Ex Parte Milhas

Board of Patent Appeals and Interferences

Mar 26, 2009

11221500 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PIERRE MILHAS
____________

Appeal 2009-0086
Application 11/221,500
Technology Center 3700
____________

Decided:1 March 26, 2009
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s rejection of claims 1-9, all of the pending claims. We
have jurisdiction pursuant to 35 U.S.C. § 6. 2

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 11/221,500

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Appellant’s invention is directed to a multilayer hose for conveying a
motor vehicle fluid, the hose comprising: an inner layer of polyamide; an
intermediate layer based on a mixture of polyamide and polyolefin; and an
outer layer of a thermoplastic elastomer material based on polyether-ether.
Claim 1 is representative of the invention and is reproduced below:
1. A multilayer hose for conveying a motor vehicle fluid, the hose
comprising:

an inner layer of polyamide;

an intermediate layer based on a mixture
of polyamide and polyolefin; and

an outer layer of a thermoplastic elastomer material based on
polyether-ether.

ISSUES ON APPEAL
Appellant requests review of the following of rejections (App. Br. 3):
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Miguel, Published U.S. Patent Application
2003/0099800, published May 29, 2003, and Matsuoka, U.S. Patent No.
6,830,792, issued December 14, 2004;
Claims 1, 3, and 6-8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kito, U.S. Patent No.
6,491,994, issued December 10, 2002, and Matsuoka; and

2 In rendering this Decision we have considered the Appellant’s arguments
presented in the Appeal Brief dated August 13, 2007 and the Reply Brief
dated January 22, 2008.

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Claims 2, 4, 5, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kito, Matsuoka, and Siour,
U.S. Patent No. 6,177,162, issued January 23, 2001.

ISSUES
The rejection over Miguel and Matsuoka: Has Appellant shown
reversible error in the Examiner’s determination that it would have been
obvious to form a multilayer hose comprising an outer layer comprising a
thermoplastic elastomer material based on polyether-ether produced in
accordance with the combined teachings of Miguel and Matsuoka?
The rejections over Kito and Matsuoka: Has Appellant shown
reversible error in the Examiner’s determination that it would have been
obvious to form a multilayer hose comprising an outer layer comprising a
thermoplastic elastomer material based on polyether-ether produced in
accordance with the combined teachings of Kito and Matsuoka?
We answer these questions in the negative for essentially the reasons
stated in the Examiner’s Answer (see Ans. 3-8).
FINDINGS OF FACT
Miguel
Miguel discloses a multilayer hose for conveying a motor vehicle
fluid, the hose comprising: an inner layer of polyamide; an intermediate
layer based on a mixture of polyamide and polyolefin; and an outer layer of
a thermoplastic elastomer material. The thermoplastic elastomer material is
disclosed to be based on polyester-ether. (¶¶[0006]-[0009]).

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Kito
Kito discloses a multilayer hose for conveying a motor vehicle fluid.
(col. 1, ll. 6-10). The hose includes a polyamide in each of the inner,
intermediate and outer layers. (col. 1, ll. 48-54). Kito also discloses that
other thermoplastic resins can be provided in each of the layers of the
multilayer hose. (col. 5, ll. 36-47). Suitable other thermoplastic resins
include polyolefin resins and polyester resins. (col. 5, ll. 48-55).
Matsuoka
Matsuoka discloses a multilayer structure that comprises different
types of resin layers. (col. 11, ll. 22-31). The multilayer structure comprises
thermoplastic resin materials. According to Matsuoka (col. 11, ll. 45-62):
The resin to form the neighboring layer (β) in the multi-layer
structure of the invention is a thermoplastic resin of which the
morphology and the composition differ from the requirements in
the invention. The type of the thermoplastic resin is not
specifically defined, and may be any one selected in accordance
with the use and the object of the multi-layer structure. Its
examples are saturated polyester resins, polysulfone resins,
polyethylene tetrafluoride resins, polyetherimide resins,
polyamidimide resins, polyamide resins, polyimide resins,
polycarbonate resins, polyether sulfone resins, polyether ketone
resins, polythioether ketone resins, polyether-ether ketone resins,
thermoplastic polyurethane resins, polyolefin resins, ABS resins,
polyamide elastomers, and polyester elastomers. Two or more of
these may be combined for use herein. Of those, especially
preferred are polyolefin resins, thermoplastic polyester resins,
polyamide resins, polycarbonate resins and ABS resins.

