Ex Parte Johnston

Board of Patent Appeals and Interferences

May 25, 2011

11374563 (B.P.A.I. May. 25, 2011)

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.
11/374,563 03/14/2006 Scott Emery Johnston 9668
7590 05/26/2011
Scott E. Johnston
16857 Hummingbird Lane
Cottonwood, CA 96022
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
05/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT EMERY JOHNSTON
____________

Appeal 2009-012974
Application 11/374,563
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Scott Emery Johnston (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-9 and 12-16. Claims 10 and
11 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6.1

THE INVENTION
Appellant’s invention relates to a spirally formed pipe having a
diameter larger than 16 feet. Spec. 4:2-3 and 5:5 and fig. 2.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A horizontally produced spirally formed pipe, comprising an
elongated strip of ductile material formed into joined, adjacent helical
convolutions, that said convolutions form the wall of said pipe, and
that said wall is corrugated or profiled with increased dimensional
proportions as pipe size is increased, and that said pipe has a diameter
above 16 feet.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Reed US 2,751,672 Jun. 26, 1956

1 This application is a continuation-in-part of application 09/312,992
filed May 17, 1999. In Appeal No. 2002-1520 (Decision mailed Oct. 9,
2002) in the parent application 09/312,992, the decision of the Examiner to
reject claims 1-9 was reversed. Subsequently, in Appeal No. 2004-0533
(Decision mailed Apr. 22, 2004) (hereafter “Board Decision”), also in the
parent application 09/312,992, the decision of the Examiner to reject claims
1-9 was affirmed. Finally, in In re Johnston, 435 F.3d 1381 (Fed. Cir.
2006), decided Jan. 30, 2006, the Federal Circuit affirmed the Board’s
decision in Appeal No. 2004-0533.

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McDonald US 3,380,147 Apr. 30, 1968
McFatter US 4,121,747 Oct. 24, 1978
Steuber US 4,142,284 Mar. 6, 1979
Smith US 4,429,654 Feb. 7, 1984
Nethery US 4,729,198 Mar. 8, 1988
Carson US 5,768,928 Jun. 23, 1998

“Handbook of Steel Drainage & Highway Construction Products,”
American iron and Steel Institute, 1983, pp. 6-65 (hereafter “Handbook”).
“PRD CORTEC Housing Manufacturing System,” PRD Company,
1994 (hereafter “PRD”2).

The following rejections are before us for review:
I. The Examiner rejected claims 1, 3, and 12-15 under 35 U.S.C. §
102(b) as anticipated by McDonald, or in the alternative, under 35
U.S.C. § 103(a) as unpatentable over McDonald and Smith.
II. The Examiner rejected claims 2-4 under 35 U.S.C. § 103(a) as
unpatentable over McDonald and Carson.
III. The Examiner rejected claims 1, 3, and 12-15 under 35 U.S.C. §
103(a) as unpatentable over PRD and McFatter.
IV. The Examiner rejected claims 5 and 16 under 35 U.S.C. § 103(a) as
unpatentable over PRD, McFatter, and Handbook.
V. The Examiner rejected claims 2 and 4 under 35 U.S.C. § 103(a) as
unpatentable over PRD, McFatter, and Carson.
VI. The Examiner rejected claims 6 and 8 under 35 U.S.C. § 103(a) as
unpatentable over PRD, Handbook, and McFatter.
VII. The Examiner rejected claims 7 and 9 under 35 U.S.C. § 103(a) as
unpatentable over PRD, McFatter, Handbook, and Carson.

