Ex Parte Isham et al

Patent Trial and Appeal Board

Jul 25, 2018

14517490 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/517,490
11132 7590
Boulware & Valoir
2603 Augusta Drive
Suite 1350
Houston, TX 77057
FILING DATE FIRST NAMED INVENTOR
10/17/2014 John Isham
07/27/2018
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.
MV:001002US 1065
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
patent@boulwarevaloir.com
nseigel@boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN ISHAM and T AMSEN V ALO IR 1
Appeal2017-010489
Application 14/517 ,490
Technology Center 3600
Before DANIEL S. SONG, JAMES P. CAL VE, and JILL D. HILL,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-17. Appeal Br. 5. Claim 18 is withdrawn. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 MedV asis LLC is identified as the real party in interest and also is the
applicant pursuant to 37 C.F.R. § 1.46. Appeal Br. 3.
Appeal2017-010489
Application 14/517 ,490
CLAIMED SUBJECT MATTER
Claims 1, 13, and 16 are independent. Claim 1 is illustrative and is
reproduced below.
1. A marine protective covering, said covering surrounding a
marine piling and comprising a plurality of layers of plastic film,
every two layers having a removal strip associated therebetween,
the layers arranged so that removal strips are staggered in location
with respect to one another and so that a single outermost layer
can be removed from said marine piling using an outermost
removal strip.
Appeal Br. 31 (Claims App'x).
REJECTIONS
Claims 1, 7, 8, and 13 are rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Igarashi (US 6,964,141 B2, iss. Nov. 15, 2005).
Claims 1, 7, 8, and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Igarashi. See Ans. 5---6 (New Ground of Rejection).
Claims 1, 2, and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Igarashi and Moretti (US 4,076,373, iss. Feb. 28, 1978).
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as unpatentable
over Igarashi, Moretti, and Fawley (US 5,633,057, iss. May 27, 1997).
Claims 1, 5, 7-9, 11, 13, 14, and 16 are rejected under 35 U.S.C.
§ 103 as unpatentable over Mullins (A Demonstration of Underwater FRP
Repair, Concrete International, Jan. 2006, at 70) and Kim (US Re 34,024,
iss. Aug. 11, 1992).
Claims 2, 3, 12, 15, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Mullins, Kim, and Fawley.
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Igarashi and Saylor (US 2012/0137414 Al, pub. June 7, 2012).
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Appeal2017-010489
Application 14/517 ,490
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Igarashi.
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Igarashi and Bradshaw (US 2012/0298734 Al, pub. Nov. 29, 2012).
ANALYSIS
Claims 1, 7, 8, and 13
Rejected As Anticipated by or Unpatentable Over Igarashi
In both rejections of claims 1, 7, 8, and 13, the Examiner relies on
Igarashi to disclose a removal strip as recited in independent claims 1 and
13. Final Act. 3 (citing Igarashi, Figs. 7(a), 7(b), 9(a), 9(b)); Ans. 5. The
Examiner finds that Igarashi places adhesive strips 35, 35a between layers of
a plastic film (high-ductility material 21) as claimed. Final Act. 3; Ans. 5.
The Examiner finds that the Specification defines "removal strip" as "any
mechanism or device for allowing the film to be cut or otherwise separated
along the strip for removal of a layer." Ans. 8 ( quoting Spec. ,r 32). The
Examiner reasons that a removal strip can be a guide strip that allows the use
of a separate tool such as a knife to cut along the strip to remove a layer, and
Igarashi's adhesive strips 35, 35a "are a mechanism which allows the film to
be cut or otherwise separated along the strip for removal of a layer, even
serving as a guide for a separate tool such as a utility knife." Id.
Appellants argue that adhesive elements 35 and 35a prevent removal
of high-ductility material 21 by bonding the layers together and providing
additional strength. Appeal Br. 13. Appellants argue that equating adhesion
with removal is an error of law. Id. at 14. Appellants assert that "there is no
way to get a knife between the layers if they are adhered together, especially
under water, which will exert considerable pressure." Reply Br. 3.
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Appeal2017-010489
Application 14/517 ,490
We agree with the Examiner that Appellants define "removal strip" as
a "device for allowing the film to be cut or otherwise separated along the
strip for removal of a layer." Indeed, Appellants also define removal strip as
a "device to raise the layer slightly along or inside the strip for insertion of a
cutting blade." Spec. ,r 32. Appellants disclose such a removal strip 62 with
a small depression 63 into which knife 65 can be inserted to slice through a
layer of plastic film. Id. ,r 66, Figs. 6A, 6B. However, the Examiner has not
established by a preponderance of evidence that Igarashi' s adhesive strips
35, 35a are capable of serving as a guide strip along which a utility knife can
be inserted to cut and remove a layer, or that adhesive 35, 35a is a device
that raises a layer slightly along or inside the strip for insertion of a knife.
