Ex Parte Kramer et al

Board of Patent Appeals and Interferences

Jun 29, 2009

11250757 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH C. KRAMER, JR. and BASILY B. BASILY
____________

Appeal 2009-001562
Application 11/250,757
Technology Center 3700
____________

Decided:1 June 29, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE

Kenneth C. Kramer et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-10. Claims
11-22 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is a coupler with expanded fittings
that extend hydraulically or pneumatically in order to interconnect pipes and
provide flow of any type of material in any type of piping system.
Spec. 1:7-10. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A coupler with expanding fittings,
comprising:
an inner sleeve having an annular wall with
an outwardly extending lip about an end of the
inner sleeve, the wall of the inner sleeve having a
passage defined therein having an inlet disposed
on an exterior of the sleeve and having a discharge
opening adjacent the lip; and
an outer sleeve having a pipe flange at a first
end and an inwardly extending lip at an opposing
second end, the inwardly extending lip being
slidably disposed upon the inner sleeve and
encircling the inner sleeve, the discharge opening
being disposed between the outwardly extending
lip of the inner sleeve and the inwardly extending
lip of the outer sleeve;
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wherein the outer sleeve travels along the
outward surface of the outward extending lip of the
inner sleeve, the range of travel of the outer sleeve
being limited by the inwardly extending lip of the
inner sleeve.

THE EVIDENCE
The Examiner relies upon the following evidence:
Dale US 2,533,097 Dec. 5, 1950
Hunter US 3,735,772 May 29, 1973
Gorman, Jr. US 5,052,721 Oct. 1, 1991
Wallace US 6,073,906 Jun. 13, 2000

THE REJECTIONS
The Appellants seek our review of the following rejections:2
1. The Examiner rejected claims 1, 3-8, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Gorman and Wallace.
2. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Gorman, Wallace, and Dale.
3. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Gorman, Wallace, and Hunter.

ISSUES
The Examiner found that Gorman discloses the Appellants’ device
except that the wall of the inner sleeve does not have a passage defined
therein. Ans. 3. The Examiner found that “Wallace teaches hydraulic

