Ex Parte Johnson et al

Patent Trial and Appeal Board

Aug 10, 2016

13658028 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/658,028 10/23/2012
26359 7590 08/12/2016
Maynard Cooper & Gale, PC
1901 Sixth Avenue North
2400 Regions/Harbert Plaza
BIRMINGHAM, AL 35203-2618
FIRST NAMED INVENTOR
Kurt Johnson
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.
10750-0003 8630
EXAMINER
SHAKER!, HAD!
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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):
ipdocket@maynardcooper.com
tebbert@maynardcooper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT JOHNSON, ROBERT HUNTER, and
DAVID DUPLISSEY
Appeal2014-007903
Application 13/658,028
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kurt Johnson et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1-5 and 7-20. Claim 6 is
cancelled. Br. C-2 (Claims App.). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as National Boiler Service,
Inc. Br. 2.
Appeal2014-007903
Application 13/658,028
THE CLAIMED SUBJECT MATTER
Claims 1, 9, and 15 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A method of installing a boiler tube in a boiler header
compnsmg,
providing a clamp having a first portion, a second portion
pivotably coupled to the first portion, and a lip extending
outwardly from the first portion, the first portion and the second
portion each including a substantially U-shaped surface,
pivoting the first portion and the second portion into a
closed position about a predetermined location about a boiler
tube,
inserting the boiler tube into an opening through the boiler
header by lowering the boiler tube, and
supporting the boiler clamp and boiler tube on the boiler
header, and
adjusting a distance the boiler tube is inserted into the
boiler header by raising or lowering the lip.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hammar
Smith
Johnson
us 1,273,484
us 1,596,464
US 8,387,252 Bl
REJECTIONS
July23, 1918
Aug. 17, 1926
Mar. 5, 2013
I. Claims 1, 3, and 7-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Smith. Final Act. 2-3.
II. Claims 1, 3, and 7-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith. Id.
III. Claims 2, 4, 5, and 12-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith and Hammar. Id. at 3--4.
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Application 13/658,028
IV. Claims 1-5 and 7-20 stand rejected on the ground of nonstatutory
double patenting over claims 1 and 2 of Johnson. Id. at 5---6.
OPINION
Rejection I
The Examiner finds that Smith discloses all of the limitations of
independent claims 1 and 9, including, inter alia, "inserting the boiler tube
into an opening Fig. 1 through the boiler header 31 by lowering the boiler
clamp apparatus i.e., by setting the jack on 31 and 'lowering' or inserting
the tube and the clamp 18 per page 2 lines 63--68." Final Act. 2. The
Examiner's position appears to be premised on finding that the claim's
reference to "lowering" is not limited to vertical movement of the tube
because "'lowering' broadly defined can also be interpreted as 'the act of
causing to become less,' which applies to a horizontally arranged boiler."
Id. at 8; see also Ans. 7 (citing OneLook Online Dictionary and Collins
English Dictionary) (explaining that other definitions of "lower," including
"to reduce or be reduced" or "to diminish or become less," would apply to a
horizontally arranged boiler).
Appellants argue that "Smith fails to teach ... the step of inserting the
boiler tube into an opening through the boiler by lowering the boiler tube or
the boiler clamp apparatus." Br. 5. When read in light of the Specification,
we determine that it is unreasonable to interpret the term "lowering" to mean
"the act of causing to become less," "to reduce or be reduced," or "to
diminish or become less," as the Examiner proposes. This is because in the
context of the Specification, the term "lowering" relates to the relative
position of the boiler tube and/or boiler clamp apparatus (see e.g., Spec.
9:16-19), rather than to a degree, quality, or amount, which would invoke
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Application 13/658,028
the Examiner's alternative interpretations. The Examiner's finding that
Smith discloses the claimed step of "inserting the boiler tube into an opening
through the boiler header by lowering the boiler tube," as recited in claim 1
or "inserting the boiler tube into an opening through the boiler header by
lowering the boiler clamp apparatus," as recited in claim 9 is not adequately
supported by the reference when the term "lowering" is given its broadest
reasonable interpretation in light of the Specification, which relates "[t]o
mov[ing] (something) downwards or into a lower position." See Oxford
English Dictionary, available at www.oed.com (last visited July 26, 2016).
For the foregoing reasons, we are persuaded by Appellants' arguments
that the Examiner erred in finding that Smith discloses all of the limitations
of independent claims 1 and 9, and we do not sustain the rejection of claims
1 and 9, nor claims 3, 7, 8, 10, and 11, which depend therefrom, under
35 U.S.C. § 102(b) as anticipated by Smith
Rejection II
In the event that Smith is considered not to disclose vertically
lowering a boiler tube or boiler tube clamp apparatus, the Examiner
alternatively rejects claim 1, 3, and 7-11 under 35 U.S.C. § 103(a) as
unpatentable over Smith. Final Act. 2-3. More particularly, the Examiner
"takes Official Notice that vertically arranged tubes in ... vertically
extending boilers are ... old and well known[,] e.g.[,] as admitted by
[Appellants] on page 1 [of the Specification]." Id. at 3. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
"to place the device and clamp of Smith on a vertically extending boiler, as
is known in the art, such that the tube is vertically lowered into the header."
Id. The Examiner elaborates that "setting the orientation of the device
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Appeal2014-007903
Application 13/658,028
depending on the workpiece parameters are considered well within the
knowledge of one of ordinary skill in the art" (id. at 8) and that "the device
of Smith is readily and without any modification ... capable of being
applied to a boiler having vertically arranged tubes, e.g., a conventional
boiler" (Ans. 7).
Appellants argue that "Smith supports the clamp on a rack that is
supported on a channel shaped standard that is rested on a boiler head"
