Ex parte Lorek et al.

Board of Patent Appeals and Interferences

Nov 29, 1999

08381814 (B.P.A.I. Nov. 29, 1999)

Application for patent filed April 4, 1995. This1
application is a National stage application under 35 U.S.C. §
371 of PCT/FR94/00640 filed 06/01/94.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SERGE LOREK, OLIVIER DENIZART,
and DANIEL SIOUR
____________
Appeal No. 1997-4118
Application No. 08/381,8141
____________
HEARD: November 3, 1999
____________
Before MCCANDLISH, Senior Administrative Patent Judge, and
FRANKFORT, and MCQUADE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-4118
Application No. 08/381,814
2
This is a decision on appeal from the examiner's final
rejection of claims 9 through 11 and 13 through 17, which are
all of the claims remaining in the application. Claims 1
through 8 and 12 have been canceled.
Appellants’ invention relates to a tube or pipe for
feeding petrol (gasoline), in particular to motor vehicle
engines. On page 1 of the specification, appellants observe
that, at present, polyamide pipes are commonly employed for
transporting petrol in motor vehicles. However, the industry
has now determined that such polyamide pipes no longer meet
necessary permeability requirements, especially with the
increasing presence of methanol in petrol. When used to
transport these newer petrol formulations containing methanol,
the polyamide pipes are said to swell, resulting in a decrease
in the mechanical properties and undesirable dimensional
changes. In an effort to overcome these disadvantages
appellants have provided a five-layer polyamide-based petrol
supply pipe as reflected in claim 9 on appeal having an
intermediate layer of fluoropolymer. As indicated on page 4
of the specification, it has been found that
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such a pipe, consisting of a middle layer of
PVDF bonded by an adhesive bonding agent to two
outer and inner layer of polyamide makes it
possible to reduce the permeability by a factor
of at least 10 when compared with that of an
equivalent polyamide pipe, while maintaining the
other properties, such as the cold impact
strength, within the specification limits of the
motor vehicle manufacturers.
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In addition, it is noted on page 7 of the specification that
the pipe according to the invention is obtained in a known
manner
by coextrusion of the five components under
known extrusion conditions which are
appropriate to each of the thermoplastic
materials. Coextrusion of the five
components facilitates the extrusion of the
middle fluoropolymer layer, especially of
PVDF, which is relatively difficult when
this layer is not "sandwiched."
Appellants’ invention also relates to a method of making the
above described petrol supply pipe and to a method of using
such a petrol supply pipe for feeding petrol to an engine.
A copy of independent claims 9, 16 and 17, as found in
the Appendix to appellants’ brief, is attached to this
decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Hart et al. (Hart) 4,249,875 Feb. 10,
1981
Brunnhofer 5,076,329 Dec. 31,
1991
Kerschbaumer 5,219,003 Jun. 15,
1993
Nawrot et al. (Nawrot) 5,419,374 May 30,
1995
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Application No. 08/381,814
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(filed Feb. 25, 1993)
Claims 9, 10 and 15 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Brunnhofer in view
of Nawrot.

Appeal No. 1997-4118
Application No. 08/381,814
To the extent that claims 13 and 14 are dependent from2
claim 11, we understand this rejection to actually involve the
combination of Brunnhofer in view of Nawrot and Kerschbaumer
as applied to claim 11, taken further in view of Hart.
6
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Brunnhofer in view of Nawrot as applied to
claim 9 above, and further in view of Kerschbaumer.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Brunnhofer in view of Nawrot "as
applied to claims 9 and 11 above," and further in view of
Hart.2
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants
regarding the rejections, we make reference to the examiner's
answer (Paper No. 16, mailed May 21, 1997) for the reasoning
in support of the rejections, and to appellants’ brief (Paper
No. 15, filed April 21, 1997) and reply brief (Paper No. 18,
filed July 18, 1997) for the arguments thereagainst.