2 The provisional rejection of claims 1-5 under non-statutory obviousness-
type double patenting was withdrawn by the Examiner due to the
abandonment of Application No. 11/102,826. Ans. 2; App. Br. 5.
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pressure to adjust the positioning of an outer sleeve with at least one
passageway being provided through a sidewall of an inner sleeve.” Ans. 3.
The Examiner concluded that it would have been obvious to a person of
ordinary skill in the art at the time of Appellants’ claimed invention to add
the hydraulic passageway of Wallace to the device of Gorman, “in order to
provide a hydraulic means for adjusting the position of the outer sleeve.”
Ans. 3-4.
The Appellants contend that there is no reason to modify Gorman
with Wallace as found by the Examiner because Wallace is not analogous art
to Gorman, and Gorman teaches away from the combination proposed by
the Examiner. App. Br. 10.
The first issue before us is:
Have the Appellants demonstrated that the Examiner erred in the
relying on the combination of Gorman and Wallace in the rejection of claims
1, 3-8, and 10 either because Wallace is not analogous art to Gorman, or
because Gorman teaches away from the combination proposed by the
Examiner?
The Examiner found that the combination of Gorman as modified by
Wallace in the first rejection meets the limitations of claim 2 except that this
combination does not disclose a spring. Ans. 4-5. The Examiner found that
Dale discloses a spring placed “between an outwardly extending lip of an
inner sleeve and a pipe flange of an outer sleeve.” Ans. 5. The Examiner
concluded that it would have been obvious to a person of ordinary skill in
the art to utilize a spring as taught by Dale to provide a force to restore “the
joint to a normal condition” and to “achieve a desired positioning of
movable elements.” Ans. 5.
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The Appellants contend that Dale does not disclose a spring located as
claimed. App. Br. 11. The Appellants also contend there is no rational basis
to combine Dale with the Gorman and Wallace combination proposed by the
Examiner because Gorman and Dale are not analogous art since a person of
ordinary skill in the art looking to modify the water service coupling of
Gorman would not look to the field of expansion joints (such as Dale). App.
Br. 11-13.
The second issue before us is:
Have the Appellants demonstrated that the Examiner erred in relying
on the combination of Gorman, Wallace, and Dale in the rejection of claim 2
either because there is no rational basis to combine the teachings of Dale to
the modified Gorman device in the manner claimed or because Gorman is
not analogous art to Dale?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellants’ Specification describes the claimed invention as
a coupler that interconnects pipes and provides flow of “any type
of material” in “any type of piping system.” Spec. 1:10-11. The
Appellants’ Specification describes the claimed invention as
related to the art of pipe fittings, which is “[t]he work of
installing and maintaining pipe systems.” Spec. 1:7; 3:1-2. The
Appellants’ Specification describes that “[v]alves are often used
in pipe systems.” Spec. 3:2. The Appellants’ Specification
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describes pipe fitters facing difficulties removing and replacing
“pipe sections and/or valves.” Spec. 3:13-15; see also Spec.
12:15-16 (referring to piping systems frequently being cut to add
“pipes and/or install a valve”). The Appellants’ Specification
describes the claimed invention as “designed to eliminate the cost
and labor of interconnecting pipes and/or valves in any type of
piping system.” Spec. 7:5-6.
2. The Appellants’ Specification lists several “improvements
relating to piping systems,” in the prior art as related to the
problem faced by the Appellants, including several references
related to valves. See, e.g., Spec., 4:9; 4:17- 5:1; 5:8-9, 12; 6:6.
3. The Appellants’ Specification describes that the claimed device
is designed to overcome problems in the prior art by making
removal and replacement of a pipe fitting easier. Spec. 2:9 - 4:3.
4. Gorman discloses a water meter service coupling with an
expandable piston to facilitate removal and/or replacement by
allowing for expansion of the water service line upon
disconnection of the water meter. Gorman, col. 1, ll. 10-17.
5. Gorman discloses that the invention overcomes service line
expansion and other issues associated with underground
installation that make removal and replacement of the water
meter coupling difficult. Gorman, col. 1, l. 48 to col. 2, l. 3.
6. Gorman does not discuss, discourage, or discredit the notion of
using hydraulic or pneumatic power to facilitate movement of the
expandable piston. Gorman, passim.
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7. Wallace discloses a flow control device for a water well.
Wallace, col. 1, ll. 13-14. Wallace’s device is a valve 1
comprised of a pipe section (with upper end 20a and lower end
20b) with a throttle portion 6 configured as a sleeve around the
pipe section. Wallace, col. 5, ll. 4-10; Figs. 1A; see also
Wallace, col. 2, ll. 54-55 (referring to the device as concentric
cylinders or tubular members).
8. Throttle portion 6 is hydraulically operated to open and close “D”
ports 8. Wallace, col. 5, ll. 9-12, 42-44. When the pump is
operating, valve 1 is in the closed position 7 (i.e. throttle portion
6 closing “D” orifices 8). Wallace, col. 5, ll. 14-15; Fig. 1A.
During recharge operations, throttle portion 6 moves so that it
opens and closes “D” orifices 8 to control water flow through the
orifices. Wallace, col. 5, ll. 9-12.
9. Wallace discloses objectives of the device are to permit minor
adjustments to flow from the well head, and to provide simple,
durable, and cost effective down-hole flow control in wells that
eliminates or reduces: air-fouling, air entrainment, and air
binding. Wallace, col. 3, ll. 24-47.
10. Dale discloses a pipe coupling that serves as a wide take-up
union, an expansion joint, or both. Dale, col. 1, ll. 1-5. Objects
of the invention are to interconnect telescopically movable pipe
sections for movement of the sections during assembly, and for
movement of the pipes after assembly in response to expansion
of the pipe lengths. Dale, col. 1, ll. 6-18.
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11. Dale discloses the pipe joint 10 includes an inner and an outer
pipe section 11, 12. Dale, col. 1, ll. 29-30. Pipe section 12 has a
cylindrical end portion 13 with an outer surface 15, that fits in
telescopic relation within the bore 14 of pipe section 11, and is
sealed by O-ring packing 16. Dale, col. 1, ll. 32-44. Inner pipe
section 12 carries a sleeve nut 18 that includes threads that join
sleeve nut 18 to outer pipe section 11, and threads on shoulder 20
of the sleeve nut 18 so that it turns tightly against the flange 21 of
inner pipe section 12. Dale, col. 1, ll. 51-54; Figs. 1, 2. When
assembled, an annular space 24 is formed with the inner
circumferential boundary defined by inner pipe section 12, the
outer circumferential boundary defined by sleeve nut 18, and the
ends of the space defined by the end of outer pipe section 11 and
the flange 21 of inner pipe section 12. Dale, col. 2, ll. 31-32;
Figs. 1, 2. Dale discloses a coil spring 25 may be inserted in
annular space 24 to bias the joint 10 to the expanded position.
Dale, col. 2, ll. 28-34, Figs. 1, 2.
12. The Appellants present no evidence that the combination of
Gorman and Wallace found by the Examiner is beyond the skill
of a person of ordinary skill in the art. App. Br., passim.

