Ex Parte Kuhmann et al

Patent Trial and Appeal Board

Jun 15, 2017

13639765 (P.T.A.B. Jun. 15, 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.
13/639,765 10/05/2012 Karl Kuhmann 404556US99PCT 5534
22850 7590 06/19/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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 KARL KUHMANN,
ANDREAS DOWE, and RAINER GOERING
Appeal 2016-000186
Application 13/639,7651
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1 and
4—20.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants state that the real party in interest is “EVONIK DEGUSSA
GmbH” (Appeal Brief filed January 20, 2015, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 5—22; Reply Brief filed September 16, 2015, hereinafter “Reply
Br.,” 2—14; Final Office Action entered June 19, 2014, hereinafter “Final
Act.,” 2—7; Advisory Action entered October 23, 2014; Examiner’s Answer
entered July 16, 2015, hereinafter “Ans.,” 2—12.
Appeal 2016-000186
Application 13/639,765
We affirm.3
BACKGROUND
The subject matter on appeal relates to a flexible pipe having a
multilayer structure with unbonded layers (Specification, hereinafter
“Spec.,” 1,11. 2—3). Representative claim 1 is reproduced from page 24 of
the Appeal Brief (Claims Appendix), with key limitations bolded and
italicized:
1. A flexible pipe having a multilayer structure with
unhanded layers, where the pipe comprises an interior lining
comprising layers (a) and (b):
a) at least one layer comprising a molding composition,
wherein the molding composition comprises a polymer selected
from the group consisting of:
a polyarylene ether ketone,
polyphenyl sulfone,
polyphenylene sulfide,
a blend of a polyarylene ether ketone and polyphenylene
sulfide, and semiaromatic polyamide, where from 5 to 100 mol%
of a dicarboxylic acid content thereof derives from an aromatic
dicarboxylic acid having from 8 to 22 carbon atoms, and which
has a crystallite melting point Tm of at least 260°C, determined
according to ISO 11357 in the 2nd heating procedure;
b) at least one layer comprising a fluoropolymer molding
composition;
wherein the flexible pipe is operable at temperatures
from above 130°C to 200°C to convey a fluid selected from the
group consisting of crude oil, natural gas, methanol, and super
critical carbon dioxide and resistant to the diffusion of gases from
the conveying fluid; and
wherein the interior lining is a three-layer lining having a
layer sequence a/b/a.
3 We heard oral arguments from the Appellants’ counsel on June 6, 2017.
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Application 13/639,765
REJECTIONS ON APPEAL
On appeal, the Examiner modified the Final Office Action by
withdrawing the final rejections and entering new grounds of rejections
(Ans. 2-8):
I. Claims 1, 4, 5, 8—15, and 17—20 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Braad
(WO 2005/028198 Al, published March 31, 2005);
II. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Braad; and
III. Claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable
over Braad in view of Topoulos (US 2010/0160008 Al,
published June 24, 2010).
DISCUSSION
A. Anticipation
With respect to claim 1, the Examiner finds that Braad describes a
flexible pipe having unbonded layers in which an interior lining comprises
two layers—one layer, which is a “polymer layer” (polyphenylene sulfide),
and another layer, which is a “film layer” (fluoropolymer) (Ans. 2). The
Examiner also finds that Braad teaches an “a/b/a” structure as specified in
claim 1 because it discloses a film layer disposed between two polymer
layers (id.). Furthermore, the Examiner finds that Braad teaches that the
pipe is capable of resisting high temperatures of fluid conveyed from 130 to
180-C, is impermeable to a fluid comprising carbon dioxide, would be
operable to convey supercritical carbon dioxide, and “would be expected to
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Application 13/639,765
be resistant to diffusion of gases from supercritical carbon dioxide” {id. at
3).
The Appellants contend Braad does not anticipate because “Braad
teaches the ordinary artisan to pick and choose polymers from a broad listing
without any guidance, direction, or distinction” (Reply Br. 3—4). See also
Appeal Br. 9, 12—14.
We agree with the Appellants on this issue. Braad describes
polyphenylene sulfide and fluoropolymer as one of multiple suitable
polymer materials for the “polymer layer” and “film layer,” respectively
(Braad at 4,1. 21—5,1. 11, and 6,11. 1—26). In addition, a lining in which a
film layer is sandwiched between two polymer layers is disclosed as one
embodiment {id. at 12,11. 1—12). Because some picking, choosing, and
combining various disclosures from the prior art disclosure would be
required to arrive at a pipe falling within the scope of claim 1, we find that
Braad does not describe every limitation recited in the claim with sufficient
specificity as required under 35 U.S.C. § 102(b). Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[I]t is not enough [for
anticipation] that the prior art reference discloses part of the claimed
invention, which an ordinary artisan might supplement to make the whole, or
that it includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.”); In reArkley, 455 F.2d 586, 587
(CCPA 1972) (plurality) (anticipation requires that the prior art reference
“disclose the claimed [invention] or direct those skilled in the art to the
[invention] without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference.”).
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Application 13/639,765
For these reasons, we cannot sustain the Examiner’s anticipation
rejection.
B. Obviousness
As a preliminary matter, we address claims separately only to the
extent that they are separately argued pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv). Otherwise, the claims stand or fall with claim 1, which we
select as representative pursuant to the rule.
