Ex parte Kirik

Board of Patent Appeals and Interferences

Sep 22, 2000

08782151 (B.P.A.I. Sep. 22, 2000)

1
The opinion in support of the decision being entered today was not written for publication and is not binding precedent of
the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL KIRIK
____________
Appeal No. 2000-0531
Application No. 08/782,151
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE, and JENNIFER D. BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4, 6, 9, 12
and 13, which are all of the claims pending in this application, claims 7, 8, 10 and 11 having
been canceled subsequent to the final rejection.
Appeal No. 2000-0531
Application No. 08/782,151
While the appellant filed a paper on September 8, 1999 (Paper No. 19) entitled "REPLY BRIEF," this1
reply brief merely provides updated information with regard to the real party in interest and does not contain any
additional argument against the examiner's rejection.
2
BACKGROUND
The appellant's invention relates to a method for fitting a reinforced fire hose to a
coupling, wherein the fire hose inner diameter is larger than the outer diameter of the coupling.
In particular, after the hose is placed onto the coupling, it is heated so as to shrink until it
engages with the coupling without leaving gaps. An understanding of the invention can be
derived from a reading of exemplary claim 1, which appears in the appendix to the appellant's
brief.
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Benson et al. (Benson) 3,567,259 Mar. 2, 1971
The appellant's admitted prior art as discussed on page 2 of the specification and depicted in
Figure 2 and the admitted prior art as discussed on page 4, lines 10-15, of the specification.
The following rejection is before us for review.
Claims 1, 4, 6, 9, 12 and 13 stand rejected under 35 U.S.C. ß 103 as being
unpatentable over the appellant's admitted prior art in view of Benson.
Reference is made to the brief (Paper No. 16) and the answer (Paper No. 18) for the1
respective positions of the appellant and the examiner with regard to the merits of this rejection.
Appeal No. 2000-0531
Application No. 08/782,151
3
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our review, we
make the determinations which follow.
The examiner states on page 5 of the answer that the appellant's admitted prior art
method on page 2 of the specification and depicted in Figure 2 includes the steps of placing a
reinforced fire hose over a coupling such that a gap is created between the outer surface of the
coupling and the inner surface of the hose and then clamping the hose to the coupling and the
appellant does not challenge this statement. Additionally, the examiner states on page 6 of the
answer that the fire hose of the appellant's admitted prior art fitting method is presumed to be a
nylon reinforced fire hose. As the appellant has not challenged this statement, we shall
consider the use of a nylon reinforced fire hose to be part of the admitted prior art fitting
method.
The admitted prior art fails to teach wrapping the fire hose with a heating apparatus and
then heating the hose such that the hose shrinks and engages the outer surface of the coupling,
whereby no gap exists between the inner surface of the hose and the outer surface of the
coupling, as required in each of the independent claims. To address this deficiency, the
examiner turns to the teachings of Benson. Benson discloses joining a section of tubing 10 and
Appeal No. 2000-0531
Application No. 08/782,151
4
a fitting 11 by applying adhesive to the outer surface of the tubing, placing the fitting over the
tubing and directing hot air from a gun onto the fitting to heat shrink the fitting over the section
of tubing (col. 3, lines 3-14). We also note that Benson points out that a fracture of a length of
tubing may be repaired by uniting the parts of the tubing on each side of the fracture to a fitting
such as a short length of tubing in accordance with the invention (col. 2, lines 50-53).
The examiner takes the position that a reasonable inference that one would draw from
Benson is that any member that is capable of being shrunk by the application of heat is capable
of being joined to another member via a "shrink-fit" (answer, page 8) and thus concludes that
one of ordinary skill in the art would have found it obvious to modify the prior art fire hose-
fitting method by applying an adhesive to the fitting (coupling) and then heat shrinking the hose
onto the fitting or, in the alternative, heat shrinking the hose onto the fitting prior to clamping
the hose thereto, in order to obtain a better connection (answer, pages 5-6). As for the step of
wrapping the fire hose with a heating apparatus, the examiner contends that one of ordinary
skill in the art would have found it obvious to heat the hose with any known device used to
heat a tubular member and, thus, concludes that it would have been obvious to such a person to
use the known heating apparatus discussed on page 4, lines 10-15, of the specification to heat
the fire hose (answer, page 6). The examiner considers the exact temperature to which the
hose is heated to be a matter of engineering design choice, since such temperature is dependent
upon the material of the hose and would be determined without undue experimentation.
Appeal No. 2000-0531
Application No. 08/782,151
5
Obviousness is tested by "what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, it "cannot be established by combining the teachings of the
prior art to produce the claimed invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). Moreover, the mere fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested the desirability of
the modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In this instance, while Benson does teach that tubings and fittings can be joined by heat
shrinking a fitting around a tubing, we find in these teachings no suggestion to modify the
admitted prior art fire-hose fitting method by heat-shrinking the fire hose to the coupling. In
our view, the only suggestion for modifying the admitted prior art method in the manner proposed by
the examiner to meet the above-noted limitations stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight knowledge to support an obviousness rejection
under 35 U.S.C. § 103 is, of course, impermissible. See, for example,
W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It follows that we cannot sustain the examiner's
rejection of independent claims 1, 4 and 12, or of claims 6, 9 and 13 which depend therefrom.
Appeal No. 2000-0531
Application No. 08/782,151
Where a reference is relied on to support a rejection, whether or not in a "minor capacity," there would2
appear to be no excuse for not positively including the reference in the statement of rejection. In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
6
In a footnote on page 4 of the answer, the examiner refers to U.S. Pat. No. 3,423,518
to Weagant. While the examiner has not relied upon this reference in the rejection , we note,2
for the record, that we find therein no teaching, and the examiner has pointed to none, which
would remedy the above-noted deficiency of the combination proposed by the examiner.
Appeal No. 2000-0531
Application No. 08/782,151
7
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 4, 6, 9, 12 and 13 under
35 U.S.C. ß 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2000-0531
Application No. 08/782,151
8
Kenneth L. Mitchell, Esq.
Woodling, Krost & Rust
Suite 1520
1801 East Ninth Street
Cleveland, OH 44114