Ex Parte Mitsch et al

Patent Trial and Appeal Board

Jun 28, 2016

12156257 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/156,257 05/29/2008 Gregory S. Mitsch
24339 7590 06/29/2016
JOEL D. SKINNER, JR.
SKINNER AND ASSOCIATES
212 COMMERCIAL ST.
HUDSON, WI 54016
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.
GAMlOlUSA 2776
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
MAILDATE DELIVERY MODE
06/29/2016 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 GREGORY S. MITSCH and MICHAEL M. MAY
Appeal2014-007815
Application 12/156,257
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 4--6, 8, 12-15, and 18-20 of
Application 12/156,257 under 35 U.S.C. § 112, i-f 1 for failing to comply
with the written description requirement; under 35 U.S.C. § 112, i-f 2 as
indefinite; and claims 1, 4--6, 8, 12-15, and 18-20 under 35 U.S.C. § 103(a)
as obvious. Final Act. (May 29, 2013). Appellants 1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 GaMra Composites, Inc. is identified as the real party in interest. Appeal
Br. 3.
Appeal2014-007815
Application 12/156,257
BACKGROUND
The '257 Application describes a method for manufacturing hoses.
Spec. 2. In particular, the Specification describes mandrels for
manufacturing hoses and methods for manufacturing and using such
mandrels. Id. The particular mandrels described in the '257 Application
include flexible extrusion mandrels having an elongated, flexible metallic
core, a tie layer disposed about the core, and a plastic body disposed about
the tie layer. Id. at 5.
Claim 1 is representative of the '257 Application's claims and is
reproduced below:
1. A flexible extrusion mandrel for use in manufacturing a
hose,
the mandrel having a length on the order of 2,000 feet,
comprising a metal core,
the metal core having a diameter of approximately 0.070 inches,
a tie layer disposed about the metal core, and
a body disposed about the tie layer and being constructed of
plastic material,
the body having a thickness of greater than 0.070 inches,
the body having a dimensional stability adapted to support the
extrusion of hose over it, and
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Application 12/156,257
the tie layer.facilitating adhesion between the metal core and the
body and for blocking water contact with the metal core during
hose manufacture.
Appeal Br. 16 (Claims App.) (emphasis, paragraphing, and indentation
added).
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1, 4---6, 8, 12-15, and 18-20 are rejected under 35 U.S.C.
§ 112, i-f 1 as failing to comply with the written description
requirement. Final Act. 2-5; Answer 2-3.
2. Claims 1, 4, 6, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Pingleton,3 Takahashi,4 and
Ford. 5 Final Act. 5-10; Answer 3-8.
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Pingleton, Takahashi, Ford, and Rausch. 6 Final
Act. 10-11; Answer 8-9.
2 The Examiner entered Appellants' Amendment After Final, and has
withdrawn the rejections under 35 U.S.C. § 112, i-f 2 and partially withdrawn
the rejections under§ 35 U.S.C. § 112, i-f 1. Advisory Action 2 (September
27, 2013); Answer 17.
3 US 2007/0215268Al, published September 20, 2007.
4 US 4,617,078, issued October 14, 1986.
5 US 3,953,270, issued April 27, 1976.
6 US 4,681,558, issued July 21, 1987.
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4. Claims 8, 13, 14, 18, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Pingleton, Takahashi,
Ford, and Yamamoto.7 Final Act. 11-14; Answer 9-12.
5. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Pingleton, Takahashi, Ford, Yamamoto, and
Lake.8 Final Act. 14--15; Answer 12-13.
6. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Pingleton, Rausch, Ford, Takahashi, and
Yamamoto. Final Act. 15-19; Answer 13-17.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 4--6, 8, 12-15, and 18-
20 as being directed to subject matter not described in the '257 Application's
Specification. Answer 2. In particular, the Examiner asserts three different
bases for this rejection. Id. at 2-3. We discuss each of these separately.
First, the Examiner rejected independent claims 1, 15, and 20 as
lacking support in the originally-filed specification. Id. at 2. In particular,
each of the '257 Application's independent claims has a limitation
specifying that the claimed mandrel's body has a thickness of greater than
0.070 inches. The Examiner found that these limitations were not supported
by the originally-filed specification. Id.