The Examiner finds that Miguel discloses a multilayer hose for
conveying a motor vehicle fluid that differs from the claimed invention in

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the composition of the thermoplastic elastomer material utilized in the outer
layer. (Ans. 3). The Examiner finds, relying upon Matsuoka as evidence,
that it is well known to persons of ordinary skill in the art to form
thermoplastic elastomers from polyesters or polyethers which are
functionally equivalent. (Ans. 3). The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art to have selected
known functionally equivalent thermoplastic elastomer materials such as a
polyether-ether for the outer layer of a multilayer hose for conveying motor
vehicle fluid. (Ans. 3).
The Examiner finds that Kito discloses a multilayer hose for
conveying a motor vehicle fluid that comprises a polyamide in the
thermoplastic resin and each of the inner, outer, and intermediate layers.
(Ans. 4). The Examiner finds that this multilayer hose of Kito differs from
the claimed invention in the composition of the thermoplastic elastomer
material utilized in the outer layer. (Ans. 4). The Examiner finds, relying
upon Matsuoka as evidence, that it is well known to persons of ordinary skill
in the art to form thermoplastic elastomers from polyesters or polyethers
which are functionally equivalent. (Ans. 3). The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art to have
selected known functionally equivalent thermoplastic elastomer materials
such as a polyether-ether for the outer layer of a multilayer hose for
conveying motor vehicle fluid. (Ans. 3).
Appellant contends that the combination of Miguel and Matsuoka
fails to disclose or suggest a multilayer pipe that comprises an outer layer

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made of a thermoplastic elastomer material based on polyether-ether. (App.
Br. 3). Appellant contends that Matsuoka’s polyether-ether ketone resin
used alone or in combination with other thermoplastic elastomeric materials
will not result in a thermoplastic elastomeric material based on a polyether-
ether as required by the claimed invention. (App. Br. 4-5). Appellant
contends that Matsuoka does not suggest the equivalency of the polyether
for polyester in an elastomeric outer layer. (App. Br. 8-9).
Appellant contends that the combination of Kito and Matsuoka fails
for similar reasons to those that were discussed for the combination of
Miguel and Matsuoka (App. Br. 9-10.)

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. See
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of
whether the subject matter of a claim is obvious] need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007). “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is

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obvious unless its actual application is beyond his or her skill.” Id.; see also
DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”).

ANALYSIS
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
During examination, “claims must [be given] their broadest reasonable
construction consistent with the specification.” In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
We look to the Specification for a description as to what is
encompassed by a “thermoplastic based on a polyether-ether.” Regarding
this phrase the specification provides the following description:
The outer layer is made of an thermoplastic elastomer material
based on polyether-ether. By way of example the material used
is that produced under the reference Riteflex by the supplier
Ticona. (Spec. 3, ll. 10-13).

The Specification provides no other description as to what is
encompassed by a thermoplastic elastomer material based on polyether-

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ether. The Specification also provides no description of the properties that
are required by a thermoplastic elastomer material based on polyether-ether.
Since claims during prosecution are given the broadest reasonable
interpretation consistent with the Specification, we interpret the phrase a
“thermoplastic elastomer material based on polyether-ether” as including a
thermoplastic elastomer material that comprises a polyether-ether or was
derived from a polyether-ether.
Applying the preceding legal principles to the Factual Findings (FF)
in the record of this appeal, we determine that the Examiner has established
a prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellant.
Appellant’s principal argument in rebuttal to each of the rejections on
appeal is that Matsuoka’s polyether-ether ketone resin whether used alone or
in combination with other thermoplastic elastomeric materials will not result
in a thermoplastic elastomeric material based on a polyether-ether as
required by the claimed invention. (App. Br. 4-5). We do not agree. As set
forth above, Matsuoka discloses that in multilayer structures thermoplastic
resins formed from polyether ether ketones and polyesters are functionally
equivalent. Matsuoka discloses the polyether ether ketone may be utilized
alone or in combination with a thermoplastic elastomer. Thus, this
description of the thermoplastic elastomer by Matsuoka falls within the
scope of the claimed invention. Consequently, we agree with the Examiner
that a person of ordinary skill in the art would have recognized the suitability
of utilizing functionally equivalent thermoplastic materials in forming the
outer layer of a multilayer hose. Moreover, we note that Appellant has not

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described the characteristics possessed by the outer layer of the multilayer
hose. That is, there is no description of the characteristics that are possessed
by the outer layer that would have deterred a person of ordinary skill in the
art from selecting the functionally equivalent thermoplastics described by
Matsuoka.
Matsuoka discloses that polyether ether ketones are suitable for
forming thermoplastic elastomers. Consequently, Appellant’s arguments to
the contrary are not persuasive and have not been supported on the present
record.
Regarding the rejection over the combined teachings of Kito,
Matsuoka, and Siour, Appellant has not addressed the Examiner’s rationale
for combining the cited references to reject the claims. Consequently,
Appellant has not shown that the Examiner reversibly erred in rejecting the
claimed subject matter.
We note that Appellant has for the first time introduced new evidence
into the record and the Appeal Brief. This evidence was not timely
presented into the present record. See 37 C.F.R. § 41.37 (c)(2). The
Examiner, Answer 5, acknowledges that the submission is not timely.3
For the foregoing reasons and those stated in the Answer, we affirm
the rejection presented in this appeal.

3 We note that the Examiner provided commentary regarding the submitted
evidence. The Examiner purports that this evidence supports the stated
rejection. We further note that Appellant did not refute the Examiner’s
statements in the responsive Brief.

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ORDER
The rejections of claims 1-9 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

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