2 Although the Examiner refers to this reference as Cortec™, we prefer
to use PRD, which is not trademarked.
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VIII. The Examiner rejected claims 1-4 under 35 U.S.C. § 103(a) as
unpatentable over Smith, McFatter, and Carson.
IX. The Examiner rejected claim 5-9 under 35 U.S.C. § 103(a) as
unpatentable over Smith, McFatter, Carson, and Handbook.
X. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Reed and Nethery.
XI. The Examiner rejected claims 12 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Steuber and Nethery.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
Rejection I
The anticipation rejection based upon McDonald
Each of independent claims 1 and 12 requires a pipe wall that is
“corrugated or profiled with increased dimensional proportions as pipe size
is increased.” App. Br., Claims Appendix. Appellant argues that McDonald
does not teach this limitation. App. Br. 7.
The Examiner takes the position that: (1) “increasing of dimensional
proportions is inherent where a larger diameter pipe would inherently have
increased dimensional proportions of the strip” (Ans. 4) (emphasis added);
(2) the Board Decision has already rendered that “the change in proportions
as the pipe size increased is readable upon McDonald under [3]5 USC 102”
(Ans. 4); and (3) “the wall size [in McDonald] is made taller which is an
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increased dimensional proportion of the wall as the pipe size is increased”
(Ans. 15, see also Ans. 13).
With respect to the Examiner’s inherency position, we note that when
a reference is silent about an asserted inherent characteristic, it must be clear
that the missing descriptive matter is necessarily present in the thing
described in the reference. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed. Cir. 1991). “The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999). In this case, although we appreciate that the
wall size of McDonald’s pipe may be increased as the pipe diameter is
increased, the Examiner has not provided any evidence to show that the wall
size of McDonald’s pipe necessarily increases as the diameter of the pipe
increases. Hence, we find the Examiner’s position untenable.
Regarding the Examiner’s reliance on the Board Decision, the Board
concluded that because the claim only required that “the wall may be
smooth, corrugated, or profiled with increased dimensional proportions as
pipe size is increased,” the claim was readable on McDonald. Board
Decision, p. 16. In other words, the Board interpreted the words “may be”
as an optional condition. However, each of the instant independent claims 1
and 12 requires that the “wall is corrugated or profiled with increased
dimensional proportions as pipe size is increased.” Emphasis added. Hence,
since the claim language has been amended so as to change an optional
condition to an express requirement, we find that the Board’s Decision is
distinguishable to the instant case. Accordingly, the Examiner’s reliance on
the Board Decision is misplaced.
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Finally, regarding the Examiner’s third position, it appears that the
Examiner is interpreting the limitations of “increased dimensional
proportions” and “pipe size” to mean that as more spirals are formed in
McDonald, the length of the wall itself (increased dimensional proportions)
increases proportionally (increased dimensional proportions) as the length of
the pipe (pipe size) increases. See McDonald, fig. 1. However, claims are to
be given their broadest reasonable interpretation consistent with the
specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). In this case, Appellant’s Specification states that, “[a]s the
pipe diameter is increased the thickness of material and size of corrugation
or profile is also increased.” Spec. 4. Hence, we find that the limitation of
the pipe wall to be “corrugated or profiled with increased dimensional
proportions as pipe size is increased” means that as the pipe diameter
increases the pipe wall thickness also increases. We could not find any
portion in McDonald and the Examiner has not pointed to any portion that
teaches increasing the wall thickness as the diameter of the silo (pipe
diameter) increases. Accordingly, in light of the Specification, we find the
Examiner’s interpretation to be unreasonable.
In conclusion, for the foregoing reasons, the rejection of independent
claims 1 and 12 and their respective dependent claims 3 and 13-15 under 35
U.S.C. § 102(b) as anticipated by McDonald cannot be sustained.