PRINCIPLES OF LAW
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that
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was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001). “[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 51-52 (1966)).
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). The
“field of endeavor” test asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320,
1325-27 (Fed. Cir. 2004). “‘A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor's endeavor, it is
one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem.’ In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “In other words, ‘familiar
items may have obvious uses beyond their primary purposes.’” In re ICON
Health and Fitness, Inc, 496 F.3d 1375, 1380-1 (Fed. Cir. 2007) (quoting
KSR Int’l Co., 550 U.S. at 402).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int'l Co., 550 U.S. at 406. The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR Int'l
Co., 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Rejection of claims 1, 3-8 and 10 and under 35 U.S.C. § 103(a) as
unpatentable over Gorman and Wallace3
The Appellants argue claims 1, 3-8, and 10 as a group. App. Br. 6-10.
As such, we select claim 1 as the representative claim, and claims 3-8 and 10
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Appellants make several arguments why there is no rational basis
to combine Gorman with Wallace as proposed by the Examiner.
The Appellants argue Gorman and Wallace are not analogous art to
each other because Wallace is not in the same field of endeavor as Gorman,
and because Wallace is not pertinent to the problem confronting Gorman.
App. Br. 10. The correct focus of the analogous art test is not whether the
prior art references are analogous to each other, but rather the correct focus
is whether the references are analogous art to the claimed subject matter. In

3 While the Appellants group claim 9 with this ground of rejection, claim 9
is subject to a different ground of rejection and is, therefore, treated
separately in the analysis of the third rejection, infra. See App. Br. 6.
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re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). We make two conclusions
regarding Appellants’ assertion. One, by asserting Wallace is not analogous
to Gorman, Appellants have not asserted that Gorman is not analogous art to
the subject matter of claim 1. Two, Appellants have the burden to show
error in the Examiner’s rejection, and have failed to prove error by asserting
that Wallace is not analogous art to Gorman. Because both Gorman and the
subject matter of claim 1 relate to pipe fittings, to the extent that the
Appellants’ argument that Wallace is not analogous art to Gorman can be
interpreted as asserting that Wallace is not analogous art to the subject
matter of claim 1, we analyze that assertion.
To determine if Wallace and the subject matter of claim 1 are in the
same field of endeavor, we look to the structure and function of each. The
structure of claim 1 is a coupler with an outer sleeve that travels along the
outer surface of an inner sleeve. The Appellants’ Specification describes the
structure as a coupler that interconnects pipes and provides flow (Fact 1).
The Appellants’ Specification broadly describes the function of the device as
providing flow of “any” type of material in “any” type of piping system
(Fact 1). Wallace discloses a device with a structure that is an inner sleeve
within an outer sleeve (Fact 7). Wallace discloses that during pumping, the
valve is in the closed position, simply providing flow, and during recharge
operations, the valve adjusts to control water flow through the “D” orifices
(Fact 8). In this way, Wallace’s device serves as both an interconnecting
pipe and as a valve.
Wallace’s device and Appellants’ claimed device are structurally
similar in that both are pipe fittings comprised of pipe sections with an inner
and an outer sleeve. Regarding function, Wallace’s device, when in the
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closed position, provides flow, and the Appellants’ device also provides
flow. Beyond these similarities of structure and function, the Appellants’
Specification describes the field of the invention as relating to pipe fittings,
“the work of installing and maintaining pipe systems,” and further describes
that valves are often used in pipe systems (Fact 1). By this description,
Wallace’s device, like Appellants’, is a pipe fitting. We find that Wallace
and the subject matter of claim 1 are in the same field of endeavor, so that
Wallace is analogous art to the Appellants’ device.
The Appellants also argue that Gorman uses a piston for movement
and would have no reason to utilize hydraulic pressure, and therefore no
reason to incorporate the internal passage taught by Wallace. App. Br. 8.
Similarly, the Appellants assert that there is no motivation or common sense
rationale to modify Gorman in view of its goal of providing a coupling with
retracting capabilities to facilitate removal and replacement of a water meter.
App. Br. 9. We disagree.
The Appellants’ arguments fail to address the reason to modify
Gorman provided by the Examiner, namely, “to provide hydraulic means for
adjusting the position of the outer sleeve.” Ans. 3-4. This rationale is
sound, given that Gorman’s coupling is intended for underground
installation, exposing the device to debris and corrosion so that hydraulic
assistance for retracting the coupling would serve Gorman’s intended
purpose of easy removal and replacement (Fact 5). The Appellants’
conclusory statement, unsupported by any explanation why the Examiner’s
reason to modify is incorrect, is unconvincing.
The Appellants also assert that “[i]t is unclear how Wallace’s double
axial passageways will conform to Gorman’s sealed voids,” followed by an
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argument that Gorman teaches away from the combination proposed by the
Examiner. App. Br. 10. The Appellants provide no evidence that the
combination proposed by the Examiner is beyond the skill of a person of
ordinary skill in the art (Fact 12). Further, the Appellants’ conclusory
assertion, without more, fails to convince us that a person of ordinary skill in
the art would be unable to solve the issue raised by the Appellants. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It is proper to "take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ."). See also id. at 421 ("A person of ordinary skill is
also a person of ordinary creativity, not an automaton.").
Regarding the Appellants’ teaching away argument, Gorman is silent
concerning the use of hydraulic power for retracting the expandable piston
(Fact 6). Silence alone would not lead a person of ordinary skill in the art in
a direction divergent from that chosen by the Appellants. In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001).
The Appellants have failed to demonstrate error by the Examiner in
the decision to reject claim 1 as unpatentable over Gorman and Wallace.
Claims 3-8 and 10 fall with claim 1.

Rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over
Gorman, Wallace, and Dale
Claim 2 includes the limitation of a “compression spring disposed
between the outwardly extending lip of the inner sleeve and the pipe flange.”
Dale discloses a pipe joint comprised of inner and outer pipe sections,
and a sleeve nut on the inner pipe section that slides onto the outer pipe
section (Fact 11). Dale’s device also includes a spring that biases the joint to
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the expanded position located in the annular space formed with the inner
circumferential boundary defined by the inner pipe section, the outer
circumferential boundary defined by the sleeve nut, and the ends of the
space defined by the end of the outer pipe section and the flange of inner
pipe section (Fact 11).
The Appellants correctly assert that Dale’s spring is not located as
claimed. App. Br. 11. However, the requirement is not that Dale’s spring
must be capable of being bodily incorporated into the combined device of
Gorman and Wallace as found by the Examiner. In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference...Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art”).
Dale’s spring, like that of claim 2, serves to bias the joint to the
expanded position by providing opposing forces on the inner and outer
sleeve (Fact 11). We find that a person of ordinary skill in the art, knowing
this teaching from Dale, would recognize the technique may be used to
improve the combined Gorman-Wallace device in a similar way. 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”).
The Appellants contend Dale and Gorman are not analogous art to
each other because “Dale is an expansion joint and Gorman is a water
service coupling.” App. Br. 11-13. Here, as in claim 1, supra, the
Appellants have not properly asserted an analogous art argument, and have
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failed to demonstrate error by the Examiner on that basis. To the extent that
the argument can be construed as asserting both Dale and Gorman are not
analogous to Appellants’ claimed device, we analyze that contention.
Dale’s structure of inner and outer pipe sections (Fact 11) is similar to
Appellants’ structure of a coupler with an outer sleeve that travels along the
outer surface of an inner sleeve. Dale’s function of providing a movable
pipe for movement of the sections during assembly (Fact 10) is similar to the
Appellants’ function of providing a pipe fitting that is easy to remove and
replace (Fact 3). Further, as we found in the analysis of claim 1, supra,
Appellants’ Specification describes the field of the claimed invention as pipe
fittings, which includes interconnecting pipes and valves (Fact 1). By this
definition, Dale’s device is a pipe fitting. We find that Dale and the subject
matter of claim 2 are in the same field of endeavor, and are therefore
analogous art.
Quite similarly, Gorman discloses a coupling (pipe fitting) with an
expandable piston to facilitate removal and replacement, with similar
structure and function to the Appellants’ device (Facts 4, 5). Gorman is also
analogous art to the Appellants’ device.
Because Dale and Gorman are analogous art to the Appellants’
clamed device, the Appellants have failed to demonstrate that the Examiner
erred in the decision to reject claim 2.

Rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Gorman, Wallace, and Hunter
The Appellants list claim 9 with the claims of the first rejection over
Gorman and Wallace under 35 U.S.C. § 103(a), and assert that Hunter does
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not cure the deficiencies of the Gorman-Wallace combination suggested by
the Examiner. App. Br. 6. Because we concluded in the analysis of claim 1,
supra, that the Appellants have not demonstrated error by the Examiner in
the decision to reject claim 1 as obvious over Gorman and Wallace, there is
no deficiency for Hunter to cure. The Appellants have failed to demonstrate
error by the Examiner in the rejection of claim 9.

CONCLUSION
The Appellants have failed to demonstrate that the Examiner erred in
the rejection of claims 1 and 3-10 because Wallace is analogous art to the
Appellants’ device, and Gorman does not teach away from the combination
proposed by the Examiner
The Appellants have failed to demonstrate that the Examiner erred in
the rejection of claim 2 because a person of ordinary skill in the art, knowing
Dale’s disclosure of a spring, would recognize how to improve the Gorman-
Wallace device in a similar way, and because both Dale and Gorman are
analogous art to the Appellants’ clamed device.

DECISION
We affirm the Examiner's rejection of claims 1-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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