Ex Parte McEwanDownload PDFBoard of Patent Appeals and InterferencesMay 26, 201010275742 (B.P.A.I. May. 26, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte IAN KENNETH MCEWAN ____________ Appeal 2009-005554 Application 10/275,742 Technology Center 3600 ____________ Decided: 27 May 2010 ____________ Before JAMESON LEE, SALLY C. MEDLEY and MICHAEL P. TIERNEY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MEDLEY. Opinion Concurring filed by Administrative Patent Judge LEE. MEDLEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-005554 Application 10/275,742 2 STATEMENT OF THE CASE Aberdeen University (“Aberdeen”), the real party in interest, seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 23-29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. BACKGROUND Aberdeen’s invention is directed to controlling fluid leakage from a duct by introducing a plurality of individual membrane sealing elements into the duct. Claim 24 is illustrative: Apparatus for controlling leakage of fluid from a duct along which said fluid is constrained to flow, said apparatus comprising a plurality of individual membrane sealing elements for introduction into the duct, and capable of being carried along the duct by the flow of said fluid, wherein, at the locality of a leak, at least one of said sealing elements is capable of being captured by a pressure differential associated with the leak and thereby drawn to and held in position at the leak for stemming or sealing the leak. The Examiner relies on the following prior art references: Catallo 5,680,885 Oct. 28, 1997 Wörle GB 1,101,870 Jan. 31, 1968 Aberdeen appeals the following rejections: 1. Claims 23-28 under 35 U.S.C. § 102(b) as anticipated by Wörle. 2. Claims 23-29 under 35 U.S.C. § 102(b) as anticipated by Catallo. Appeal 2009-005554 Application 10/275,742 3 ISSUES 1. Has Aberdeen shown that the Examiner incorrectly found that Wörle describes a plurality of individual “membrane sealing elements”? 2. Has Aberdeen shown that the Examiner incorrectly found that Wörle and Catallo each describe that at least one of the sealing elements is capable of being captured at the leak by a pressure differential associated with the leak? FACTUAL FINDINGS 1. A membrane is defined as: a thin soft pliable sheet or layer especially of animal or plant origin. Merriam-Webster Online Dictionary, available at http://www.merriam-webster.com/dictionary/membrane (last visited Apr. 06, 2010). Wörle 2. Wörle describes a sealing element (not illustrated) comprising a body of soft resilient material which may be in the form of a hollow sphere, the wall of which is constituted by a resilient inner layer and a plastic outer layer. P. 1, ll. 22-31; p. 2, ll. 66-71; claim 1. 3. Sealing elements of progressively increasing size may be successively introduced into a damaged pipe section until an aperture or crack is fully sealed. P. 1, ll. 59-64. 4. Sealing elements of different sizes may be introduced simultaneously into the pipe section. P. 1, ll. 65-67. 5. In consequence of the flow of fluid escaping through the aperture, the sealing elements are conveyed to the site of the aperture where they come firmly to rest. P. 1, ll. 68-71. Appeal 2009-005554 Application 10/275,742 4 6. Wörle describes, referring to Wörle’s figures 3-5 reproduced below [numbers from figures 3-5 inserted], additional embodiments in which the sealing elements [1], [4], [10] are penetrated by a bunch of fibres [2]; [5], [6], [7]; [11], [12] to form a tail [3], [9], [13]. P. 2, ll. 84-104. Wörle’s figures 3-5 are below Figures 3-5 depict sealing elements with fibre tails. 7. The fibres cause the sealing element to more easily follow the flow caused by the fluid escaping from the leak (i.e., the fluid flow due to the pressure differential). P. 2, ll. 11-15. Catallo 8. Catallo describes, referring to Catallo’s figure 2 reproduced below [numbers from figure 2 inserted], a lining hose [4] that is pulled by a rope [5] to an interior section of pipe conduit [1] that has a plurality of cracks or fissures [3]. Col. 3, l. 63-col. 4, l. 9. Appeal 2009-005554 Application 10/275,742 5 Catallo’s figure 2 is below: Figure 2 depicts a pipe conduit section. 9. A calibration hose [12] is introduced into the interior of the lining hose [4] and expanded by water pressure causing the lining hose [4] to become expanded, shaped and pressed against the internal surface of the pipe conduit [1]. Col. 4, ll. 51-65; col. 5, ll. 21-42. ANALYSIS Claim Interpretation An issue before us is the meaning of “membrane sealing elements” found in both independent claim 23 and independent claim 24. Aberdeen argues that the Examiner attributes an unreasonably broad meaning to the term “membrane” that is inconsistent with the Examiner’s earlier restriction requirement and Aberdeen’s specification. App. Br. 5-6, 9; Reply Br. 2-3. We first address the “restriction requirement” argument. Aberdeen argues that based on the Examiner’s earlier restriction requirement, the limitation “membrane sealing elements” should be narrowly interpreted to mean only a two-dimensional membrane structure as disclosed in its figures 3a, 3b and 4 and not a three-dimensional membrane structure such as disclosed in its figure 1. App. Br. 5, 9; Reply Br. 2-3; citing Office Action mailed 16 Jun. 2005 and Office Action mailed 23 Jan. 2006. Appeal 2009-005554 Application 10/275,742 6 It appears to us that Aberdeen is challenging the propriety and rationale of the restriction requirement. However, restriction requirements are not subject to review in an appeal, but rather are subject to review by petition to the Director. 