Ex Parte Joh et al

Patent Trial and Appeal Board

Jul 21, 2017

13143125 (P.T.A.B. Jul. 21, 2017)

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.
13/143,125 07/01/2011 Shigeyuki Joh 382662US41PCT 2273
22850 7590 07/25/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DUNWOODY, AARON M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEYUKI JOH and YUSUKE SAITO
Appeal 2015-003408
Application 13/143,125
Technology Center 3600
Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shigeyuki Joh and Yusuke Saito (“Appellants”) seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Non-Final
Office Action dated June 16, 2014 (“Non-Final Act.”), rejecting claims 1—7.
The record includes a transcript of the oral hearing held on June 20, 2017
(“Tr.”). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part, and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal 2015-003408
Application 13/143,125
BACKGROUND
The disclosed subject matter “relates to a pipe joint equipped with
tapered screw threads.” Spec. 1,11. 7—8. Claims 1 and 3 are independent.
Claim 1 is reproduced below, with bracketed letters added to identify each
clause:
1. A pipe joint comprising:
[a] a cylindrically shaped main body;
[b] a tapered male screw thread configured to
be screw-inserted into a tapered female screw
thread formed in an object body, to form an
extension of the cylindrically shaped main body and
to be provided toward one end of the main body,
wherein the tapered male screw thread has a length
such that fluid tight sealing between the pipe joint
and the object body is provided when an entire
length of the tapered male screw thread is screw-
inserted into the tapered female screw thread of the
object body and the fluid tight sealing is not
provided when an entire length of the tapered male
screw thread is not screw-inserted into the tapered
female screw thread of the object body, and wherein
the outer circumference of the tapered male screw
thread is tapered to have a diameter which becomes
progressively smaller in a direction toward the one
end of the main body;
[c] a fastening member for screw-rotating the
tapered male screw thread;
[d] a joint connector provided at another end
of the main body and which is equipped with an
inner circumferential surface, a first seal member
being gripped between the inner circumferential
surface and a one-touch coupling; and
[e] a seat disposed at a side of the fastening
member closer to the one end, and on which a
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second seal member is seated for carrying out the
fluid tight sealing,
[f] wherein the fastening member is
positioned relative to the tapered male screw thread
such that the fastening member is pressed in contact
with said object body and presses the second seal
member against the object body when the entire
length of the tapered male screw thread is screw-
inserted into the tapered female screw thread of the
object body, and
[g] the fluid tight sealing is provided when
the entire length of the tapered male screw thread is
screw-inserted into the tapered female screw thread
of the object body with the second seal member
pressed between the fastening member and the
object body.
REJECTIONS
1. Claims 6 and 7 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Funk (US 4,448,447, issued May 15, 1984), Kimura (US
5,433,489, issued July 18, 1995), and Kimuta (US 5,165,731, issued Nov.
24, 1992).
3. Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bottura (US 7,588,253 B2, issued Sept. 15, 2009),
Kimura, and Kimuta.1
1 In the Office Action, the Examiner stated: “Claims 1—5 rejected
under 35 U.S.C. 102(e) as being anticipated by US patent 7588253, Bottura
in view of Kimura et and Kimuta.” Non-Final Act. 9. In the Answer, the
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DISCUSSION
Rejection 1 — The rejection of claims 6 and 7
under 35 U.S.C. § 112, first paragraph
The Examiner rejected claims 6 and 7 as failing to comply with the
written description requirement. Non-Final Act. 2-4. The Examiner
highlighted certain discussion in paragraphs 28 and 30 of the Specification,
and stated “[t]he tapered threads in conjunction with the second seal member
provide a fluid tight seal between the tapered male screw thread and the
tapered female screw; not just the tapered threads.” Id. at 3-A.
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc).
We turn now to the passages identified by Appellants as allegedly
providing support for “fluid tight sealing at the screw threads” as recited in
claims 6 and 7. We first address page 5, lines 18—21 of the Specification,
which provides:
A general object of the present invention is to provide a
pipe joint, which can be made smaller in scale, and which does
not require use of a sealing tape or a sealing material.