The obviousness rejection over McDonald and Smith
Claims 1 and 12
Appellant argues that: (1) the combined teachings of McDonald and
Smith do not disclose: (a) a horizontally produced pipe, (b) a corrugated
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wall, (c) a profiled wall, and (d) increasing the dimensional proportions of
the corrugations or profiles as pipe size is increased; (2) Smith cannot be
used for anything but a double walled structure, whereas claims 1 and 12
call for a single wall structure; and (3) the Examiner’s conclusion of
obviousness is based upon hindsight. App. Br. 9-10.
With respect to Appellant’s first argument (1a), we agree with the
Examiner that the “orientation of the structure as it’s produced does not
structurally limit the final product.” Ans. 4. The patentability of a product
does not depend on its method of production. If the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior art product was made by a
different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Moreover, once the PTO has made out a prima facie case that the applicant's
claimed product and the product of the prior art reasonably appear to be the
same, the burden shifts to the applicant to prove otherwise. Id. Appellant
has not provided any evidence for establishing that a “horizontally
produced” pipe yields a structurally different pipe from that of McDonald’s
“vertically produced” pipe (silo).
We appreciate Appellant’s position that, “[t]he term ‘horizontally
produced’ within the claim language is similar to terms like ‘cut pile’ or
‘cast iron’ [because] they help to define what the article actually is.” Reply
Br. 6. However, the term “cast iron” describes casting as a process for
producing iron and as such, structurally differentiates iron made by casting
from, for example, iron made by forging. In this case, the term “horizontally
produced” merely describes an orientation of the pipe during its production,
but does not describe a specific process, such as, for example extrusion or
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welding. It is not apparent, and Appellant has not shown, that the
orientation of the product during its production imparts any structural
distinction to the final product. As such, we are not persuaded by
Appellant’s first argument.
Regarding Appellant’s second and third arguments (1b, 1c), we are
not persuaded that use of the conjunction “or” in the limitation “wall is
corrugated or profiled” requires claims 1 and 12 to include both a
“corrugated wall” and a “profiled wall.” See Reply Br. 7. Emphasis added.
We find that the conjunction “or” is “used as a function word to indicate an
alternative.” See MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th ed.
2005). When a claim contains alternatives, the claim is anticipated if any of
the alternatives is known in the prior art. See Brown v. 3M, 265 F.3d 1349,
1351 (Fed. Cir. 2001) (citing Titanium Metals Corp. of America v. Banner,
778 F.2d 775, 782 (Fed. Cir. 1985)). Hence, as long as McDonald discloses
either a “corrugated wall” or a “profiled wall,” McDonald discloses a
“corrugated or profiled” wall, as called for by claims 1 and 12. In this case,
the Examiner found and we agree that offset portion 70 of McDonald
constitutes a “profiled wall.” Ans. 4. See also McDonald, fig. 3. Appellant
has not provided any evidence showing why the Examiner’s reading of
McDonald’s offset portion 70 as a “profiled wall” is unreasonable.
In regard to Appellant’s fourth argument (1d), the Examiner takes the
position that “it would have been obvious to one skilled in the art that the
dimensional proportions of the pipe would increase inherently or obviously
as such is merely a choice of mechanical expedients to vary the dimensional
proportions.” Ans. 4-5. Emphasis added. We agree. An artisan must be
presumed to know something about the art apart from what the references
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disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). We find that a
person of ordinary skill in the art would have readily recognized that when
the pipe diameter increases, in order to maintain the same hoop strength
(which determines the burst strength of the pipe), the pipe wall thickness
needs to increase proportionally. “A person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007). Appellant has not provided any evidence to show
why the Examiner’s proposed modification would not have been obvious to
a person of ordinary skill in the art.
Appellant’s fifth argument (2) does not address the Examiner’s
proposed combination because the Examiner is not proposing to use the
double-walled construction of Smith to modify the structure of McDonald.
Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner used the
teachings of Smith as evidence that a person of ordinary skill in the art
would have a reasonable expectation of success to horizontally produce the
silo of McDonald because Smith discloses horizontally produced building
structures such as a grain elevator, i.e., a silo. See Ans. 5, 18. See also
Smith, col. 5, ll. 23-24.
We are not persuaded by Appellant’s sixth argument because the
Examiner has provided a reason (using a horizontal manner of production
for making large diameter pipes is an alternative manner of forming a helical
pipe) with rational underpinning (cost efficiency, transportation efficiency,
automation; use of a known technique to improve a similar device in the
same way is an acceptable conclusion of obviousness; both McDonald and
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Smith disclose silo structures). See Ans. 5 and 18; In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). Appellant has not persuasively
argued that the Examiner’s conclusion of obviousness lacks rational
underpinning.
Finally, Appellant argues that because the claimed spirally formed
pipe of claims 1 and 12 “is claimed independent of any specific use” and the
pipe of McDonald can only be used as a silo, Appellant’s pipe “has an
inherent limitation of independence.” Reply Br. 8. We find Appellant’s
argument unpersuasive because as the Examiner noted, McDonald discloses
“building structures” and a silo is merely an example. McDonald, col. 1, ll.
9-10. Moreover, we agree with the Examiner the specific language of
claims 1 and 12 does not exclude a silo. Ans. 15. As stated by our
reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998),
“the name of the game is the claim.” It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
In conclusion, for the foregoing reasons, we are not persuaded by
Appellant’s arguments. Therefore, we shall sustain the rejection of claims 1
and 12 under 35 U.S.C. § 103(a) as unpatentable over McDonald and Smith.