37 C.F.R. § 1.144. For that reason alone, we need not engage in whether the Examiner’s restriction requirements were reasonable. In any event, Aberdeen’s argument that the Examiner’s rationale regarding the restriction requirement somehow narrows the meaning of “membrane sealing elements” to a two-dimensional membrane structure to the exclusion of a three-dimensional membrane structure is misplaced. When the restriction requirement and election of species were made, the claims did not include “membrane sealing elements”, but rather recited “sheet sealing elements”. Office Action mailed 16 Jun. 2005; Response filed 18 Jul. 2005. To the extent that the Examiner interpreted “sheet sealing elements” narrowly to preclude three-dimensional structures is of no moment. The claims before us are different and Aberdeen does not sufficiently explain why the Examiner’s actions or rationale with respect to claims with “sheet sealing elements” have any bearing on claims with “membrane sealing elements.” We will not try to guess what Aberdeen has in mind in that regard. For all of these reasons, Aberdeen’s argument that the independent claims 23 and 24 should be narrowly interpreted due to the restriction requirement is unpersuasive. Aberdeen also argues that the Examiner attributes an unreasonably broad meaning to the term “membrane sealing elements” that is inconsistent with Aberdeen’s Specification. App. Br. 5, 9. More specifically, Aberdeen Appeal 2009-005554 Application 10/275,742 7 argues that the term “membrane sealing elements” means a two-dimensional structure and not a three-dimensional structure. App. Br. 3, 8. Aberdeen’s argument that the independent claims do not include three-dimensional structures is unpersuasive. To the extent that Aberdeen urges us to interpret the term “membrane sealing element” as a two- dimensional structure based on one embodiment in its Specification, to the exclusion of another of its embodiments, we decline to do so. Claim terms should not be narrowly interpreted to exclude one of the preferred embodiments. Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841, 845 (Fed. Cir. 2006). Instead, the broadest reasonable meaning is applied to claim terms according to their ordinary usage as they would be understood by persons of ordinary skill in the art while accounting for definitions found in the written description. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, Aberdeen does not direct us to, and we can not find an explicit definition in the Specification for “membrane” or “membrane sealing elements”. Aberdeen’s Original Specification only uses the word membrane twice when describing that the sealing elements disclosed in figures 1 and 3a include a membrane. Orig. Spec. (filed 08 Nov. 2002) p. 13, ll. 1-6; p. 15, ll. 22-27. We note that Aberdeen’s Specification regarding the “membrane sealing element” of figure 1 describes a membrane sealing element of three- dimensional shape. Orig. Spec. (filed 08 Nov. 2002) p. 13, ll. 1-6. Aberdeen’s Substitute Specification adds additional disclosure of the membrane sealing elements, but still does not provide an explicit definition for a membrane or membrane sealing element. Sub. Spec. (filed 27 Jul. 2006) ¶¶ 0008-0010, 0012. Based on the dictionary definition, one with Appeal 2009-005554 Application 10/275,742 8 ordinary skill in the art would understand that “membrane” ordinarily means a thin soft pliable sheet or layer. Thus, the broadest reasonable meaning of a “membrane sealing element” must include a thin soft pliable sheet or layer, but that sheet or layer is not precluded from taking on a three-dimensional shape. The broadest reasonable meaning is consistent with Aberdeen’s Specification which discloses sealing elements that include a thin soft pliable sheet or layer of two-dimensional or three-dimensional shape. Figs. 1, 2, 3a, 3b, 4. For all of these reasons, “membrane sealing elements” are not limited to a two-dimensional structure. Anticipation of claims 23-27 by Wörle Wörle, the applied prior art, describes a hollow body sealing element including a wall constituted by a resilient inner layer (i.e., membrane) and a plastic outer layer (i.e., membrane). P. 1, ll. 22-31; p. 2, ll. 66-71; claim 1. Aberdeen argues that instead of describing a membrane or sheet, e.g., a two- dimensional structure, Wörle describes sealing elements comprising a spherical or conical body of soft resilient material. App. Br. 6-9, citing Wörle p. 1, ll. 25-31, 34-41, 44-51, 55-56; p. 2, ll. 41-45; figs. 3-5. Aberdeen argues that there is no suggestion that Wörle’s sealing elements have anything but a three-dimensional form. App Br. 7. Aberdeen’s arguments are unpersuasive because, as explained before, the claim scope is not limited to a two-dimensional membrane sealing element, nor does it preclude a three-dimensional membrane sealing element. Wörle describes a membrane sealing element including at least two membranes, since Wörle describes a hollow body sealing element including a wall constituted by a resilient inner layer and a plastic outer layer. P. 1, ll. 22-31; p. 2, ll. 66-71; claim 1. Appeal 2009-005554 Application 10/275,742 9 Aberdeen further argues that Wörle’s sealing elements are not described as being capable of being captured at the leak by a pressure differential associated with the leak. App. Br. 9-10. Aberdeen’s arguments are misplaced because Wörle does indeed describe the