Ex Parte Mohri et alDownload PDFPatent Trial and Appeal BoardMay 31, 201610597311 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/597,311 0712012006 23373 7590 06/03/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Masahiro Mohri 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. Q96052 9224 EXAMINER HOOK, JAMES F ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 06/03/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIRO MOHRI, MINORU FUJIYOSHI, TOMOYUKI MINAMI, FUMITAKA SATOH, and TAMAKI HAMAGUCHI Appeal2014-000632 1 Application 10/597 ,311 2 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and MATTHEWS. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed April 25, 2013) and Reply Brief ("Reply Br.," filed October 15, 2013), and the Examiner's Answer ("Ans.," mailed August 14, 2013) and Final Office Action ("Final Act.," mailed October 16, 2012). The record includes a transcript of the oral hearing held May 24, 2016. 2 Appellants identify Hitachi Metals, Ltd, as the real party in interest (Appeal Br. 2). Appeal2014-000632 Application 10/597,311 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 7, 8, and 11-16. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. CLAIMED INVENTION Appellants' invention relates generally to "a flexible pipe sufficiently protecting a corrugated metal pipe from induced lightning" (Spec. i-f 7). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A flexible pipe comprising a first resin layer, a conductive metal layer and a second resin layer in this order from below on an outer surface of a corrugated metal pipe for flowing a fluid, wherein said metal layer is constituted by at least one metal tape extending substantially parallel to the longitudinal axis of said corrugated metal pipe, and wherein said first resin layer and said second resin layer are laminated partly in contact with each other. Appeal Br. (Claims App.). REJECTIONS3 Claims 1, 7, and 11-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bittner (US 3,831,636, iss. Aug. 27, 1974) and Jager (US 7 ,316,548 B2, iss. Jan. 8, 2008). Claims 1, 7, 8, and 11-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Iyengar (US 3,634,606, iss. Jan. 11, 1972), Bittner, and Jager. 3 The Examiner withdrew a rejection of claim 16 under 35 U.S.C. § 112, second paragraph (see Ans. 8). 2 Appeal2014-000632 Application 10/597,311 ANALYSIS We are persuaded the Examiner erred in asserting that a combination of Bittner and Jager (see Appeal Br. 9-10; see also Reply Br. 6-7), and alternatively, a combination of Iyengar, Bittner, and Jager (see Appeal Br. 16), renders obvious independent claims 1 and 11, and their dependent claims, because the Examiner does not establish that Jager is an analogous prior art reference (see Appeal Br. 9-10; see also Reply Br. 6-7). More particularly, Appellants argue that Jager is neither from the same field of endeavor nor reasonably pertinent to the particular problem with which the inventor is involved because Jager "relates to a stator for an eccentric screw pump" (Appeal Br. 9-10). Appellants' claimed invention is directed to "a flexible pipe for fluids such as gas, water, etc. which is installed in the walls or under the floors of buildings, etc., [and more] particularly to a flexible pipe having a safety measure to induced lightning caused by lightening [sic] ... " (Spec. i-f 1 ). In contrast, Jager is directed "to a stator for an eccentric screw pump or an eccentric worm motor having a stator, and includes an outer tube that is provided with a lining of rubber or a rubber-like material and has a hollow space or cavity, in the shape of a double or multiple spiral" (Jager, col. 1, 11. 8-12). Jager describes that the object of its invention is to "provide a stator that remains functional even under those conditions where the fixed connection between the lining and the outer tube would be destroyed, e.g. by chemical influences or high temperatures" (id. at col. 1, 11. 30-34). Jager discloses that its stator "has an outer tube 1 of a solid material (e.g. steel), in 3 Appeal2014-000632 Application 10/597,311 the interior of which is disposed a lining 2 of rubber or a rubber-like material" (id. at col. 2, 11. 56-58). "A reference qualifies as prior art for an obviousness determination under§ 103 only when it is analogous to the claimed invention." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm't., Inc., 637F.3d1314, 1321 (Fed. Cir. 2011), andin re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)). A reference is analogous art to the claimed invention if: ( 1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 at 1325. In this case, the Examiner does not address or make any findings as to whether Jager is reasonably pertinent to the problem faced by the inventor (see Ans. 1 O); but rather, asserts it is considered that both references are in the same field of endeavor in that both references deal with types of tubes where Jager is a tube with a rubber layer which is flexible material, and both references teach longitudinally extending strip layers between inner and outer tubes, therefore one skilled in the art would look to any piece of art that was directed to similar tubular structure. (Ans. 8-9). We cannot agree. At the outset, we note that the Examiner misapplies the first part of the test (see id.). The analogous art inquiry is not related to whether or not Bittner and Jager are in the same field of endeavor; but rather, the inquiry is directed to whether the reference (Jager) is from the same field of endeavor as the claimed invention. See In re Klein, 647 F.3d at 1348 (quoting In re 4 Appeal2014-000632 Application 10/597,311 Bigio, 381 F.3d at 1325). Assuming, arguendo, that the Examiner intended to find that Jager is from the same field of endeavor as the claimed invention, we disagree with the Examiner's characterization of the field of endeavor of the claimed invention (see Ans. 10-11). In this regard, the Examiner finds that "Jager and Bittner are within the same field of endeavor being multilayer tubular members regardless of intended use" (id. at 10). However, "the assessment of the field of endeavor" is not "a wholly subjective call for the Examiner" and "the PTO must show adequate support for its findings on the scope of the field of endeavor in the application's written description and claims, including the structure and function of the invention." In re Bigio, 381 F.3d. at 1326. Here, as noted above, Appellants' Specification relates to "a flexible pipe having a safety measure to induced lightning caused by lightening [sic] ... " (Spec. i-f 1 ), and the Examiner does not explain, sufficiently, why the scope of the Appellants' field of endeavor extends to Jager' s disclosure regarding "a stator for an eccentric screw pump or an eccentric worm motor having a stator" (Jager, col. 1, 11. 8-9). Moreover in response to the Examiner's finding that "Jager is a tube with a rubber layer which is flexible material" (Ans. 8), and as such, "one skilled in the art would look to any piece of art that was directed to similar tubular structure" (id. at 9), we agree with Appellants that there is nothing in Jager to indicate that its stator is flexible (see Reply Br. 7), nor does the Examiner point to such a disclosure. Instead, Jager discloses that its rubber lining prevents degradation from "chemical influences or high temperatures" (Jager, col. 1, 11. 30-34). Thus, the Examiner's findings regarding Jager and 5 Appeal2014-000632 Application 10/597,311 the field of endeavor of the Appellants' claimed invention are not adequately supported. Therefore, as the Examiner's determination that Jager is in the same field of endeavor is based on these findings (see Answer 8-11 ), the Examiner fails to establish that Jager is analogous art under the first part of the analogous test. The Examiner failed to reach the second part of the analogous art test, and as such, the Examiner fails to establish that Jager satisfies either of the two tests for analogous art. In view of the foregoing, we do not sustain the Examiner's rejection of independent claims 1and11, and dependent claims 7 and 12-16 under 35 U.S.C. § 103(a) as unpatentable over Bittner and Jager. As the Examiner's alternative rejection is also based upon a prior art combination including Jager, for the same reasons, we do not sustain the alternative rejection of independent claims 1 and 11, and dependent claims 7, 8, and 12-16 under 35 U.S.C. § 103(a) as unpatentable over Iyengar, Bittner, and Jager. DECISION The Examiner's rejections of claims 1, 7, 8, and 11-16 under 35 U.S.C. § 103(a) are reversed. 6 Copy with citationCopy as parenthetical citation