Claims 3 and 14
Appellant argues that the combined teachings of McDonald and Smith
do not disclose a single welded seam. App. Br. 10 and 11. However, as the
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Examiner noted, claims 3 and 14 do not require a “single” welded seam, but
merely a “welded seam.” Ans. 16. Although the claims are interpreted in
light of the Specification, limitations from the Specification are not read into
the claims. We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Therefore, we shall
sustain the rejection of claims 3 and 14.

Claims 13 and 15
Claim 13 adds the limitation of a “lockseam,” whereas claim 15 adds
the limitation of a “welded lockseam.” App. Br., Claims Appendix. The
Examiner took the position that because (1) Appellant has not provided a
specific definition for the term “lockseam” and (2) offset portion 70 of
McDonald is bent and welded, offset portion 70 constitutes a “welded
lockseam.” Ans. 16. We disagree. Although claims are to be given their
broadest reasonable interpretation consistent with the specification, we note
that a general dictionary “cannot overcome art-specific evidence of the
meaning of a claim term.” Phillips v. AWH Corp., 415 F.3d 1303, 1322
(Fed. Cir. 2005) (citations and internal quotations omitted). In this case,
“lock seam” is “a joint between two pieces of sheet metal, made by folding
up the overlapping edges against each other, then folding them over in the
same direction a number of times.”3 Hence, McDonald’s welded offset
portion 70 does not constitute a “lockseam” or a “welded lockseam,” as
understood by a person of ordinary skill in the art. The addition of Smith

3 https://dictionary.reference. com, last visited on May 23, 2011.
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does not remedy the deficiencies of McDonald as described above. As such,
we shall not sustain the rejection of claims 13 and 15.
Rejection II
With respect to the rejection of claims 2-4, the addition of Carson
does not remedy the deficiency of McDonald as described above.
Accordingly, the rejection of claims 2-4 under 35 U.S.C. § 103(a) as
unpatentable over McDonald and Carson cannot be sustained.

