Ex Parte Milhas

Patent Trial and Appeal Board

Dec 4, 2013

11496793 (P.T.A.B. Dec. 4, 2013)

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.
11/496,793 08/01/2006 Pierre Milhas 60,680-1043 5910
7590 12/05/2013
DYKEMA GOSSETT PLLC
39577 Woodward Avenue, Suite 300
Bloomfield Hills, MI 48304
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
12/05/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte PIERRE MILHAS
____________________

Appeal 2011-012660
Application 11/496,793
Technology Center 3700
____________________

Before: ANTON W. FETTING, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/496,793

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-11 and 13-17.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a pipe. Claim 1, reproduced below
and representative of the claims on appeal, is the only independent claim.
1. A pipe for transporting fuel, the pipe
comprising an inner tube and an outer tube that are
coaxial, with a space being maintained between
them by spacer means, wherein the outer tube
comprises an outer layer and an inner layer, the
inner layer being helically corrugated and free
relative to the inner tube so as to form the spacer
means.

THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1-3, 16, and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ripley (GB 2 303 574 A, pub. Feb. 26, 1997);
claims 1, 2, 14, 15, and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Milhas (US 2003/0012908 A1, pub. Jan. 16, 2003);
claims 1-3 and 15-17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Borge (US 3,967,650, iss. Jul. 6, 1976);
claims 1-3 and 15-17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Matthieu (US 3,698,440, iss. Oct. 17, 1972);

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed August
1, 2006), Appeal Brief (“App. Br.,” filed January 21, 2011), and Reply Brief
(“Reply Br.,” filed June 9, 2011), as well as the Examiner’s Answer (“Ans.,”
mailed April 13, 2011)
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claims 1-3, 16, and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Martin (US 2,798,510, iss. Jul. 9, 1957);
claims 1-3, 5, 7, 9, 14, 15, and 17 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Bond (US 3,240,234, iss. Mar. 15, 1966);
claims 5, 9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bond;
claims 1-11 and 13-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Youngs (US 5,865,216, iss. Feb. 2, 1999) in view of
Schoch (US 3,399,691, iss. Sep. 3, 1968);
claims 4 and 6 are rejected as unpatentable under 35 U.S.C. § 103(a)
over Ripley;
claims 4 and 6 are rejected as unpatentable under 35 U.S.C. § 103(a)
over Matthieu; and
claims 4 and 6 are rejected as unpatentable under 35 U.S.C. § 103(a)
over Bond.
ANALYSIS
We only consider the rejection of each of the claims as unpatentable
over the combination of Youngs and Schoch. Because we sustain this
rejection, and thus affirm the rejection of every claim, we do not find it
necessary to consider any of the other rejections.
With respect to independent claim 1, Appellant argues the
combination of Youngs and Schoch does not teach or suggest the claimed
limitation that the inner layer of the outer tube is corrugated (App Br. 18).
Specifically, Appellant argues:
However, the claims do require that a space is
maintained between a coaxial inner tube and an
outer tube, and that it is a helically corrugated
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inner layer of the outer tube that maintains such a
space between the inner tube and outer tube. In
contrast, any space maintained between a coaxial
inner tube and an outer tube in Youngs is not
maintained by a helically corrugated inner layer of
the outer tube. This is because any purported
corrugated layer (i.e., projections 40 appearing on
the purported inner layer of the purported outer
tube) extend toward the outer layer 14 of the outer
tube, and at most, provide a space between various
layers of the outer tube and not between the inner
tube and outer tube as specifically recited in the
claims.

(Id.) (emphasis added). Restated, contrary to the Examiner’s statement in
the rejection that Youngs’ layer 44 with projections 40 teaches the inner
layer of the outer tube as required by claim 1 (Ans. 6), Appellant implies
that some other unidentified layer with a smaller diameter than layer 44 is
the claimed inner layer, and thus layer 44 is instead within the outer tube.
Appellant’s argument is not persuasive. Appellant does not identify
anywhere in the Specification or claims that requires some other layer of
Youngs, rather than layer 44, to teach the claimed inner layer of the outer
tube. Appellant also does not submit any evidence, such as a Declaration,
that requires we interpret Youngs as Appellant argues. Thus, the Examiner’s
interpretation of what Youngs teaches is reasonable, and therefore we
sustain the rejection of claim 1.
Appellant further argues that layer 44 of Youngs does not provide the
same advantages as Appellant’s claimed invention (App. Br. 18-19). Even
assuming this is true, such arguments are directed to unclaimed aspects of
Appellant’s invention. Thus, this argument is not persuasive.
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Appellant’s other arguments regarding the teachings of Youngs and
Schoch are not persuasive in view of the above finding that the Examiner’s
interpretation of Youngs’ teachings is reasonable.
With respect to Appellant’s comments regarding dependent claims 3
and 15-17 (App. Br. 19-21), we note that each of these claims is included
under the heading “Rejection of Claims 1-11 and 13-17- Youngs in view of
Schoch” (App. Br. 18), and that the Appeal Brief does not include any
subheading referencing any of these claims. Thus, in accordance with
37 C.F.R. § 41.37 (c)(1)(vii), we treat these claims as being argued as a
group by Appellant and note that Appellant waives any argument that we
must consider the patentability of these claims separately.
We note that Appellant argues for the first time in the Reply Brief that
Youngs does not teach the claimed limitation “the inner layer [of the outer
tube] being . . . free relative to the inner tube” (Reply Br. 12), and that
Schoch does not teach “the inner layer [of the outer tube] being helically
corrugated” (id.). Because Appellant did not raise these arguments in the
Appeal Brief, the arguments are waived. See Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
Based on the foregoing, we sustain the rejection of claim 1, and claims 2-11
and 13-17 depending therefrom, based on the combination of Youngs and
Schoch.
DECISION
The Examiner’s rejection of claims 1-11 and 13-17 under 35 U.S.C.
§ 103(a) is AFFIRMED.
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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)(1)(iv).

AFFIRMED

Vsh