Regarding this passage, Appellants argue that “the object of the
present invention is to provide a pipe joint ‘which does not require use of a
sealing tape or a sealing material’” (citing Spec. 5,11. 18—21), and contend
Examiner clarifies that 35 U.S.C. § 103 provides the basis for Rejection 3.
See Ans. 3; see also Appeal Br. 7 (stating that Rejection 3 “apparently
should have been one under 35 U.S.C. § 103”).
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that “[cjlearly, this indicates that Appellants were in possession of a scope of
invention whereby a fluid tight seal does not require ‘a sealing material’
such as the second seal member.” Appeal Br. 7; see also Tr. 5:14 — 7:8
(discussing this passage with Appellants stating that “the most reasonable
interpretation of it” is that “this is saying you don’t need a separate sealing
member”). Thus, Appellants contend that the passage’s discussion of
“sealing tape or a sealing material” refers to the “second seal member” (as
recited in claims 1 and 3), such that “fluid tight sealing at the screw threads”
must be present as it would be the only fluid tight seal in the pipe joint.
We disagree with Appellants’ interpretation of this first passage.
Under that view, the scope of claims 6 and 7 would include devices that
either (1) lack a “second seal member” or (2) include a “second seal
member” that does not provide “fluid tight sealing.” This understanding,
however, conflicts with a proper understanding of independent claims 1 and
3, from which claims 6 and 7 depend, respectively. See Ans. 17 (stating that
Appellants are “falsely possessing a fluid tight seal that does not require the
second seal member”).
Claims 1 and 3 each require a “second seal member ... for carrying
out the fluid tight sealing.” See Appeal Br. 14 (claim 1, clause e), 15 (claim
3, fifth clause). To the extent the scope of claims 6 and 7 can be discerned
(see infra, New Ground of Rejection of claims 6 and 7 under 35 U.S.C.
§112, second paragraph), we construe claims 6 and 7 as reciting the added
requirement that the recited structures be positioned relative to each other
such that, when certain structures are configured as recited, “fluid tight
sealing” is also provided “at the screw threads.” The “fluid tight sealing at
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the screw threads” in claims 6 and 7 is in addition to the “fluid tight sealing”
“carried] out” by the “second seal member” recited in claims 1 and 3.
Instead, as noted by the Examiner, this passage references a departure
from the prior art, which provided “a sealing tape ... or alternatively, a
sealing material” on the screw threads “for assuring airtightness and liquid­
tightness more securely.” Spec. 1,1. 30 — 2,1. 4, discussed at Ans. 16—17.
Second, we address page 8, line 28 to page 9, line 5 of the
Specification, which provides:
Owing thereto, the fact that the pipe joint 30 has been
sufficiently screw-inserted into the tapered female screw thread
34 of the end cap 32 can be confirmed visually. Consequently,
if pressurized air or the like, for example, is supplied from the
side of the joint member 46, the pressurized air can penetrate into
the interior of the non-illustrated cylinder from the end cap 32
without external leakage.
Appellants argue that this passage “indicates that screw-inserting the
tapered male screw thread into the tapered female screw thread is sufficient
for assuring fluid tight sealing and is consistent with the aforementioned
object of a pipe joint ‘which does not require use of a sealing tape or a
sealing material.’” Appeal Br. 8 (quoting Spec. 5,11. 19—21).
Under Appellants’ view of this passage, the word “sufficiently” in the
phrase “the fact that the pipe joint 30 has been sufficiently screw-inserted
into the tapered female screw thread 34 of the end cap 32,” refers to
sufficient insertion to provide “fluid tight sealing at the screw threads,” as
recited in claims 6 and 7. See Appeal Br. 8 (paragraph beginning “That is”).
We disagree with that interpretation.