Rejection III
Claims 1 and 12
Appellant first argues that the combined teachings of PRD and
McFatter would not have prompted a person of ordinary skill in the art to
combine the teachings of PRD and McFatter to modify the pipe of PRD to
have a diameter larger than 16 feet as taught by McFatter. App. Br. 13.
Hence, according to Appellant, the Examiner’s conclusion of obviousness is
based upon hindsight. Reply Br. 13.
We are not persuaded by Appellant’s argument. According to the
Examiner, PRD discloses all the limitations of claims 1 and 12, with the
exception of a pipe diameter larger than 16 feet. Ans. 6-7. McFatter
discloses a spirally formed tubular product having a diameter of 31 feet.
Ans. 7. We agree with the Examiner that McFatter would have prompted a
person of ordinary skill in the art to provide a diameter larger than 16 feet to
the building structure of PRD in order to increase the amount of usable
space. See Id. Thus, we find that the Examiner has articulated a reasoning
with rational underpinning to support the conclusion that the provision of a
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diameter larger than 16 feet as taught by McFatter to the building structure
of PRD would have been obvious.
On page 14 of Appellant’s Appeal Brief, Appellant appears to attack
the disclosures of PRD and McFatter individually rather than the
combination of PRD and McFatter. However, nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Finally, Appellant argues that the combined teachings of PRD and
McFatter do not disclose: (1) a horizontally produced pipe; (2) a profiled
wall; and (3) increasing the dimensional proportions of the corrugations or
profiles as pipe size is increased. Reply Br. 12-13. We are not persuaded by
Appellant’s arguments because as set forth above: (1) the limitation
“horizontally produced” is a product-by-process limitation; (2) PRD’s
“corrugated” wall satisfies the limitation of a “corrugated or profiled wall;”
and (3) varying the wall thickness as pipe size increases is merely a
mechanical expediency and would have been obvious to a person of ordinary
skill in the art because when the pipe diameter increases, in order to
maintain the same hoop strength (burst strength of the pipe), the pipe wall
thickness needs to increase proportionally.
In conclusion, for the foregoing reasons, we shall sustain the rejection
of claims 1 and 12 under 35 U.S.C. § 103(a) as unpatentable over PRD and
McFatter.
Appellant does not argue claim 13 separate from claim 12. See App.
Br. 14. See also Reply Br. 14. Therefore, the rejection of claim 13 is
likewise sustained.
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Claims 3 and 14
Appellant argues that the combined teachings of PRD and McFatter
do not show a “welded seam,” as required by claims 3 and 14. App. Br. 14.
The Examiner found that PRD discloses a lockseam (Ans. 6) and Appellant
has not contested the Examiner’s finding. Pointing to Carson as a teaching
reference, the Examiner further found and we agree that “lock seams and
weld seams for spirally formed pipe structures are equivalent.” Ans. 23.
See also Carson, col. 2, ll. 24-26. Hence, the modification proposed by the
Examiner appears to be nothing more than “the simple substitution of one
known element for another.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). Accordingly, the rejection of claims 3 and 14 over the
combined teachings of PRD and McFatter is sustained.

Claim 15
Appellant argues that the combined teachings of PRD and McFatter
do not show a “welded lockseam,” as required by claim 15. App. Br. 15.
Although we agree with the Examiner that Carson discloses a weld seam as
an alternative to a lock seam, we could not find any portion in Carson and
the Examiner has not pointed to any portion that discloses both a lock seam
and a weld seam, i.e., a “welded lockseam.” Hence, the Examiner has not
made any finding as to the particular type of lockseam called for in the
claim, namely, a “welded lockseam.” As such, we find that the Examiner’s
legal conclusion of obviousness is not supported by facts, and thus, cannot
stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that
“[t]he legal conclusion of obviousness must be supported by facts. Where
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the legal conclusion is not supported by facts it cannot stand.”). Therefore,
we are constrained to reverse the rejection of claim 15 over the combined
teachings of PRD and McFatter.

Rejection IV
Appellant argues that the Handbook does not disclose: (1) horizontal
production; (2) a profiled wall; (3) increasing dimensional proportions of the
corrugations or profiles as pipe size is increased; and (4) an arch shape for a
pipe larger than 120 inches (10 feet) in diameter. App. Br. 15. We are not
persuaded by Appellant’s arguments because Appellant appears to attack the
disclosures of PRD, McFatter, and Handbook individually rather than the
combination of PRD, McFatter, and Handbook. The Examiner used the
disclosure of the Handbook to merely show that it was known to reshape
spirally formed pipes used for culverts and drainage, such as the pipes of
PRD, into an arch shape. See Ans. 24. See also, Board Decision, p. 20-21.
Moreover, Appellant has not provided any evidence to show why the
Examiner’s proposed modification of PRD according to the teachings of
McFatter and Handbook would not have been obvious to a person of
ordinary skill in the art.
Hence, we shall sustain the rejection of claims 5 and 16 over the
combined teachings of PRD, McFatter, and Handbook.