Igarashi discloses a reinforcement for structural components such as
beams, girders, columns, and bridge piers to prevent their collapse during an
earthquake or other seismic event. Igarashi, 1:5-33. To address the fact that
the material of these structures expands in volume upon rupture, Igarashi
wraps these structures in layers of a high-ductility fiber or rubber material in
a sufficient number of turns to surround the structure multiple times, which
confines expansion, controls the rupture, and prevents collapse. Id. at 3 :24--
67, 7:59-fJ7, 11:6-12:19, Figs. 7a, 7b. Igarashi also discloses that the high-
ductility material 21 is closely wound on structural member 15 and closely
rolled on member 15 in multiple layers, as shown in Figures 7 a, 7b, which
the Examiner cites in the rejection. Id. at 10:8-9, 11:22-23; Final Act. 3.
Igarashi places adhesive 35, 35a between each layer of high-ductility
material 21 and between material 21 and structural member 15 to position
and maintain the layers of material 21 in place closely against member 15 to
contain a rupture that occurs. Igarashi, 11: 12-31.
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Appeal2017-010489
Application 14/517 ,490
The Examiner has not explained sufficiently how the placement of
adhesive strips 35 between layers of a high-ductility material 21 that is
"closely rolled on the member 15 in three layers" can serve as a guide strip
for a utility knife, or how such an adhesive strip can raise or separate the
layers of material 21 between which it is disposed sufficient "for insertion of
a cutting blade" to be considered a "removal strip" as Appellants define that
term in their Specification. Id. at 11 :22-23; Spec. ,r 32.
The Examiner's finding that adhesive strips 35, 35a are "a mechanism
which allows the film to be cut or otherwise separated along the strip for
removal of a layer, even serving as a guide for a separate tool such as a
utility knife" (Ans. 8) is not supported by any record evidence or technical
reasoning and therefore is speculative. The Examiner has not cited any basis
in Igarashi's disclosure or drawings to support such a finding that adhesive
strips 35, 35a are capable of serving as a guide for a knife or that adhesive
strips 35, 35a separate layers of material 21 by a sufficient distance or space
to allow the insertion of a cutting blade between the layers, particularly
when Igarashi discloses that the layers are closely wound when actually
installed on structural member 15.
In that regard, we observe that Figures 7 (a) and 7 (b) of Igarashi upon
which the Examiner relies and which appear to illustrate spacing between
the wrapped layers of high-ductility material 21 are described as being
"explanatory views," and do not appear to illustrate a completely installed
reinforcement wrap. See Igarashi 5:63---67. Thus, we do not sustain the
rejection of claims 1 and 13 or dependent claims 7 and 8, which depend
from claim 1.
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Appeal2017-010489
Application 14/517 ,490
Claims 1, 2, and 13
Rejected Over Igarashi and Moretti
Regarding claim 1, the Examiner finds that Igarashi teaches a marine
protective covering for a marine piling as claimed including a release layer
(adhesive layer 35). Final Act. 5. The Examiner finds that Moretti teaches a
protective covering comprising plural layers of plastic film 20 separated by a
removal strip ( elongated tab 26) between every two layers as claimed. Id.
The Examiner determines it would have been obvious to include removal
strips, as taught by Moretti, with the protective covering of Igarashi as a way
to facilitate removal of individual layers as Moretti teaches. Id. at 5-6.
Appellants argue persuasively that a person of ordinary skill in the art
would have had no reason to include a removal strip between each layer of
Igarashi's covering material 21 because material 21 is a load-bearing jacket,
and it makes no sense to modify material 21 so it can be removed one layer
at a time "where removing any layers will only weaken the jacket, making
collapse more likely." Appeal Br. 20. Appellants also argue that removing
the wrap material 21 one layer at a time would be very difficult given the
adhesive that is used to bind the layers together. Id.
The Examiner is correct that Igarashi teaches that "the disposed high-
ductility material 21 can be easily removed." Igarashi, 16:46-47; Ans. 14--
15 ( quoting id.). However, the Examiner has not explained why, if the high-
ductility cover material 21 is easily removed, a skilled artisan would have
been motivated to add removal strips between each layer to allow removal
of each layer one layer at a time, particularly when Igarashi uses adhesive
35, 35a to hold the layers of cover material 21 in place together and against
structure 15. It appears that the Examiner engages in hindsight reasoning.
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Appeal2017-010489
Application 14/517 ,490
Moretti teaches the advantages of protecting an expensive lens 18 of a
mask of helmet 10 by placing thin, flexible, inexpensive sheets 20 against an
exterior surface of lens 18 so lens 18 does not have to be replaced. Moretti,
3:7--4:56, Figs. 3, 5. Instead, each protective sheet 20 is removed, when it is
worn out, using a tab 26. Id. at 4:57---68, 2:26--48. As Appellants argue, this
method differs from the method of Igarashi, which maintains wraps material
21 around structure 15 in layers sufficient to prevent collapse and therefore
has no reason to remove layers one at a time as in Moretti. Appeal Br. 21.
Thus, we do not sustain the rejection of claims 1, 2, and 13.
