Ex Parte Lundman

Patent Trial and Appeal Board

Sep 27, 2016

12789682 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121789,682 05/28/2010
23409 7590 09/29/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Philip L. Lundman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
062021-9019-01 9080
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP L. LUNDMAN
Appeal2014-008178
Application 12/789,682
Technology Center 3600
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
MARK A. GEIER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip L. Lundman (Appellant) 1 seeks our review under 35 U.S.C.
§ 134 of the Examiner's decision, 2 rejecting claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Claims 1, 14, and 23 are independent and are reproduced below to
illustrate the claimed subject matter, with disputed limitations emphasized.
1 According to Appellant, the real party in interest is Philip L. Lundman, the
inventor. Appeal Br. 2.
2 Appeal is taken from the Non-Final Office Action (mailed September 5,
2013, "Non-Final Act.").
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1. A tunnel seal comprising:
a body inflatable from a folded position to an inflated
position;
a plurality of positioning straps coupled to the body;
an inflow port fluidly connected to the body to allow fluid
to flow into the body, the inflow port being covered by a portion
of the body when the body is in the folded position;
a pressure relief valve fluidly connected to the body; and
a hot stab receptacle fluidly connected to the inflow port,
the hot stab receptacle being accessible when the body is in the
folded position to provide fluid to the inflow port.
14. A tunnel seal comprising:
a body having a first end and a second end, the body being
inflatable from a folded position to an inflated position, the body
comprising an inner bladder and an outer cover;
a plurality of positioning straps coupled to the body, at
least one of the plurality of straps extending to an end past the
first end of the body, the plurality of positioning straps being
configured to facilitate hoisting and dragging the body;
an inflow port fluidly connected to the inner bladder;
a pressure relief valve fluidly connected to the inner
bladder;
and a hot stab receptacle fluidly connected to the inflow
port.
23. A tunnel seal comprising:
a body being inflatable from a folded position to an
inflated position;
an inflow port fluidly connected to the body;
a pressure relief valve fluidly connected to the body;
a hot stab receptacle fluidly connected to the inflow port;
a strap assembly including a plurality of cinch straps that
are wrapped around the body to maintain the body in the folded
position; and
a release mechanism coupled to the strap assembly, the
release mechanism being operable to cause the plurality of cinch
straps to release the body to allow the body to inflate to the
inflated position.
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Application 12/789,682
REJECTIONS
The following Examiner's rejections are before us for review.
1. Claims 1, 2, 4, 11, 12, and 14--17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Barton (US 4,995,761, iss. Feb. 26, 1991),
Lundman (US 6,959,734 B2, iss. Nov. 1, 2005), and Young (US 6,463,801
B 1, iss. Oct. 15, 2002).
2. Claims 8, 9, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barton, Lundman, Young, and Davis (US 3,960, 193, iss.
June 1, 1976).
3. Claims 5-7, 19, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barton, Lundman, Young, and Courtney (US 7,056,179
B2, iss. June 6, 2008).
4. Claims 3, 13, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barton, Lundman, Young, and Van der Lans (US
4,079,755, iss. Mar. 21, 1978).
5. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Barton, Lundman, Young, and Tedesco (US 2008/0040938 Al, pub. Feb.
21, 2008).
6. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barton, Lundman, Young, and Gotz (US 6,913,301 B2,
iss. July 5, 2005).
7. Claims 24--26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barton, Lundman, Young, Courtney, and Boujon (US
7 ,063,582 B2, iss. June 20, 2006).
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ANALYSIS
First Ground of Rejection: Obviousness of Claims 1, 2, 4, 11, 12, and
14-17 over Barton, Lundman, and Young
Appellant presents separate arguments for independent claims 1 and
14. See Appeal Br. 6-9; see also Reply Br. 2-3. We select claim 1 as the
representative claim for claims 1, 2, 4, 11, and 12, and claim 14 as the
representative claim for claims 14--17. See 37 C.F.R. 41.37(c)(l)(iv).
Claim 1
In rejecting claim 1, the Examiner finds that "Barton discloses an
inflatable body (52) with an inflow port (54) and a pressure relief valve."