To comply with the written description requirement, an applicant's
specification must convey with reasonable clarity to a person of ordinary
skill in the art that, as of the filing date, the applicant was in possession of
7 US 2006/0172032 Al, published August 3, 2006.
8 US 2005/0101710 Al, published May 12, 2005.
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Application 12/156,257
the claimed invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541F.3d1115, 1122 (Fed. Cir. 2008).
Appellants argue that the '257 Application's Specification describes
the claimed mandrel in sufficient detail that a person of ordinary skill in the
art would have understood that Appellants were in possession of a mandrel
comprising a body having a thickness greater than 0.070 inches when the
'257 Application was filed. See Appeal Br. 6-7; Reply Br. 2--4. Appellants
argue that the Specification describes a mandrel having a core that is 0.070
inches in diameter. Appeal Br. 6 (citing Spec. 7). That portion of the
Specification further states that "[t]he body 30 has a predetermined thickness
built up over the core 20 and is the largest layer in this embodiment of the
mandrel 10." Spec. 7. Appellants argue that this disclosure demonstrates
possession of a mandrel having a body that is more than 0.070 inches thick.
Appeal Br. 6; Reply Br. 2--4. Appellants further point to Figures 4 and 5 as
supporting their position. Reply Br. 2-3.
The Examiner responds that the figures in a patent application are not
necessarily to scale and that the thickness of a layer is different from its
diameter. Answer 18.
We are not persuaded by Appellants. The Examiner correctly asserts
that there is no indication that the application's figures are drawn to scale.
Therefore, one or ordinary skill in the art would not have understood that the
relative sizes depicted in the figures were part of Appellants' invention.
Furthermore, Appellants' Specification states that body 30 is the largest
layer in this embodiment of mandrel 10. Spec. 7. Core 20, however, would
not have been interpreted as a "layer" by a person of ordinary skill in the art
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Application 12/156,257
reading the cited passage in the Specification.9 Thus, the statement upon
which Appellants rely does not establish a definitive relationship between
the diameter of core 20 and the thickness of body 30.
We, therefore, affirm the Examiner's rejection of each of the '257
Application's independent claims as lacking sufficient support in the
originally-filed specification.
Second, the Examiner further rejected claim 20, finding that the claim
term "approximately 0.070 inches" does not appear to have support in the
originally-filed specification. Answer 2-3. We cannot sustain this ground
of rejection.
The '257 Application's Specification specifically states that "[t]he
core 20 has a predetermined diameter, for example 0.070 inches." Spec. 7.
A person of ordinary skill in the art would understand that the diameter of
core 20 varies due to manufacturing tolerances. Thus, a person of ordinary
skill in the art would have understood the Specification to be describing a
core with a diameter that is not always exactly 0.070 inches. Accordingly,
the claim term "approximately 0.070 inches" is supported by the originally-
filed specification. The degree of latitude afforded by the modifier
"approximately" is a claim construction issue.
Third, the Examiner also rejected claim 20, finding that the limitation
"the core further having a length on the order of 2,000 feet" does not appear
to have support in the originally-filed specification. Answer 3. In particular,
9 For example, one source defines the term "layer" as "a thickness of some
material laid on or spread over a surface." Layer I Define Layer at
Dictionary.com, Dictionary.com (June 20, 2016),
http://www.dictionary.com/browse/layer. Core 20 does not fit within this
definition.
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the Examiner found that the "present specification provides support for the
mandrel/hose combination having a length on the order of 2,000 feet (page
10, 11. 15-16), there is no support to recite the 'core' having a length on the
order of 2,000 feet." Final Act. 3; Answer 3.
We cannot sustain the rejection of claim 20 on this basis. As the
Examiner notes, the Specification describes a mandrel/hose combination
having a length on the order of 2,000 feet. See Spec. 10. The Specification
further describes the mandrel as comprising a core. Id. at 7. A person of
ordinary skill in the art at the time of the invention, therefore, would have
understood that a mandrel having a length on the order of 2,000 feet would
include a core having that length.