Instead, we interpret that phrase as referring to sufficient insertion of
tapered male screw thread 36 (of pipe joint 30) into tapered female screw
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thread 34 such that second seal member 52 is pressed into contact with end
cap 32 such that fluid tight sealing is provided by the second seal member—
not at the screw threads. This is supported by the phrase “Owing thereto” at
the beginning of the passage at issue referring back to the preceding
sentence, which discusses fluid tight sealing by the “second seal member”:
During this time, the entire length of the main threaded portion
of the tapered male screw thread 36 is screw-inserted into the
tapered female screw thread 34, such that when fastening is
completed, the lower end of the fastening member 50 presses the
second seal member 52, and the peripheral end portion thereof is
pressed into contact against the tapered surface 56 of the end cap
32.
Spec. 8,11. 20-27. This interpretation of the passage at issue also aligns with
the requirements set forth in the last two clauses of claims 1 and 3.2
Third, we address the Specification at page 9, lines 6—10, which
immediately follows the passage just discussed, and provides:
At this time, the tapered male screw thread 36 is screw-
inserted sufficiently into the tapered female screw thread 34, and
further, due to the sealing effect of the second seal member 52,
pressurized air does not escape to the exterior from the second
seal member 52.
Appellants argue that, in this passage, “the sealing effect of the second
seal member is described as a ‘further’ effect” and that “[t]his indicates that
the sealing effect of the second seal member is further or supplemental to —
not necessary for — the previously described fluid tight sealing owing to the
2 These clauses use the phrase “object body” rather than “end cap.”
See Spec. 6,11. 29—30 (“The pipe joint 30 is screw-inserted into an object
body, for example, the end cap 32 of a cylinder.”). We note that, in the
Summary of the Claimed Subject Matter in the Appeal Brief, Appellants rely
on page 8, lines 20-27 of the Specification regarding the last two clauses of
claims 1 and 3. See Appeal Br. 4—5, 6.
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fact that the pipe joint 30 has been sufficiently screw-inserted into the
tapered female screw thread 34 of the end cap 32.” Appeal Br. 8.
Contrary to Appellants’ position, the language preceding “further” in
this passage does not refer to sufficient insertion to provide “fluid tight
sealing at the screw threads,” as recited in claims 6 and 7. Instead, for the
same reasons discussed above regarding the second passage, we view this
language as referring to sufficient insertion of tapered male screw thread 36
into tapered female screw thread 34 such that second seal member 52 is
pressed into contact with end cap 32 so that fluid tight sealing is provided by
the second seal member—not at the screw threads. Thus, based on the
passages identified by Appellants, we are not apprised of error in the
Examiner’s finding that the Specification fails to provide written description
support for the additional limitations of claims 6 and 7.
At oral argument, Appellants took the position that “fluid tight sealing
at the screw threads,” as recited in claims 6 and 7, is an inherent feature of
tapered threads (such as those recited in claims 1 and 3) and that the
Specification does not contradict that understanding. See, e.g., Tr. 9:10-13
(Appellants stating that claim 6 “defines what is already inherently known;
that the fluid-tight sealing is at the screw threads”), 5:5—8 (“[0]ur position
[is] that it was known in the prior art that with tapered screw threads, fluid
sealing, fluid tightness is achieved by engagement of the screw threads, and
there is nothing in our specification that’s inconsistent with that.”), 3:13—17
(“So it was known in the prior art that tapered screw threads provide fluid
sealing by virtue of the engagement of the screw threads themselves. This
was not anything new that we had come up with. And there is nothing in our
specification that would suggest an understanding that’s different from
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what’s in the prior art.”), 8:11—16 (“And we’re saying that it is known in the
art that the engagement of the threads provides fluid-tight sealing, and that
this is a further probation. Therefore, our statement in claims 6 and 7 that
screwing it into provide fluid-tight sealing at the screw threads is not
inconsistent with what was intended in the originally found disclosure.”).
For procedural reasons, we will not address this argument. Appellants
did not present this argument in the briefing and have not shown good cause
for failing to do so. See 37 C.F.R. § 41.47(e) (2014).