Non-Final Act. 3 (citing Barton, col. 5, 11. 35-37). The Examiner also finds
that Barton discloses that "[a Jn air inlet (71) is connected to the inflow port
(54) [and that] body [52] is capable of being folded to cover the inflow port
[54 while leaving] the inflow port accessible." Id. The Examiner finds that
Young discloses "a hot stab to transfer fluid between two systems (col. 6,
lines 42-52)," and reasons that "[i]t would have been obvious ... to modify
the inflow port of the Barton-Lundman '734 combination to utilize the hot
stab receptacle of Young as described in the claim as applying a known
technique of fluid transfer to a known inflatable device to yield predictable
results." Id.
In response, Appellant first recites portions of claim 1 and contends
that "Barton and Lundman are silent regarding how (if at all) their plugs are
folded and how such folding would affect the inflow ports of the plugs,"
while "Young is not even directed to inflatable plugs." Appeal Br. 6, 7.
Appellant also contends that even if "the apparatus 50 of Barton was
modified to include the hot stab 226 of Young ... there is no teaching or
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suggestion in Barton or Young that the hot stab would be arranged on the
apparatus 50 in a manner so that when the [body 52] is folded and covers the
air inlet 71, [that] the hot stab would remain accessible." Id. at 7. Appellant
also contends that "[t]he inflow port is arranged so it is covered when the
body is in the folded position," and "[t]he hot stab receptacle is arranged so
it is still accessible when the inflow port is covered." Reply Br. 2.
However, as the Examiner points out, "[t]he seal is not claimed in the
folded or unfolded state; [but] is merely claimed to be capable of being in
those two states," and "[a]s such, a deflated seal of Barton or Lundman
would be in a 'folded' state per the binary states of the language." Ans. 3.
Thus we agree with the Examiner that "[t]he folding language of claim 1 is
functional language that does not offer any additional structure to the
claimed apparatus." Id.
It is well established that "[a Jn intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates." Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). Thus, reciting an "inflow port being covered by a portion
of the body when the body is in the folded positon" and a "hot stab
receptacle being accessible when the body is in the folded position" does no
more than define a possible use of the claimed tunnel seal. Such statements
of use or purpose do not make a claim to a known structure patentable. See
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Holding that the
appellants' contention that the claimed structure will be used in a way not
taught by the prior art reference does not have patentable weight if the
structure is already known.). "Claims drawn to an apparatus must
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distinguish from the prior art in terms of structure rather than function." In
re Danly, 263 F.2d 844, 848 (CCPA 1959). This is a corollary to the maxim
that "the recitation of a new intended use for an old product does not make a
claim to that old product patentable." Schreiber, 128 F.3d at 1477.
Accordingly, Appellant does not apprise us of Examiner error with its
arguments regarding the purported failings of the prior art with respect to the
recited "inflow port being covered by a portion of the body when the body is
in the folded positon" and a "hot stab receptacle being accessible when the
body is in the folded position."
Appellant next contends that "even though Young discloses the hot
stab 226, combining the teachings of Young with the teachings of Barton is
based on improper hindsight." Appeal Br. 7. Appellant argues that "Barton
relates to inflatable plugs for repairing ruptures in underground conduits,"
while "[i]n contrast, Young relates to systems for taking measurements and
samples from the sea floor," that "[a] person of ordinary skill in the art
would not look to Young when modifying the inflatable plug of Barton
because the two disclosures are in such unrelated fields." Id.
However, Appellant does not identify any knowledge relied upon by
the Exarniner that was gleaned only from Appellant's disclosure and that
was not otherwise within the level of ordinary skill at the time of the
invention, thereby obviating Appellant's assertion of hindsight. See Jn re
kfcLaughlin, 443 F. 2d 1392 (CCPA 1971). Further, to the extent that
Appellant is arguing the Barton and Young are not analogous art, "Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
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the reference still is reasonably pertinent to the particular problem with
which the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir.
2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed.Cir.1986); In re Wood,
599 F.2d 1032, 1036 (CCPA 1979)). Appellant does not explain why
Barton and Young are not in the same field of endeavor as the instant
invention or why they are not reasonably pertinent to the particular problem
with which the inventor is involved. Thus, Appellant does not apprise us of
error.
Appellant also contends that "[t]he Examiner has not provided any
reasons for why a person of ordinary skill in the art would want to modify
the inflatable plug of Barton or why that person would decide to look to
Young." Id; see also Reply Br. 2 (where Appellant further asserts that "the
Examiner has provided no evidence that these types of connectors ... would
be beneficial for use with inflatable plugs.").