For the reasons set forth above, therefore, we affirm the rejection of
claims 1, 4---6, 8, 12-15 and 18-20. We cannot, however, sustain the
rejection of claim 20 on either of the two grounds of rejection the Examiner
applied only to claim 20.
Rejections 2--6. Appellants only present arguments for reversal of
these rejections with respect to independent claims 1, 15, and 20. See
Appeal Br. 11-14. We, therefore, limit our discussion accordingly. We
shall address each independent claim in tum. Each dependent claim will
stand or fall with the independent claim from which it depends.
Claim 1. The Examiner rejected claim 1 as unpatentable over the
combination of Pingleton, Takahashi, and Ford. Final Act. 5.
Appellants present two arguments for reversal of this rejection:
(1) the combination of Pingleton, Takahashi, and Ford would not have been
obvious to a person of ordinary skill in the art at the time of the invention,
id. at 7-11; (2) the combination of Pingleton, Takahashi, and Ford does not
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describe or suggest each of claim 1 's limitations, id. at 11-14. We address
each of these arguments in tum.
First, Appellants argue:
[I]t would not [have been] obvious to a person of ordinary skill
in the hose manufacturing field at the time of the invention to
combine Pingleton et al. and Takahashi et al., nor Pingleton et al.
and Ford et al., as proposed by the Examiner in Paragraphs 16-
51 of the Final Office Action, nor Pingleton et al., Takahashi et
al., and Ford et al.
Appeal Br. 7. In particular, Appellants argue that Pingleton only describes
mandrel structures having solid metal cores. Id. at 9. Thus, Appellants
assert that a person having ordinary skill in the art would not have been
motivated to add a tie layer to the core. Id.
The Examiner found that Takahashi describes the use of a tie layer
located between a metal substrate and a plastic material. Final Act. 5 (citing
Takahashi col. 1, 11. 6-11; col. 5, 11. 10-11). Takahashi states:
The cured surface film of the organosilicon polymer obtained by
air-drying or by heating can exhibit excellent priming effect on a
variety of substrate materials such as metals, plastic resins,
rubbers, ceramics and others. . . . Suggested applications of the
invented method include, for example, the adhesive bonding of
a metal-made mandrel and outer rubber layer in various kinds of
rubber rollers ....
Takahashi col. 5, 11. 2-12.
In view of Takahashi's description, we are not persuaded that the
Examiner erred by concluding that "[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to include a tie layer
between the metal core and the plastic body of Pingleton et al. for adhesive
bonding strength." Final Act. 5 (citation omitted).
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Appellants also argue that a person having ordinary skill in the art
would not have been motivated to modify Pingleton's 1 to 3 foot long
mandrel in view of Ford's description of the 1000-8000 foot long mandrel.
Appeal Br. 10-11.
The Examiner found that Pingleton does not disclose the length of the
mandrel. Final Act. 5. The Examiner also found that Ford describes a
mandrel that has a length of up to 8,000 feet. Id. at 6. The Examiner
concluded that it would have been obvious to a person of ordinary skill in
the art at the time of the invention to choose a mandrel that has an
appropriate length for its intended use. Id. In the alternative, the Examiner
explains that:
[I]t would have been obvious to one of ordinary skill in the art at
the time of the invention to have the mandrel in various sizes,
including that presently claimed, because . . . doing so would
have been desirable for producing articles having various sizes.
Change in size is generally recognized as being within the level
of ordinary skill in the art, absent unexpected results.
Id. at 7.
In view of the foregoing, we are not persuaded by Appellants'
argument. The Examiner has correctly analyzed the question of whether a
person of ordinary skill in the art at the time of the invention would have had
reason to vary the mandrel length according to the mandrel's intended use.
Second, Appellants argue that the combination of Pingleton,
Takahashi, and Ford does not describe or suggest every limitation in claim 1.
Appeal Br. 11-14. In particular, Appellants argue that the combination of
prior art cited by the Examiner does not describe or suggest a mandrel
comprised of a core having a diameter of approximately 0.070 inches and a
body having a thickness greater than 0.070 inches. Id. at 11.