For these reasons, we sustain the rejection of claims 6 and 7 under
35 U.S.C. § 112, first paragraph.
New Ground of Rejection
We enter a new ground of rejection of claims 6 and 7 under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out and distinctly
define the metes and bounds of the subject matter to be protected (i.e.,
indefmiteness). A claim fails to comply with 35 U.S.C. § 112, second
paragraph, “when it contains words or phrases whose meaning is unclear.”
In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (approving, for
pre-issuance claims, the standard from MPEP § 2173.05(e)). Claims 6 and 7
each require that the recited structures be positioned relative to each other
such that, when certain structures are configured as recited, "the fluid tight
sealing” is provided “at the screw threads.” Appeal Br. 16, 17 (Claims
App.) (emphasis added).
The phrases “the fluid tight sealing” in claims 6 and 7 allegedly find
antecedent basis in “fluid tight sealing between the pipe joint and the object
body” in the second clauses of claims 1 and 3, respectively. See id. at 14,
15. Because (1) the “pipe joint” includes a “tapered male screw thread,” and
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(2) the “object body” includes a “tapered female screw thread,”3 “fluid tight
sealing between the pipe joint and the object body” as recited in the second
clauses of claims 1 and 3 could, theoretically, include “the fluid tight sealing
at the screw threads” recited in claims 6 and 7.
In the context of claims 1 and 3, however, other limitations find their
antecedent basis in the phrase “fluid tight sealing between the pipe joint and
the object body” and define this phrase as referring to “fluid tight sealing”
by the “second seal member” rather than at the screw threads. See id. at 14—
15 (claim 1 reciting (1) “a seat disposed at a side of the fastening member
closer to the one end, and on which a second seal member is seated for
carrying out the fluid tight sealing” (clause e (emphasis added)) and (2) “the
fluid tight sealing is provided when the entire length of the tapered male
screw thread is screw-inserted into the tapered female screw thread of the
object body with the second seal member pressed between the fastening
member and the object body” (clause g (emphasis added))); id. at 15—16
(claim 3 reciting (1) “a second seal member disposed on a surface of the
fastening member facing toward the object body, for carrying out the fluid
tight sealing” (fifth clause (emphasis added)) and (2) “the fluid tight sealing
is provided when the entire length of the tapered male screw thread is screw-
inserted into the tapered female screw thread of the object body with the
second seal member pressed between the fastening member and the object
body” (final clause (emphasis added))).
3 See Appeal Br. 14, 15 (claims 1 and 3 each reciting “[a] pipe joint
comprising ... a tapered male screw thread” and reciting “the tapered
female screw thread of the object body”).
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Because the phrases “the fluid tight sealing at the screw threads” in
claims 6 and 7 find their antecedent basis in the phrases “fluid tight sealing
between the pipe joint and the object body” in claims 1 and 3, respectively
and because this conflicts with a proper understanding of these phrases in
the context of claims 1 and 3, we determine that “the fluid tight sealing at
the screw threads” renders the scope of claims 6 and 7 unclear. Thus, we
conclude that claims 6 and 7 fail to particularly point out and distinctly
define the metes and bounds of the subject matter to be protected.
Rejection 2 — The rejection of claims 1—5 as
unpatentable over Funk, Kimura, and Kimuta
A. Claims 1 and 2
For independent claim 1, the Examiner found that Funk discloses
various limitations but that Funk “do[es] not disclose a tapered male screw
thread with the outer circumference of the tapered male screw thread
tapering to have a diameter which becomes progressively smaller in a
direction toward the one end of the main body.” Non-Final Act. 4—6; see
also Appeal Br. 14 (Claims App.) (clause b, reciting “wherein the outer
circumference of the tapered male screw thread is tapered to have a diameter
which becomes progressively smaller in a direction toward the one end of
the main body”). The Examiner found, however, that “[bjoth Kimuta and
Kimura et al teach tapered male and female threads are commonly known in
the art.” Id. at 7 (discussing Kimuta, col. 1,11. 15—58 and Kimura, col. 1,11.