However, the Examiner articulates reason for the proposed
modification stating that "Appellant is dealing with the problem of
transferring a fluid from a source to the tunnel seal," that "[t]ransferring
hydraulic fluid [as in Young] reasonably pertains to such a problem," and
that "[a]s a known method of fluid transfer, the deep sea hot stab receptacle
of Young would be an obvious choice to consider for improving the fluid
transfer of the claimed apparatus." Ans. 4. Thus, Appellant has not apprised
us error in the Examiner's articulated reasoning.
In view of the foregoing, we sustain the Examiner's unpatentability
rejection of claim 1 and claims 2, 4, 11, and 12, which depend from claim 1.
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Claim 14-17
We are persuaded by Appellant's arguments that the Examiner fails to
establish a prima facie showing of obviousness in rejecting claims 14--17
over Barton, Lundman, and Young. See Appeal Br. 8-9; see also Reply Br.
3.
In rejecting claim 14, the Examiner finds that Barton discloses, inter
alia, "an inner bladder (52) and a flexible sleeve (72) serving as an outer
cover," and looks to Lundman for disclosing "a pipeline plug ... positioned
by a harness (26) of interconnected straps," reasoning that "[i]t would have
been obvious ... to modify the bladder of Barton to use the straps of
Lundman '734 as described in the claims as an alternative manner of placing
the bladder." Non-Final Act. 4.
In response, Appellant points out that claim 14 "specifies 'at least one
of the plurality of straps extending to an end past the first end of the body,"'
while "Lundman does not disclose that any of the interconnected strips of
the harness 26 extend to an end past an end of the inflatable member 18," as
"the strips in the harness 26 all form closed loops [that] do not have ends."
Appeal Br. 8-9.
The key to supporting any rejection under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
"rejections on obviousness grounds cannot be sustained with mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418.
In the Answer, the Examiner offers several alternatives for modifying
the straps of Lundman to be connected to the body and extend to an end past
the first end of the body so that the straps "can be used to facilitate hoisting
and dragging the body." Ans. 5. However, we agree with Appellant that
"[t]he term 'end' is defined at Dictionary.com as 'the last part or extremity,
lengthwise, of anything longer than it is wide or broad,"' and that "[ c ]losed
loops (such as the interconnected harness strips of Lundman) simply do not
have ends within any meaningful definition of the term." Reply Br. 3.
Accordingly, we agree with Appellant that, based on the evidence before us,
the Examiner has not demonstrated that the claimed subject matter would
have been obvious to one having ordinary skill in the art.
For the foregoing reasons, we do not sustain the rejection of claims
14--17 as unpatentable over Barton, Lundman, and Young.
Third Ground of Rejection: Obviousness of Claims 5-7, 19, and 2 3
over Barton, Lundman, Young, and Courtney
Claim 23.
In rejecting claim 23, the Examiner finds that Barton discloses, inter
alia, "an inflatable body (52)," but does not disclose
a strap assembly including a plurality of cinch straps that are
wrapped around the body to maintain the body in the folded
position or a release mechanism coupled to the strap assembly,
the release mechanism being operable to cause the plurality of
cinch straps to release the body to allow the body to inflate to the
inflated position.
Non-Final Act. 6.
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However, the Examiner looks to Lundman for disclosing "a harness
(26) of interconnected straps," and determines that "[i]t would have been
obvious ... to modify the bladder of Barton to use the straps of Lundman
'734 as described in the claims as an alternative manner of restricting the
bladder." Id.
The Examiner also looks to Courtney for disclosing a strap system
with "chest straps (12) attached to the air bladder (1) via an external flange
(2) [where the] strap system also has a quick release buckle (15) to assure
the body can be adjusted as it inflates," reasoning that "[i]t would have been
obvious ... to modify the straps of the Barton-Lundman '734-Young
combination to use the strap and release mechanism of Courtney as
described in the claims to create a manner of controlling the inflation of the
bladder." Non-Final Act. 6.
Appellant first points out that "[ t ]he harness 26 [of Lundman] is
simply a plurality of interconnected strips that wrap around the inflatable
member 18 to limit inflation of the member 18," while "Courtney
discloses a bladder 1 and a personal flotation device (PFD) 4 with a chest
strap 12 and a buckle 15." Appeal Br. 10. Appellant then contends that
"harness 26 [of Lundman] does not need to include a mechanism that helps
change the size of the harness 26 or releases the harness 26 from the
inflatable member 18," and that "[a] person of ordinary skill in the art,
therefore, would not look to modify the harness 26 of Lundman to include
the buckle 15 of Courtney or any other release mechanism." Id. at 11.