Rejections V and VII
Appellant argues that the disclosure of Carson does not constitute
prior art because the patent issued to Carson has an issue date of June 23,
1998, which is not prior to the effective filing date of May 18, 1998 of the
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instant application. App. Br. 12, 17, and 19; Reply Br. 15 and 17. We are
not persuaded by Appellant’s argument because “U.S. patents may be used
as of their filing dates to show that the claimed subject matter is anticipated
or obvious.” MPEP § 2136.03 (III). Emphasis added. See also Hazeltine
Research v. Brenner, 382 U.S. 252 (1965). In this case, the filing date of
Carson is June 15, 1997, which is prior to the effective filing date of May
18, 1998 of the instant application . As such, we find that the disclosure of
Carson constitutes proper prior art.
Accordingly, we shall sustain the rejection of claim 2 over the
combined teachings of PRD, McFatter, and Carson. For similar reasons, we
shall also sustain the rejection of claim 7 over the combined teachings of
PRD, Handbook, McFatter, and Carson.
However, with respect to claims 4 and 9, we note that each requires a
“welded lockseam.” App. Br., Claims Appendix. As discussed above (see
Rejection III, claim 15), because Carson fails to disclose both a lock seam
and a weld seam, i.e., a “welded lockseam,” we are constrained to reverse
the rejections of claim 4 and 9.

Rejection VI
We are not persuaded by Appellant’s arguments presented on page 17
of the Appeal Brief because Appellant appears to attack the disclosures of
PRD, Handbook, and McFatter individually rather than the combination of
PRD, Handbook, and McFatter.
Appellant further argues that the combined teachings of PRD,
Handbook, and McFatter do not meet all the limitations of claims 6 and 8.
App. Br. 18. However, Appellant fails to show which limitations of claims 6
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and 8 are not met by the combined teachings of PRD, Handbook, and
McFatter.
Lastly, we are not persuaded by Appellant’s argument that the
Examiner’s conclusion of obviousness is based upon hindsight (see App. Br.
18; Reply Br. 17) because the Examiner has provided a reason with rational
underpinning to modify the structure of PRD according to the teachings of
McFatter and Handbook, namely: (1) to provide a diameter larger than 16
feet in order to “increase useful volume” and (2) to shape the pipe of PRD
and McFatter into an arch shape as taught by Handbook in order to suit “a
particular application as suggested by Handbook.” See Ans. 8.
Accordingly, since Appellant does not argue the rejection of claims 6
and 8 separately and does not present any other substantive arguments, we
shall sustain the rejection of claims 6 and 8 over the combined teachings of
PRD, Handbook, and McFatter. See 37 C.F.R. § 41.37(c)(1)(vii).

