4.3 of
AWWA C210-97 (“Coating System”) describes the requirements for
epoxy pipe coatings. Table 1 lists 400 PSI (“lb/in.2”) as a “minimum”
for “adhesion.”
The evidence provided by Patent Owner thus indicates that
adhering a sealant “at minimum” of 400 PSI was a known standard for
pipe coatings prior to the filing date of the ’149 Patent. The
disclosure of a “minimum” value is an express teaching that higher
PSI values may be used, i.e., values greater than or in excess of 400
PSI. Consequently, the Examiner clearly erred in finding that “in
excess of approximately 400 PSI” was not described or suggested by
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

7

the prior art because AWWA C210-97 establishes that this value was
a recognized “minimum” industry standard, making higher values
obvious to one or ordinary skill in the art. For this reason, we
conclude that the “400 PSI” amendment to independent claims 1, 9,
12, and 18 does not overcome New Ground of Rejection 1–4.

“providing the barrier coating leak sealant adheres to the interior
walls of the piping system/pipes in excess of approximately 2,500 PSI”
Claims 30, 45, 58, and 72 are amended to recite “providing the
barrier coating leak sealant adheres to the interior walls of the piping
system/pipes in excess of approximately 2,500 PSI.”
Patent Owner cites written description support for the claim
amendment in the provisional application to which it claims benefit,
but not in the ’149 Patent. PO Response Board Dec. 31. We note that
to comply with the written description requirement of 35 U.S.C.
§ 112(a) and first paragraph (pre-AIA), the “specification shall
contain a written description of the invention.” In this case, Patent
Owner has not cited support for the claim amendment in the
“specification” of the ’149 Patent. Consequently, the claim
amendment does not comply with 35 U.S.C. § 112.
Moreover, as found above, AWWA C210-97 describes a barrier
coating that adheres to the pipe walls at a minimum of 400 PSI – an
express teaching of adherence values of 400 PSI and greater. The
limitation “in excess of approximately 2,500 PSI” overlaps with the
range described in AWWA C210-97. It is well-established that, when
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

8

there is a range disclosed in the prior art, and the claimed invention
overlaps or falls within that range, there is a presumption of
obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003);
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004). In such situations, “the applicant must show that the
particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.” In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Patent Owner has
have not provided evidence that the claimed range is critical or
achieves unexpected results. Consequently, we conclude that the
Examiner’s determination that the claims overcome the obviousness
rejections is not supported by a preponderance of the evidence.
For this reason, we conclude that the amendments to claims 30,
45, 58, and 72 do not overcome the New Grounds of Rejection 3.
Since the claims are unpatentable under 35 U.S.C. § 103, it is not
necessary to additionally reject them under § 112 for lack of written
description.

“comprising an epoxy material having a viscosity range of
approximately 10,001 cps to approximately 15,000 cps when
measured at room temperature”
Independent claims 12 and 18 are amended to recite
“comprising an epoxy material having a viscosity range of
approximately 10,001 cps to approximately 15,000 cps when
measured at room temperature.”
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

9

As pointed out by Requester, Patent Owner has not provided
evidence that such range, which is narrower than the original range in
the rejected claims, is critical or performs differently than the broader
range. Woodruff, 919 F.2d at 1578.
In this case, while Naf teaches 20,000 cps (2014 Decision 7),
Requester, citing Toya, had argued in their Appeal Brief (April 22,
2013) that the epoxy viscosity depends on what temperature it is
applied at and that the skilled worker knew how to use heat with
various types of epoxy mixtures. Requester Appeal Br. 11, 36.
Furthermore, Reimelt teaches that “the different viscosity between the
air and the coating material causes the viscose coating material to
come into contact with the pipe and to wet same” (Reimelt, col. 4, ll.
33–35), suggesting that the specific viscosity is not critical. In sum,
Patent Owner has not established, in view of the aforementioned
evidence, that the claim amendment narrowing the viscosity range is
non-obvious over the cited publications.
In addition to this, we note that claim amendment is not
compliant with the written description requirement of 35 U.S.C. §
112.
When claims are amended or newly added, an applicant should
show written description support, as required by 35 U.S.C. § 112, for
the new or amended claim in the original disclosure. M.P.E.P. § 2163
(Ninth Edition, Rev. Nov. 2015). To satisfy the written description
requirement of 35 U.S.C. § 112, the inventor must “convey with
reasonable clarity to those skilled in the art that, as of the filing date
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

10

sought, he or she was in possession of the invention.” Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “One shows
that one is ‘in possession’ of the invention by describing the
invention, with all its claimed limitations.” Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
In this case, Patent Owner states that written description
support for the amendment to claims 12 and 18 appears on at least
column 7, lines 62–63, and in Table 5 on column 18 of the ’149
Patent. PO Response Board Dec. 31–32, 39. Column 7, lines 62–63,
of the ’149 Patent disclose: “The mixed epoxy having a viscosity of
approximately 10001 to approximately 15000 cps has at least
approximately 15% fillers.” Table 5 at column 18 of the patent has
the same disclosure.
The support cited by Patent Owner is of an epoxy having
“10001 to approximately 15000 cps” and “at least approximately 15%
fillers.” However, amended claims 12 and 18 only recite the
described viscosity range and not the filler quantity. Thus, the newly
added claim amendment is broader than invention described in the
’149 patent because it omits a disclosed element. See Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) (claims to a
sectional sofa comprising, inter alia, a console and a control means
were held invalid for failing to satisfy the written description
requirement where the claims were broadened by removing the
location of the control means). Consequently, the Examiner’s
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

11

determination that the claimed amendment is described in the ’149
Patent is not supported by a preponderance of the evidence.
In sum, we conclude that the amendments to claims 12 and 18,
and dependent claims 17, 52, 58, 65, 77, 80, 87, and 88, do not
overcome the New Grounds of Rejection. Since the claims are
unpatentable under 35 U.S.C. § 103, it is not necessary to additionally
reject them under § 112 for lack of written description.

Summary
In sum, the claim amendments do not overcome the new
grounds of rejection. No claim listed in New Grounds of Rejection 1–
4 is patentable. This decision is final.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one
month of the date of: . . . [t]he original decision of the Board under
§ 41.77(a).” A request for rehearing must be in compliance with
37 C.F.R. § 41.79(b). Comments in opposition to the request and
additional requests for rehearing must be in accordance with
37 C.F.R. § 41.79(c)-(d), respectively. Under 37 C.F.R. § 41.79(e),
the times for requesting rehearing under paragraph (a) of this section,
for requesting further rehearing under paragraph (d) of this section,
and for submitting comments under paragraph (c) of this section may
not be extended.
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

12

An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983
for an inter partes reexamination proceeding “commenced” on or
after November 2, 2002 may not be taken “until all parties’ rights to
request rehearing have been exhausted, at which time the decision of
the Board is final and appealable by any party to the appeal to the
Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7,
July 2008).
In the event neither party files a request for rehearing within the
time provided in 37 C.F.R. § 41.79, and this decision becomes final
and appealable under 37 C.F.R. § 41.81, a party seeking judicial
review must timely serve notice on the Director of the United States
Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

dm
Appeal 2016-003301
Reexamination Control 95/001,717
Patent 7,858,149 B2

13

PATENT OWNER:
LAW OFFICES OF BRIAN S. STEINBERGER
101 Brevard Avenue
Cocoa, FL 32922

THIRD PARTY REQUESTER:
KLEIN, O'NEILL & SINGH, LLP
16755 Von Karman Avenue
Suite 275
Irvine, CA 92606