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The Examiner found that Pingleton describes the use of a PTFE-
coated metal mandrel. Final Act. 5 (citing Pingleton i-f 62). The Examiner
also found that the combination of Pingleton and Takahashi suggests a
PTFE-coated mandrel which has a metal core and a tie layer located between
the PTFE coating and the core. Id. The Examiner determined that the PTFE
coating in the mandrel suggested by the combination of Pingleton and
Takahashi corresponds to the body recited in Appellants' claim 1.
The Examiner further found that Pingleton does not describe or
suggest either the diameter of the metal core or the thickness of the PTFE
coating. Id. The Examiner, however, concluded that it would have been
obvious to a person having ordinary skill in the art to choose both the core
diameter and the thickness of the PTFE body depending on the mandrel's
end use. Id.
Appellants argue that a person having ordinary skill in the art at the
time of the invention would have understood Pingleton's PTFE coating to
have a thickness of between 0.001 and 0.003 inches. Appeal Br. 8-9.
Appellants contend that a person of ordinary skill in the art would
understand that such a thin coating material cannot constitute a body
disposed about the mandrel's metal core. Id. at 9.
In response, the Examiner cites Miller as evidence that PTFE coatings
as thick as 0 .1 inches were known in the art. Answer 19 (citing Miller10 col.
7, 11. 15-16 and 30-33). 11 Appellants respond that Miller's description of
100 mil thick coating is a description of a coating that is only 0.010 inches
10 US 5,280,243, issued January 18, 1994.
11 Miller is not included in the statement of the rejection. Nonetheless,
Appellants state they "are willing to address it here." Reply Br. 6.
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thick. Reply Br. 6. This response is based upon a mathematical error and,
therefore, is not persuasive.
In view of the foregoing, we are not persuaded that the Examiner
erred in finding that the combination of Pingleton, Takahashi, and Ford (as
evidenced by Miller) describes or suggests each limitation in claim 1. We,
therefore, affirm the rejection of claim 1 under§ 103.
Claim 15. The Examiner rejected claim 15 as unpatentable over the
same combination of references used to reject claim 1. See Final Act. 5-10.
Appellants argue that this rejection should be reversed for the reasons they
have advanced with respect to claim 1. Appeal Br. 13. As discussed above,
we do not find these arguments persuasive.
Appellants also argue that the combination of Pingleton, Takahashi,
and Ford does not describe or suggest a mandrel that is adapted for use in
crosshead extrusion and that has a flexural modulus that permits bending and
coiling and a tensile strength so as not to stretch. Id. Appellants, however,
do not present this argument in sufficient detail to avoid having waived their
challenge to the Examiner's findings 12 regarding these limitations. Cf
37 C.F.R. § 41.37(c)(l)(iv) (2013) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim."). Indeed, Appellants do not appear to rely on
these arguments. The section of their Appeal Brief addressing claim 15
concludes: "For at least the reasons discussed with respect to independent
claim 1, claim 15 is believed to be patentable and withdrawal of this
rejection is respectfully requested." Appeal Br. 14.
12 See Final Act. 10.
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In view of the foregoing, we affirm the rejection of claim 15 as
unpatentable pursuant to§ 103.
Claim 20. The Examiner rejected claim 20 as unpatentable over the
combination of Pingleton, Takahashi, Ford, Rauch, and Yamamoto. See
Final Act. 15-19. Appellants limit their arguments for reversal of this
rejection: "For at least the reasons discussed with respect to independent
claim 1, claim 20 is believed to be patentable and [sic, patentable, and]
withdrawal of this rejection is respectfully requested." Appeal Br. 14.
Because we have affirmed the rejection of claim 1, we also affirm the
rejection of claim 20 as unpatentable pursuant to § 103.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1, 4--
6, 8, 12-15, and 18-20 under§ 112, i-f 1 as lacking written description
support in the originally-filed specification. We also affirm the rejection of
claims 1, 4---6, 8, 12-15, and 18-20 as unpatentable pursuant to§ 103.
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
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