Rejection VIII
Appellant argues that: (1) the Examiner’s proposed modification of
Smith would make Smith unsatisfactory for its intended purpose because
“[i]f Smith[] were modified to be a giant single wall corrugated pipe, it
would no longer be a floating double wall structural vessel” (Reply Br. 18) ;
(2) Smith does not disclose a “corrugated or profiled” wall; (3) the Carson
patent is not prior art to Appellant’s application; (4) the combined teachings
of Smith, McFatter, and Carson do not disclose increasing the dimensional
proportions of the corrugations or profiles as pipe size is increased; and (5)
the Examiner’s conclusion of obviousness is based upon hindsight. App. Br.
19-20; Reply Br. 18-19.
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We are not persuaded by Appellant’s first argument because it does
not address the Examiner’s proposed combination. The Examiner is not
proposing to modify the double-walled structure of Smith according to the
single-wall structure of McFatter, but merely to scale up the structure of
Smith to have a diameter larger than 16 feet, i.e. 31 feet, as taught by
McFatter. See Ans. 10.
Appellant’s second argument is likewise unpersuasive because it does
not address the combination of Smith, McFatter, and Carson, but merely the
teachings of Smith. The Examiner acknowledged that Smith does not teach
corrugations, but further found that Carson discloses a pipe having
corrugations to “increase strength.” See Ans. 9, 10.
With respect to Appellant’s third argument, for the reasons set forth
above in Rejections V and VII, we find that the disclosure of Carson
constitutes proper prior art.
Appellant’s fourth argument is likewise unpersuasive for the same
reasons set forth above in the rejection of claims 1and 12 over the combined
teachings of McDonald and Smith. Since we find that a person of ordinary
skill in the art would have readily recognized that when the pipe diameter
increases, in order to maintain the same hoop strength (burst strength of the
pipe), the pipe wall thickness needs to increase proportionally, we agree with
the Examiner that increasing the dimensional proportion of the wall as the
pipe size is increased “is merely a choice of mechanical expedients.” See
Ans. 10. Appellant has not provided any evidence to show why the
Examiner’s proposed modification would not have been obvious to a person
of ordinary skill in the art.
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Finally, we are not persuaded by Appellant’s fifth argument because
the Examiner has provided a reason with rational underpinning to modify the
structure of Smith according to the teachings of McFatter and Carson: (1) to
provide a diameter larger than 16 feet in order to “increase useful volume”
and (2) to provide corrugations to “increase strength.” See Ans. 9-10.
In conclusion, we are not persuaded by Appellant’s arguments.
Therefore, for the foregoing reasons, and since claims 1-3 are not argued
separately, we shall sustain the rejection of claims 1-3 under 35 U.S.C. §
103(a) as unpatentable over Smith, McFatter, and Carson. See 37 C.F.R. §
41.37(c)(1)(vii).
However, with respect to claim 4, because Carson fails to disclose
both a lock seam and a weld seam, i.e., a “welded lockseam,” we are
constrained to reverse the rejection of claim 4 over Smith, McFatter, and
Carson (see Rejections V and VII).

Rejection IX
Claim 5-9
Appellant argues that: (1) Handbook does not disclose: (a) horizontal
production; (b) a profiled wall; (c) increasing dimensional proportions of the
corrugations or profiles as pipe size is increased; and (d) an arch shape for a
pipe larger than 120 inches in diameter; (2) Carson does not constitute prior
art; (3) neither Smith nor McFatter discloses a corrugated or profiled wall
and increasing dimensional proportions of the corrugations or profiles as the
pipe size increases; (4) the Examiner’s conclusion of obviousness is based
on hindsight; (5) the Examiner’s proposed modification of Smith would
make Smith unsatisfactory for its intended purpose because if Smith were
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modified to be a giant single wall corrugated arched pipe, it would no longer
be a floating double wall structural vessel; and (6) the combined teachings of
Smith, McFatter, Carson, and Handbook do not disclose increasing the
dimensional proportions of the corrugations or profiles as pipe size is
increased. App. Br. 20-22; Reply Br. 19-21.
We are not persuaded by Appellant’s first and third arguments
because Appellant appears to attack the disclosures of Smith, McFatter,
Carson, and Handbook individually rather than the combination of Smith,
McFatter, Carson, and Handbook. The Examiner used the disclosure of the
Handbook to merely show that it was known to reshape spirally formed
pipes, such as the pipes of Smith, into an arch shape. See Ans. 29.
Appellant’s second, fifth, and sixth arguments are essentially the same
as the arguments presented above with respect to the rejection of claim
1over the combined teachings of Smith, McFatter, and Carson. For the same
reasons, we are not persuaded.
Finally, we are not persuaded by Appellant’s sixth argument because
the Examiner has provided a reason with rational underpinning to modify the
structure of Smith according to the teachings of McFatter, Carson, and
Handbook: (1) to provide a diameter larger than 16 feet in order to “increase
useful volume;” (2) to provide corrugations to “increase strength;” and (3) to
reshape a cylindrical pipe “into arch shapes as needed for a particular
application.” Ans. 11. Moreover, we note that Smith specifically discloses
reshaping a cylindrical structure into a bowed out shape (an inverse arch
shape). Smith, col. 5, ll. 2-7 and figs. 17 and 18. See also, Ans. 11.
In conclusion, we are not persuaded by Appellant’s arguments.
Therefore, for the foregoing reasons, and since claims 5-8 are not argued
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separately, we shall sustain the rejection of claims 5-8 under 35 U.S.C. §
103(a) as unpatentable over Smith, McFatter, Carson, and Handbook.
However, with respect to claim 9, because Carson fails to disclose
both a lock seam and a weld seam, i.e., a “welded lockseam,” we are
constrained to reverse the rejection of claim 9 over Smith, McFatter, Carson,
and Handbook (see Rejections V and VII).