disputed claim limitations. Specifically, Wörle describes successively or simultaneously introducing sealing elements of different sizes into the pipe section, where the sealing elements are conveyed to the site of the aperture and come firmly to rest as a consequence of the flow of fluid escaping through the piping aperture (i.e., the fluid flow due to the pressure differential). P. 1, ll. 59-71. For all these reasons, we sustain the rejection of claims 23-27 as anticipated by Wörle. Anticipation of claim 28 by Wörle Claim 28 is dependent on claim 24 and further recites “the membrane sealing elements support a medium capable of adhering strongly to the duct when forced into contact therewith . . . .” The Examiner finds that Wörle describes membrane sealing elements that support a medium in the form of fibers [3], [9] that are capable of adhering strongly to the duct. Ans. 3, citing Wörle p. 2, ll. 4-48. In explaining the limitations of claim 28, Aberdeen utilizes the bonding agent recited in claim 29 as an example of “a medium”. App. Br. 13. Aberdeen argues that Wörle does not describe membrane sealing elements that adhere to the duct but instead describes rubber-like hollow spheres that deform when pressed against the fracture site. App. Br. 13, citing Wörle fig. 2; p. 2, ll. 75-80. Based on the explanation and argument, we understand Aberdeen as arguing that Wörle does not describe membrane sealing elements that support a medium in the form of a bonding agent. Appeal 2009-005554 Application 10/275,742 10 Aberdeen’s arguments are not commensurate in scope with the claim limitations since claim 28 does not recite a bonding agent. Aberdeen does not otherwise cogently explain why the fibers [3], [9] of Wörle’s membrane sealing elements do not constitute a medium supported by the membrane sealing elements which is capable of adhering strongly to the duct. For all these reasons, we sustain the rejection of claim 28 as anticipated by Wörle. Anticipation of claims 23-29 by Catallo The Examiner identifies Catallo’s lining hose [4] and calibration hose [12] as corresponding to the claimed plurality of individual membrane sealing elements. Ans. 4. Aberdeen argues that Catallo does not describe that at the location of the leak at least one sealing element is capable of being captured by the pressure differential associated with the leak as required by independent claims 23 and 24. App. Br. 11-12. Aberdeen argues that instead Catallo describes a multi-layer lining hose [4] that is pulled to the known leak location and expanded to conform against the internal diameter of the pipe by pumping fluid into a calibration hose [12] and then cured to form a rigid self supporting liner. App. Br. 11-12. We agree with Aberdeen’s characterization of Catallo. The Examiner does not direct us to, and we can not find, where Catallo describes that either the lining hose [4] or calibration hose [12] are capable of being captured at the leak by a pressure differential associated with the leak. On the contrary, Catallo describes that the lining hose [4] is pulled by a rope [5] to the section of pipe conduit [1] having a plurality of cracks or fissures [3]. Col. 3, l. 63- col. 4, l. 9. Catallo further describes that the calibration hose [12] is introduced into the interior of the lining hose [4] and expanded by water Appeal 2009-005554 Application 10/275,742 11 pressure causing the lining hose [4] to become expanded, shaped and pressed against the internal surface of the pipe conduit [1]. Col. 4, ll. 51-65; col. 5, ll. 21-42; fig. 2. For all these reasons, we do not sustain the rejection of claims 23-29 as anticipated by Catallo. DECISION We AFFIRM the rejection of claims 23-28 under 35 U.S.C. § 102(b) as anticipated by Wörle. We REVERSE the rejection of claims 23-29 under 35 U.S.C. § 102(b) as anticipated by Catallo TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED-IN-PART Appeal 2009-005554 Application 10/275,742 12 LEE, Administrative Patent Judge. Concurring. I differ with the majority on how to interpret the claim recitation of “membrane sealing element” which is capable of being captured by a pressure differential associated with a leak in a duct, and which is thereby drawn to the leak and held in position to seal the leak. As described in the specification, the disclosed membrane is either attached to floats (Spec. 15:30-31) or otherwise formed into a frustoconical shape with open ends and capable of being filled with fluid in the duct (Spec. 13:2-6). A generic membrane itself, without more, is incapable of performing the recited function. Because the claim recitation does not include sufficient structure to perform the stated function, the recited feature should be regarded as a means-plus-function element under 35 U.S.C. § 112, sixth paragraph. LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006); Ex parte Rodriguez, 92 U.S.P.Q.2d 1395, 1401 (Bd. Pat. App. & Int. 2009)(Precedential). The corresponding structure disclosed in the specification includes the three dimensional embodiment of Figure 3(a). Accordingly, Aberdeen’s argument that the claimed membrane sealing element does not cover a three dimensional membrane structure is incorrect, but for reason different from that set forth by the majority. I agree with the majority on all other aspects of this opinion and decision. Appeal 2009-005554 Application 10/275,742 13 WOODCOCK WASHBURN LLP CIRA CENTRE, 12TH FLOOR 2929 ARCH STREET PHILADELPHIA, PA 19104-2891 Copy with citationCopy as parenthetical citation