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Appeal No. 1997-4118
Application No. 08/381,814
8
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we have made the determinations
which follow.
In rejecting claims 9, 10 and 15 through 17 under 35
U.S.C. § 103 based on Brunnhofer and Nawrot, the examiner
recognizes that the polyamide-based, five layer, vehicle fuel
line hose seen in Brunnhofer differs from the petrol supply
tube defined in appellants’ independent claim 9 on appeal in
that Brunnhofer does not disclose the intermediate layer (2)
therein being a fluoropolymer and does not disclose adhesive
bonding layers (e.g., 3, 5) as being adhesive bonding agent
polymers or copolymers that contain carbonyl groups in their
polymer chains. To account for such differences, the examiner
looks to the patent to Nawrot for a polyamide-based gasoline
transport tube comprising an outer layer of polyamide and an
inner layer of fluoropolymer, wherein the inner layer and
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Application No. 08/381,814
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outer layer are bonded together by an adhesive bonding agent
polymer that contains
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carbonyl groups in its polymer chain. From these teachings
the examiner concludes that it would have been obvious to one
of ordinary skill in the art at the time the invention was
made to
substitute for the intermediate layer and
adhesives of Brunnhofer a layer of
polyvinylidene fluoride adhered to the
polyamides by a polymer having carbonyl groups
on its polymeric chain as suggested by Nawrot in
order to provide a polyamide based hose having a
barrier layer that exhibits characteristics of
increased resistance to permeability and an
adhesive to ensure a strong bond between the
fluoropolymer and polyamides, while preserving
the mechanical effects of the polyamide.
After our review of the combined teachings of Brunnhofer
and Nawrot, we must agree with appellants (brief, pages 9-15,
and reply brief, pages 3-11) that, at best, Nawrot’s teachings
would have suggested replacing the innermost polyamide layer
(4) in the fuel line hose of Brunnhofer with a layer of
polyvinylidene fluoride and the bonding layer (3) in
Brunnhofer with an adhesive bonding agent layer of polymers or
copolymers that contain carbonyl groups in their polymer
chains. Like appellants, we are of the view that Nawrot
"teaches away" from a fuel line hose like that claimed by
appellants and which would result from the combination of
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Application No. 08/381,814
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Brunnhofer and Nawrot as urged by the examiner. The five-
layered hose resulting from the examiner’s combination
of the applied references would have a layer of polyamide as
its
innermost layer and thus such layer would be in contact with
the
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gasoline-methanol formulation transported by the hose, a
situation which Nawrot clearly and unambiguously teaches is
undesirable.
While in retrospect, it may appear that one skilled in
the art could have used a layer of polyvinylidene fluoride and
bonding layers in the hose of Brunnhofer as urged by the
examiner to increase the hose’s resistance to permeability
(answer, page
7), we observe that, like appellants, we find no fair teaching
or suggestion in the references applied by the examiner for
such a combination. In this regard, like appellants, we note
that the mere fact that the prior art could be modified in the
manner urged by the examiner would not have made such
modification obvious unless the prior art suggested the
desirability of the modification. See In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). As we noted above, in our opinion the patents to
Brunnhofer and Nawrot not only fail to suggest any motivation
for, or the desirability of, the particular modifications
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espoused by the examiner, but actually teach away from such modifications.
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From our perspective, the examiner has relied upon
impermissible hindsight and used appellants’ claimed invention
as an instruction manual or "template" in an attempt to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious. This approach to a
determination of obviousness is improper and cannot be
sanctioned by this Board. See In re Gorman, 933 F.2d 982,
987, 18 USPQ2d 1885, 1888 (Fed Cir. 1991) and Interconnect
Planning Corp. v. Feil, 774 F.2d
1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985). Since the
teachings and suggestions found in Brunnhofer and Nawrot would
not have made the subject matter as a whole of independent
claims 9, 16 and 17 on appeal obvious to one of ordinary skill
in the art at the time of appellants’ invention, we must
refuse to sustain the examiner’s rejection of these claims,
and of dependent claims 10 and 15, under 35 U.S.C. § 103.
We have also reviewed the teachings of the patents to
Kerschbaumer and Hart relied upon be the examiner in
rejections of dependent claims 11, 13 and 14 under 35 U.S.C. §
103, however, we find nothing in these references which
supplies that which we have indicated above to be lacking in
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the basic combination of Brunnhofer and Nawrot. Accordingly,
the examiner’s rejections of claims 11, 13 and 14 under 35
U.S.C. § 103 are likewise not sustained.
In view of the foregoing, the examiner's decision
rejecting claims 9 through 11 and 13 through 17 of the present
application under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. MCCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/sld
Appeal No. 1997-4118
Application No. 08/381,814
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Pennie and Edmonds
1155 Avenue of the Americas
New York, NY 10036-2711
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Claims
9. A petrol supply tube comprising five concentric layers
wherein the innermost layer comprises polyamide, the outermost
layer comprises polyamide, the middle layer comprises
fluoropolymer, and two layers of adhesive bonding agent
polymers or copolymers that contain carbonyl groups in their
polymer chains are situated respectively between said middle
layer and said innermost and outermost layers.
16. A method of feeding petrol to an engine that
comprises causing said petrol to flow from a source of petrol
through a petrol feed pipe in accordance with any one of
claims 9 to 11 and into said engine.
17. A method of making a petrol supply tube in
accordance with any one of claims 9 to 11 which comprises
coextruding said inner, outer, middle, and two adhesive
layers.