rather than "support[ing] the clamp on the topside of the boiler header by
resting either the lower edge of the clamp or a jack-screw inserted through a
lip extending radially outward from the clamp on the topside of the boiler
head." Br. 6.2 This argument is unpersuasive because the claims merely
require "supporting the boiler clamp and boiler tube on the boiler header"
(claim 1) or "supporting the boiler clamp apparatus and boiler tube on the
boiler header" (claim 9), not the specific arrangement Appellants assert is
lacking in Smith. Unclaimed features cannot impart patentability to claims.
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Arguments must
be commensurate in scope with the actual claim language. In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
Appellants also argue that Smith's extracting jack "is used only to lift
a boiler tube" that "results in extraction of the boiler tube from the boiler."
Br. 6. Appellants further argue that "no mention is made of lowering a
boiler tube, for example, by gravity, as is described in the current
2 To the extent Appellants may be arguing that a jackscrew is not taught by
Smith, this argument is not persuasive in that neither claim 1 nor claim 9
recites a jackscrew. Moreover, the Examiner relies on Hammar, not Smith,
for this teaching in connection with those claims that recite a jackscrew. See
Final Act. 3.
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Application 13/658,028
application." Id. The Examiner responds that "Smith is also concerned with
installing a boiler tube." Ans. 6 (citing Smith, 1: 1-9, 2:63---69). We agree
with the Examiner that Smith does teach its "device to be used to force or
install a tube by placing the base of the jack on a boiler's head." Id. As to
Appellants' assertion that Smith fails to teach lowering a boiler tube by
gravity, we are not persuaded of error by the Examiner in that the argument
fails to address the rejection as articulated by the Examiner. The Examiner's
rejection is not based on Smith teaching lowering a boiler tube by gravity,
but rather, on the obviousness of placing Smith's device on a vertically
extending boiler such that the tube is lowered into the header. See Final Act.
3.
Appellants further argue that there is no teaching or suggestion in
Smith that its extracting jack could "be used to lower a boiler tube through
an opening in a boiler header ... or [could be] modified" to do so. Br. 8; see
also id. at 6-8 (discussing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014)).
Appellants' position appears to be that it would not be reasonable to modify
Smith to lower a boiler tube through an opening in a boiler header because
Smith is primarily concerned with lifting a boiler tube. See id. at 6 (noting
that "the Federal Circuit overturned an obviousness rejection from the Patent
Trial and Appeal Board in which the Board deemed it reasonable that a user
could use a prior art device in the same manner as described in the
application, even though the prior art device was described to be used in an
opposite mechanical motion"). Appellants also state that "[p ]hysical
capability alone does not render obvious that which is contra[in]dic[a]ted."
Id. at 7.
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We are not persuaded by Appellants' additional arguments. As an
initial matter, we agree with the Examiner both that Smith teaches
installation of a boiler tube and that "the device of Smith is readily and
without any modification ... capable of being applied to a boiler having
vertically arranged tubes." Ans. 6 (citing Smith, 1: 1-9), 7. Accordingly, the
Examiner need not modify the device of Smith to achieve installation of a
boiler tube in a vertically extending boiler. More significantly, we are not
persuaded that the Examiner's reason to insert a boiler tube into an opening
through the boiler header by lowering the boiler tube is based on physical
capability alone. Instead, the Examiner's reasoning is that conventional,
vertically extending boilers would benefit from Smith's device and clamp.
See, e.g., KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill"). In particular, the Examiner reasons that one of
ordinary skill in the art would have been led "to place the device and ...
clamp of Smith on a vertically extending boiler (e.g., a conventional boiler)
known in the art, such that the tube is (vertically) lowered into the header."
Ans. 7.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that Smith renders obvious the subject matter of
independent claims 1 and 9, and we sustain the rejection of independent
claims 1 and 9. We also sustain the rejection of dependent claims 3, 7, 8, 10,
and 11 for which Appellants rely on the same arguments and reasoning that
we found unpersuasive in connection with claims 1 and 9. See Br. 8.
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Rejection III
Because Appellants rely on the same arguments and reasoning we
found unpersuasive in connection with independent claims 1 and 9, we also
sustain the rejection of claims 2, 4, 5, and 12-20 under 35 U.S.C. § 103(a) as
unpatentable over Smith and Hammar. See Br. 9-10 (outlining the alleged
deficiency of Smith and asserting that Hammar fails to remedy such
deficiency).
Rejection IV
Appellants do not present any substantive arguments contesting the
Examiner's rejection of claims 1-5 and 7-20 on the ground of nonstatutory
double patenting. Rather, Appellants merely submit that they will file a
terminal disclaimer "if the double patenting rejection is maintained after
disposal of the§§ 102(b) and 103(a) rejections." Br. 11. Consequently,
Appellants have waived any argument of error, and we summarily sustain
the rejection of claims 1-5 and 7-20 on the ground of nonstatutory double
patenting. See, e.g., In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the applicant failed to contest the rejection
on appeal).
DECISION
The Examiner's decision to reject claims 1, 3, and 7-11 under
35 U.S.C. § 102(b) is reversed.
The Examiner's decision to reject claims 1-5 and 7-20 under
35 U.S.C. § 103(a) is affirmed.
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Appeal2014-007903
Application 13/658,028
The Examiner's decision to reject claims 1-5 and 7-20 on the ground
of nonstatutory double patenting as being unpatentable over claims 1 and 2
of U.S. Patent No. 8,387,252 is summarily affirmed.
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
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