18—34). According to the Examiner,
it would have been known to one having ordinary skill in the art
at the time the invention was made to provide a tapered male
screw thread with the outer circumference of the tapered male
screw thread tapering to have a diameter which becomes
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progressively smaller in a direction toward the one end of the
main body, as it is commonly known in the art.
Further, it would have been known to one having ordinary
skill in the art at the time the invention was made to provide a
tapered male screw thread with the outer circumference of the
tapered male screw thread tapering to have a diameter which
becomes progressively smaller in a direction toward the one end
of the main body, since a change in the size of a prior art device
is a design consideration within the skill of the art. In re Rose,
220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Id. (emphasis in italics added).
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). We conclude that neither of the two alternative reasoning statements
set forth in the Office Action satisfies this standard.
As to the first, that tapered male screw threads as recited were
“commonly known in the art” (Non-Final Act. 7)—a finding not disputed by
Appellants (Reply Br. 2)—does not provide a reason to modify Funk to
include such a feature. See KSR, 550 U.S. at 418 (stating that “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art” and that “it can be important to identity a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does”).
As to the second, the Examiner’s reliance on In re Rose is misplaced.
In the present case, the Examiner proposes to change the dimensions of one
component of the pipe joint in Funk—i.e., the outer circumference of the
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male screw thread—but not the dimensions of other components. In
contrast, in Rose, the court did not address a modification in which the size
of a particular component of the article is modified without a respective
change in size of the remaining components. There, the appellant argued
that the claimed “lumber package” was large and required a lift truck for
handling, whereas the prior art packages—a package of relatively small
pieces of lumber and a package of window screen frames—could be lifted
by hand. Rose, 220 F.2d at 463. The court held that the limitation regarding
the size and weight of the package “is [not] patentably significant since it at
most relates to the size of the article under consideration which is not
ordinarily a matter of invention.” Id. The Examiner’s proposed
modification in the present appeal is more than simply a change in size of
the overall article under consideration (i.e., the pipe joint).
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claim 2, which depends from claim 1, as unpatentable over
Funk, Kimura, and Kimuta.
B. Claims 3—5
For independent claim 3 (and claims 4 and 5, which depend from
claim 3), the Examiner relies on the same findings and conclusions
discussed above with regard to claim 1. Compare Non-Final Act. 8—9
(citing certain figures of Funk and then merely reciting claim 3), with id. at
4—7. Thus, for the same reasons discussed above, we also do not sustain the
rejection of claims 3—5 as unpatentable over Funk, Kimura, and Kimuta.
New Ground of Rejection
We enter a new ground of rejection of claims 1—5 under 35 U.S.C.
§112, second paragraph, for failure to set forth the subject matter regarded
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as the invention. Section 112, second paragraph sets forth two separate
requirements: (1) the claims must set forth the subject matter that the
inventor or a joint inventor regards as the invention; and (2) the claims must
particularly point out and distinctly define the metes and bounds of the
subject matter to be protected. Solomon v. Kimberly-Clark Corp., 216 F.3d
1372, 1377 (Fed. Cir. 2000) (“As an initial matter, we note that for a claim
to comply with section 112, paragraph 2, it must satisfy two requirements:
first, it must set forth what ‘the applicant regards as his invention,’ and
second, it must do so with sufficient particularity and distinctness, i.e., the
claim must be sufficiently ‘definite.’”); In re Conley, 490 F.2d 972, 976
(CCPA 1974) (“Occasionally the first sentence of the second paragraph of
§112 has been relied upon as a basis for rejection of a claim, not because of
‘indefmiteness’ of the claim language but because the language used did not
particularly point out and distinctly claim the subject matter which the
applicant regards as his invention.”); see also MPEP § 2171 (9th ed., Rev.
07.2015, Nov. 2015) (setting forth these two requirements).