Claims 3 and 4
Rejected Over Igarashi, Moretti, and Fawley
The Examiner's reliance on Fawley to teach features recited in claims
3 and 4 (Final Act. 8-9) does not remedy the defects of Igarashi and Moretti
discussed above for the rejection of claim 1 from which these claims depend.
Thus, we do not sustain the rejection of claims 3 and 4.
Claims 1, 5, 7-9, 11, 13, 14, and 16
Rejected Over Mullins and Kim
The Examiner relies on Mullins to teach a shrink wrap plastic film
placed around a marine piling, and Kim to teach a removal strip as recited in
independent claims 1, 13, and 16. Final Act. 6-8. The Examiner determines
it would have been obvious to modify the protective covering of Mullins so
every two layers would have a removal strip as taught by Kim as a means for
assisting in the removal of the plastic film. Id. at 7. The Examiner reasons
that removing the plastic film of Mullins one layer at a time would have
been easier than removing all of the shrink wrap layers of plastic film at
once, and also would help to prevent damage to the underlying piling from
using a tool to remove the shrink wrapped plastic film all at once. Ans. 21.
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Appeal2017-010489
Application 14/517 ,490
Appellants argue that Kim is non-analogous art because it is from a
different field of endeavor and is not reasonably pertinent to the problem
addressed by the inventors of protecting marine pilings. Appeal Br. 18;
Reply Br. 6. The Examiner responds that Kim is reasonably pertinent to the
problem confronting Appellants of "the need for simple means to separate a
layer of material from other layers of material." Ans. 12. The Examiner
also finds that Appellants cite prior art pertaining to automobiles and
containers as being relevant to patentability of their invention. Id. at 12-13.
The Examiner appears to concede that Kim is not from the same field
of endeavor as the claimed marine protective covering or device. We agree.
Kim teaches a tear strip for an envelope in which a thread is pulled
along a crease line to open the envelope. Kim, 1 :20-50. Kim positions the
thread along a crease line between adjacent, non-tearable material ridges 12,
12 that are attached by glue 18 to the envelope 10. Id. at 1:20-25, 2:52-59.
The thread "can be made of any type of material which is sufficiently strong
to cut paper products. Suitable thread materials include cotton threads,
synthetic threads and the like." Id. at 3:3-7. The non-tearable ridges 12 on
either side of envelope crease 19, where thread 13 is located before being
pulled to cut paper envelope 10 open, may be plastic ridges or strips. Id. at
3:10-16. There is no disclosure of the use of strips 12 in water, however.
We agree with the Examiner that a skilled artisan would have been
motivated to look for teachings of ways to remove layers of Mullins' plastic
shrink wrap film from marine pilings. Ans. 19; Final Act. 7. However, we
are not persuaded that Kim's teaching, "because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
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Appeal2017-010489
Application 14/517 ,490
The Examiner has not established that Kim's teachings are reasonably
pertinent to an inventor facing the problem of removing a layer of a multi-
layer marine covering one layer at time. Kim relates to opening mechanisms
for paper envelopes. Kim also does not pertain to removal of layers. Kim
glues a device to an envelope with plastic ridges between which a thread can
move to cut through the paper envelope. We are not persuaded that Kim's
teaching of cutting through a single layer on a paper envelope is reasonably
pertinent to cutting through plastic films in a marine environment.
Appellant's definition of "removal strip," discloses exemplary strips
in U.S. patents. Spec. ,r 32. However, US 7,914,638 B2 to Van Den Berghe
disclose filaments 36 and tapes 30 to cut vinyl films that are wrapped around
a vehicle with printed film 15. Van Den Berghe, 1:18-63, 6:3---60, Figs. 1--4.
This disclosure is not persuasive evidence that an inventor or skilled artisan
would consider tear strips for paper envelopes as reasonably pertinent to the
problem in the present application of removing layers of a plastic film from
marine pilings. Thus, we do not sustain the rejection of independent claims
1, 13, and 16 or their dependent claims 5, 7-9, 11, and 14.
Claims 2, 3, 12, 15, and 17
Rejected Over Mullins, Kim, and Fawley
The Examiner's reliance on Fawley to teach the use of a release layer
and release liner as recited in claims 2, 3, 12, 15, and 17 does not overcome
the deficiencies of Mullins and Kim discussed above as to claims 1, 13, and
16 from which these claims depend respectively. See Final Act. 11. Thus,
we do not sustain the rejection of claims 2, 3, 12, 15, and 17.
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Appeal2017-010489
Application 14/517 ,490
Claims 6, 9, and 10
Rejected Over Igarashi Alone or With Saylor or Bradshaw
The Examiner's reliance on Saylor and Bradshaw to teach features of
claims 6 and 10, and Igarashi to render obvious a fifth layer of plastic film in
claim 9 (Final Act. 9--10), does not overcome the deficiencies of Igarashi as
to claim 1 from which these claims depend. Thus, we do not sustain the
rejections of claims 6, 9, and 10.
DECISION
We reverse the rejections of claims 1-1 7.
REVERSED
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