Ex Parte McEwan

Board of Patent Appeals and Interferences

May 26, 2010

10275742 (B.P.A.I. May. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IAN KENNETH MCEWAN
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Appeal 2009-005554
Application 10/275,742
Technology Center 3600
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Decided: 27 May 2010
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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

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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.
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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.
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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.
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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.
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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
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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
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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.
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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.
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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
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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

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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.

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