An analysis under this requirement compares the subjective position
of the applicant(s) as to claim scope with the claim scope as construed. See
Conley, 490 F.2d at 976 (“This portion of the statutory language has been
relied upon in cases where some material submitted by applicant, other than
his specification, shows that a claim does not correspond in scope with what
he regards as his invention.”); see also In re Cormany, 476 F.2d 998, 1000
(CCPA 1973) (discussing In re Prater, 415 F.2d 1393 (CCPA 1969), and
stating “Having construed claim 9 in the light of the specification and found
it to be of such scope as to include what appellants said they did not intend
to include, we therefore held the claim did not comply with the second
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paragraph of § 112. As we shall show, we have a similar situation here.”);
MPEP § 2171 (“The first requirement is a subjective one because it is
dependent on what the inventor or a joint inventor for a patent regards as his
or her invention. . . . The inquiry during examination is patentability of the
invention as the inventor or a joint inventor regards it.”). A difference
between the subjective position of the applicant(s) as to claim scope and the
claim scope as construed may form a basis for a rejection under this
requirement. See, e.g., Cormany, 476 F.2d at 1001—02 (affirming a rejection
under this requirement after (1) construing a limitation to include a
minimum concentration of 0.5% of a certain component to reach a claimed
state and (2) comparing this to appellants’ position that 0.9% is the
minimum concentration to reach the claimed state).
Evidence of the subjective position of the applicant(s) can reside in,
for example, briefs filed by applicant(s). See In re Collier, 397 F.2d 1003,
1005 (CCPA) (“We agree with the board, however, that the claim does not
positively recite structural relationships of the two elements, identified as (1)
and (2) above, in its recitation of what may or may not occur. In this sense it
fails to comply with section 112, second paragraph, in failing distinctly to
claim what appellant in his brief insists is his actual invention.” (emphasis
added)); Prater, 415 F.2d at 1404—05 (affirming a rejection under this
requirement and discussing what appellants regarded as the invention based
on briefs filed with the court); MPEP § 2172(11) (“Evidence that shows that
a claim does not correspond in scope with that which an inventor regards as
an inventor’s invention may be found, for example, in contentions or
admissions contained in briefs or remarks filed by applicant, or in affidavits
filed under 37 CFR 1.132.” (citations omitted)); see also Solomon, 216 F.3d
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at 1377 (“During the prosecution of a patent application, a claim’s
compliance with both portions of section 112, paragraph 2, may be analyzed
by consideration of evidence beyond the patent specification, including an
inventor’s statements to the Patent and Trademark Office.”).
We first construe certain aspects of claims 1 and 3. As discussed
above, we construe “fluid tight sealing between the pipe joint and the object
body” as recited in claim 1 and 3 as referring to “fluid tight sealing” by the
“second seal member” rather than at the screw threads. In other words,
under the broadest reasonable interpretation, neither claim 1 nor claim 3
requires “fluid tight sealing” between the “tapered male screw thread” and
the “tapered female screw thread.”
In contrast, under Appellants’ view—as demonstrated by the briefing
on appeal—claims 1 and 3 do require fluid tight sealing at the screw threads
with the recited “fluid tight sealing” from the “second seal member” {see,
e.g., claim 1, clause e) as a backup. See, e.g., Appeal Br. 10 (arguing that in
“a joint with tapered threads[,]. . . [ujnlike the case of cylindrical male joint
members, fluid tight sealing does not require a seal member in the flange-
like fastening member (although a supplemental seal member may be
provided as an optional or back-up feature) and fluid tight sealing by the
engaging threads is not related to the position of the fastening member
relative to the female joint member.” (emphasis added)); id. (arguing that, in
claims 1 and 3, “the tapered male joint member must be screwed into the
tapered female joint member sufficiently for a fluid tight seal to be achieved
at the screw threads” (emphasis added)); Reply Br. 2—3 (“The present
invention additionally provides that, in the case of such tapered threads, a
fastening member for screw-rotating the tapered male screw thread is
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positioned to be pressed in contact with the object body when the entire
length of the tapered male screw thread is screw-inserted into the tapered
female screw thread sufficiently to provide such thread contact pressure for
fluid tight sealing. Therefore, sealing by the tapered threads can be easily
confirmed by observing the tapered male screw thread being positioned
contact with the object body. This is not taught by the cited prior at as
discussed in the Appeal Brief.” (emphasis in italics added)); see also Appeal
Br. 9 (“It is apparent from Fig. 1 of Funk . . . , however, that the screw
threads therein are cylindrical and not tapered. Therefore, the contact
pressure of the threads is not increased as the male joint member is screwed
into the female joint member. As a result, and the pressure of the contact of
the meshing threads cannot reliably produce a fluid tight seal. . . .”