Rejections X and XI
Independent claim 12 requires a pipe wall that is “corrugated or
profiled with increased dimensional proportions as pipe size is increased.”
App. Br., Claims Appendix. The Examiner relied on the Board Decision as
evidence that the limitation of “change in proportions as the pipe size is
increased” is readable upon Reed and Steuber under 35 U.S.C. § 102. Ans.
12. Appellant argues that because the claim language in the instant case has
been amended from “may be” to “is,” the teachings of Reed and Steuber,
respectively, are not anticipatory as the Examiner contends. Reply Br. 21-
23. We agree. Since the claim language has been amended so as to change
an optional condition to an explicit requirement, we find that the Board’s
Decision is distinguishable to the instant case. See Board Decision, p. 16.
Accordingly, the Examiner’s reliance on the Board Decision is misplaced.
Therefore, we find that neither Reed nor Steuber discloses a pipe wall that is
“corrugated or profiled with increased dimensional proportions as pipe size
is increased,” as called for by claim 12.
However, throughout prosecution of the instant application, on
multiple occasions, the Examiner has opined that increasing the dimensional
proportions of the wall, as pipe size is increased, “is merely a choice of
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mechanical expedients.” See, e.g., Ans. 4, 5, 10, and 35. See also, Final
Rejection, mailed July 26, 2007, p. 6 and Non-Final Rejection, mailed
October 10, 2006, p. 6. Hence, Appellant was specifically placed on notice
that the Examiner considered the limitation of increasing the pipe wall
proportionally as the pipe size increased to merely be a choice of mechanical
expediency. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). 4 As
discussed above, a person of ordinary skill in the art would have readily
recognized that when the pipe diameter increases, in order to maintain the
same hoop strength (which determines the burst strength of the pipe), the
pipe wall thickness needs to increase proportionally. As such, modifying the
structure of either Reed or Steuber and Nethery to increase the wall
thickness as the pipe size increases would have been obvious for a person of
ordinary skill in the art in order to maintain the same hoop strength, that is,
the same burst strength of the pipe when a larger diameter pipe is required.
Appellant further argues that: (1) neither Reed nor Steuber discloses
(a) spiral or annular corrugations and (b) a profiled or corrugated wall and
(2) Nethery has annular corrugations, not spirally formed corrugations. See
App. Br. 23-24 and 26. Reply Br. 21-23. We are not persuaded by
Appellant’s arguments because Appellant appears to attack the disclosure of
Reed or Steuber and Nethery individually rather than the combination of
Reed or Steuber and Nethery.
In conclusion, for the foregoing reasons, we shall sustain the rejection
of claim 12 over Reed and Nethery. For the same reasons, and since claims

4 “ …all that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132.”
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12 and 14 are not argued separately, we shall also sustain the rejection of
claims 12 and 14 over Steuber and Nethery.

SUMMARY
The decision of the Examiner is affirmed as to claims 1-3, 5-8, 12-14,
and 16 and reversed as to claims 4, 9, and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

mls