Appellant also contends that "[ t ]he Examiner has provided no
reasonable rationale as to why a person of ordinary skill in the art would use
the strap of Courtney to maintain the inflatable plug of Barton or Lundman
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in a folded position when the strap of Courtney does not even maintain the
PFD for which it's designed in a folded position." Reply Br. 4.
However we agree with the Examiner's findings that "the cinch straps
[of Lundman] are being used to ensure that the straps properly fit around the
folded body," and "[a]s such, the straps of Courtney would be used in a
similar manner to control the interaction between the straps and the body."
Ans. 6. Also consistent with the Examiner's findings is the disclosure in
Lundman that ""[a]s illustrated in FIGS. 1, 5, and 6, the harness 26 includes
a structure having a plurality of interconnected strips. In other embodiments,
the structure of the harness 26 may vary. The structure surrounds the
inflatable member 18 and provides support thereto. The harness 26 limits the
extent of inflation of the inflatable member 18. Limiting the extent of
inflation controls the size and shape of the inflatable member 18 as it is
inflated in the pipeline 14." See Lundman, col. 4, 11. 34--41.
Appellant also argues that "[ c ]ombining the teachings of Courtney
with Barton or Lundman is also based on impermissible hindsight." Appeal
Br. 1 O; Reply Br. 4. However, Appellant again does not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention, thereby obviating Appellant's
assertion of hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
For the foregoing reasons, we sustain the rejection of claim 23 as
unpatentable over Barton, Lundman, Young, and Courtney.
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Claims 5-7
Appellant does not separately argue the rejection of claims 5-7, which
depend from claim 1. See Appeal Br. 13-14 and Reply Br. 2-3. Therefore,
for the reasons above in sustaining the rejection of claim 1 over Barton,
Lundman, and Young, we sustain the rejection of claims 5-7 over Barton,
Lundman, Young, and Courtney.
Claim 19
Regarding dependent claim 19, the Examiner's rejection is based on
the same unsupported findings discussed above with respect to the
disclosure of Barton, Lundman, and Young. See Final Act. 6. The addition
of Courtney does not remedy the deficiencies of Barton, Lundman, and
Young, as discussed supra, regarding claim 14.
Accordingly, for similar reasons as discussed above for claim 14, we
do not sustain the Examiner's decision rejecting claim 19 over Barton,
Lundman, Young, and Courtney.
Second, Fourth, Fifth, Sixth, and Seventh Grounds of Rejection:
Obviousness of Claims 8, 9, and 20 over Barton, Lundman, Young, and
Davis; of Claims 3, 13, and 18 over Barton, Lundman, Young, and Van der
Lans; of Claim 10 over Barton, Lundman, Young, and Tedesco; of Claims
21and22 over Barton, Lundman, Young, and Gatz; and of Claims 24-26
over Barton, Lundman, Young, Courtney, and Boujon.
Claims 3, 8-10, and 13
Appellant does not present separate arguments for the patentability of
claims 3, 8-10, and 13, which depend directly from claim 1. See Appeal Br.
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13-14 and Reply Br. 2-3. Accordingly, we sustain the rejections of claims
3, 8-10, and 13 over the cited references, for the same reasons stated above
with respect to the rejection of claim 1 over Barton, Lundman, and Young.
Claims 18 and 20-22
Regarding the claims 18 and 20-22, each of the Examiner's rejections
is based on the same unsupported findings discussed above with respect to
the disclosure of Barton, Lundman, and Young. See Non-Final Act. 5, 6,
and 8. The addition of Davis, Van der Lans, or Gotz does not remedy the
deficiencies of Barton, Lundman, and Young, as discussed supra, regarding
claim 14.
Accordingly, for similar reasons as discussed above for claim 14, we
do not sustain the Examiner's decisions rejecting claims 18 and 20-22 over
the cited references.
Claims 24-26
Appellant does not present separate arguments for the patentability of
claims 24--26, which depend from claim 23. See Appeal Br. 11 and Reply
Br. 4. Accordingly, we sustain the rejections of claims 24--26 over the cited
references, for the same reasons stated above with respect to the rejection of
claim 23 over Barton, Lundman, Young, and Courtney.
DECISION
We affirm the Examiner's rejections of claims 1-13 and 23-26.
We reverse the Examiner's rejections of claims 14--22.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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