(emphasis added)); id. at 11 (arguing that “even the tapered threads of
[Kimura and Kimuta] with not provide a fluid tight seal”).
At oral argument, Appellants maintained this position. See, e.g., Tr.
14:3—10 (arguing that viewing “fluid tight sealing between the pipe joint and
the object body” (in claim 1, clause b) as relating to “the fluid tight sealing”
from the “second seal member” (in claim 1, clause e) rather than fluid tight
sealing at the screw threads “would be inconsistent with the way one skilled
in the art would understand that tapered screw threads provide sealing”),
9:6—13 (arguing that the “fluid tight sealing at the screw threads” recited in
claim 6 is inherently present in claim 1), 15:3—4 (“As is known, and as is
evidenced by the prior art, the screw threads themselves will provide fluid-
tight sealing.”), 6:11—17 (“It’s a backup; it’s a secondary seal member. If
one has a sealing at the screw threads but one wants to assure that any
leakage past the screw threads is prevented from escaping the outside, one
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can add a seal. Simply because a secondary seal member is present does not
mean that a fluid-tight sealing doesn’t also, or is not intended to also occur at
the screw threads, as is well known.”), 9:2—5 (“The seal member is perfectly
capable, in itself, of providing a fluid-tight sealing; it’s a sealing member,
after all. But because we have sealing in addition at the screw threads, it
[i.e., the “seal member”] acts as a backup.”),
For these reasons, we conclude that claims 1 and 3, and claims 2, 4,
and 5 depending therefrom, fail to set forth the subject matter regarded by
Appellants as the invention.4
Rejection 3 — The rejection of claims 1—5 as
unpatentable over Bottura, Kimura, and Kimuta
A. Claims 1 and 2
For claim 1 in Rejection 3, the Examiner (1) relied on Bottura in the
same manner that Funk was relied on for Rejection 2, (2) relied on Kimura
and Kimuta in the same manner those references were relied on for
Rejection 2, and (3) set forth the same two alternatives reasons to modify the
prior art. Compare Non-Final Act. 9-12, with id. at 4—7. Thus, for the same
reasons discussed above, we do not sustain the rejection of claim 1, or the
rejection of claim 2, which depends from claim 1, as unpatentable over
Bottura, Kimura, and Kimuta.
4 “35 U.S.C. 112(b) or the second paragraph of pre-AlA 35 U.S.C.
112 does not prohibit the inventor or a joint inventor from changing what he
or she regards as the invention during the pendency of the application.”
MPEP § 2172(111).
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B. Claims 3—5
For independent claim 3 (and claims 4 and 5, which depend from
claim 3), the Examiner relies on the same findings and conclusions
discussed above with regard to claim 1. Compare Non-Final Act. 13—14
(citing certain figures of Bottura and then merely reciting claim 3), with id.
at 9-12. Thus, for the same reasons discussed above, we also do not sustain
the rejection of claims 3—5 as unpatentable over Bottura, Kimura, and
Kimuta.
DECISION
We affirm the decision to reject claims 6 and 7 under 35 U.S.C. § 112,
first paragraph, and we reverse the decision to reject claims 1—5 under
35 U.S.C. § 103(a).
We enter new grounds of rejection (1) for claims 6 and 7 under
35 U.S.C. § 112, second paragraph, for failure to particularly point out and
distinctly define the metes and bounds of the subject matter to be protected
and (2) for claims 1—5 under 35 U.S.C. § 112, second paragraph, for failure
to set forth the subject matter regarded as the invention.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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