Although we have ruled that Braad does not anticipate, we agree with
the Examiner that claim 1 ’s subject matter would have been obvious to a
person having ordinary skill in the art. Arkley, 455 F.2d at 587 (“[Pjicking
and choosing may be entirely proper in the making of a [§] 103, obviousness
rejection”).
As we pointed out above, Braad discloses an embodiment in which a
film layer, which may be selected from various materials such as fluorous
polymers, is disposed between two polymer layers, which may be selected
from various materials such as polyphenylene sulfide (Braad 4,1. 21—5,1.
11; 6,11. 1—26; 12,11. 1—2). Thus, contrary to the Appellants’ position that
Braad’s inner lining has a “b/a/b” structure that “teaches away” from the
claimed invention (Appeal Br. 12, 14—18; Reply Br. 6), Braad’s disclosure
would have reasonably suggested a pipe with an interior lining having the
same “a/b/a” configuration and the same materials disclosed and specified as
suitable for layers “a” and “b” in the claimed pipe. Merck & Co. Inc. v.
Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
[reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious.”); In re Corkill, 111 F.2d 1496,
1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of
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Application 13/639,765
prior art teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites of the claims
from among ‘thousands’ of compounds”).
The Appellants argue that Braad does not describe or suggest the
limitation “operable at temperatures from above 130-C to 200-C” in claim 1
(Appeal Br. 19). According to the Appellants (Reply Br. 14), “Braad
nowhere recognizes that flexible pipe with the inner lining Applicants]
claim[] is operable at temperatures higher than 18 (PC' (emphasis added).
Thus, it appears to be the Appellants’ position that obviousness is not
established unless the prior art discloses or suggests operability at all
temperatures between 130-C to 200-C.
We find no merit in the Appellants’ argument. The broadest
reasonable interpretation of the disputed limitation includes any
temperatures within the claimed range, including temperatures ranging
anywhere between 130-C to 180-C, as disclosed in Braad (Braad 4,11. IS­
IS). Atlas Powder Co. v. IRECOInc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(“[W]hen a patent claims a chemical composition in terms of ranges of
elements, any single prior art reference that falls within each of the ranges
anticipates the claim.”) (citing Titanium Metals Corp. v. Banner, 778 F.2d
775, 781 (Fed. Cir. 1985)). See also Titanium Metals, 778 F.2d at 782 (“It is
also an elementary principle of patent law that when, as by a recitation of
ranges or otherwise, a claim covers several compositions, the claim is
‘anticipated’ if one of them is in the prior art.”).
To construe the disputed limitation “operable at temperatures from
above 130-C to 200-C” in light of the Specification disclosure (Spec. 2,1.
18—3,1. 25; 11,11. 12—14) to require operability at all temperatures within the
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Application 13/639,765
claimed range including 200-C would render the limitation “from above
130-C” (the recited minimum temperature) to be meaningless or superfluous.
See, e.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950—51 (Fed. Cir.
2006) (refusing to construe claim terms in a way that made other limitations
meaningless).
The Appellants argue that Braad teaches that “any polymer selected
from the broad grouping Braad presents at pages 4—5 must be chemically or
physically bonded to any polymer forming the film layer selected from the
same large group Braad presents at page 6 in order to prevent swelling,
blistering, and microfoaming” whereas, in the claimed invention, “strong
bonding or layer adhesion between the layers ‘is not a vital requirement for
operation’” (Appeal Br. 18). The Appellants do not direct us to sufficient
evidence that Braad requires such strong bonding. To the contrary, Braad
teaches “flexible unbonded pipe” and provides the same definition for
“unbonded” as in the current Specification (Braad 1,11. 5—6, 25—27; Spec. 1,
11. 22-24).
Regarding claims 6, 7, and 16, the Appellants argue (Appeal Br. 21):
The Examiner does not explain why persons having ordinary
skill in the art would pick and choose either a polyarylene ether
ketone having the structure of Claim 16 or a semi-aromatic
polyamide having a melting point of at least 270°C of Claim 6 or
at least 280°C of Claim 7 for polymer a) of the three-layer a/b/a
structure claimed.
In addition, the Appellants assert that “Topoulos appears to be non-
analogous art” {id.). Also, to the extent that the argument is applicable to
obviousness, the Appellants offer similarly skeletal arguments against claims
8-11 {id. at 21-22).
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Application 13/639,765
These skeletal arguments fail to identify a reversible error in the
Examiner’s rejection (Ans. 3, 7—8; Final Act. 3—4). The Appellants fail to
provide any basis for us to review why the Examiner’s findings and analyses
are fatally flawed or why Topoulos is believed to be non-analogous art. See
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); In reLovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011).
For these reasons, we uphold the Examiner’s obviousness rejections.
SUMMARY
The rejection under 35 U.S.C. § 102(b) of claims 1, 4, 5, 8—15, and
17—20 as anticipated by Braad is reversed.
The rejection under 35 U.S.C. § 103(a) of claims 1, 4, 5, 8—15, and
17—20 as obvious over Braad is affirmed.
The rejection under 35 U.S.C. § 103(a) of claim 16 as unpatentable
over Braad is affirmed.
The rejection under 35 U.S.C. § 103(a) of claims 6 and 7 as
unpatentable over Braad in view of Topoulos is affirmed.
Therefore, the Examiner’s final decision to reject claims 1 and 4—20 is
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)(1).
AFFIRMED
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