Ex Parte Nozaki et al

Board of Patent Appeals and Interferences

May 9, 2012

11406410 (B.P.A.I. May. 9, 2012)

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.
11/406,410 04/19/2006 Yoshiharu Nozaki APA-0225 5182
74384 7590 05/09/2012
Cheng Law Group, PLLC
1100 17th Street, N.W.
Suite 503
Washington, DC 20036
EXAMINER
HINDENLANG, ALISON L
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
05/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIHARU NOZAKI, HIROSHI SUGAHARA,
and AKIHIKO TAKAYA
____________

Appeal 2010-011940
Application 11/406,410
Technology Center 1700
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and LINDA
M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-011940
Application 11/406,410

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-16, the only claims pending in the Application.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim, is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for rehabilitating an existing pipeline involving in
fabricating a pipe on the interior surface of a pipeline from an elongated strip
having interlocking sections formed along its two lateral margins by spirally
interlocking the interlocking sections with the help of a pipe fabrication machine
while injecting high-viscosity mortar into a space between the pipeline and the
newly formed spiral wound pipe,

wherein a pump equipped with a kneading section is installed inside the
pipeline and, along with supplying low-viscosity mortar through piping from
ground level to the pump equipped with the kneading section, a viscosity-
increasing additive is supplied to the kneading section, thereby producing a high-
viscosity mortar, with the high-viscosity mortar injected into the space by the
pump equipped with the kneading section.

Appellants request review of the following grounds of rejection (App. Br. 4):
1. claims 1-10 under 35 U.S.C. §103(a) as unpatentable over Shigeki (JP
2003-042345, pub. Feb. 13, 2003 (as translated)) in view of Kirwan (US
2,704,873, issued Mar. 29, 1955) and Chen (US 2003/0146539, pub. Aug. 7, 2003)
(Ans.3 4-10);

1 Final Office Action mailed Sep. 8, 2009.
2 Appeal Brief filed Apr. 8, 2010 (“App. Br.”).
3 Examiner’s Answer mailed Jun. 23, 2010.
Appeal 2010-011940
Application 11/406,410

3
2. claim 11 under 35 U.S.C. §103(a) as unpatentable over Shigeki in
view of Kirwan and Chen, and further in view of Oberg (US 6,876,904 B1, issued
Apr. 5, 2005) (Ans. 10-11);
3. claims 12-14 under 35 U.S.C. §103(a) as unpatentable over Shigeki in
view of Kirwan, Chen and Oberg, and further in view of the AW Company
Dispense Volume Verification (DVV) System (AW Company: Dispense Volume
Verification System Instructions (Sept. 2004), http://www.awcompany.com) (Ans.
11-14);
4. claim 15 under 35 U.S.C. §103(a) as unpatentable over Shigeki in
view of Kirwan, Chen and Oberg, and further in view of Red Valve Control Pinch
Valves (Red Valve Company: Control Pinch Valves,
http://web.archive.org/web/20040429023528/http://www.redvalve.com/ (last
visited Aug. 6, 2008)) (Ans. 14-15); and
5. claim 16 under 35 U.S.C. §103(a) as unpatentable over Shigeki in
view of Kirwan, Chen and Oberg, and further in view of Champagne (US
2004/0104366 A1, pub. Jun. 3, 2004) (Ans. 15-16).
The Examiner finds Shigeki discloses the invention as claimed with the
exception of supplying mortar from a ground level location, and the addition of a
viscosity-increasing additive to the kneading section of the pump. (Ans. 4-5.)
Shigeki supplies mortar to a pump in the interior of the pipeline via a feeder K or
K1 positioned in the pipeline a short distance from the pump. (Shigeki [0042]; see
Drawing 25.) Shigeki teaches addition of a viscosity adjuster and an additive to
delay setting of the mortar. (Shigeki [0043], cited in Ans. 17.)
The Examiner finds Kirwan teaches a lining machine disposed in a pipeline,
and having a mortar receiving hopper portion 16. (Ans. 5.) Hopper portion 16
receives mortar through a detachable hose connected to a source located at ground
Appeal 2010-011940
Application 11/406,410

4
level (col. 2, l. 69 –col. 3, l. 6). (See Ans. 5, 17.) The Examiner concludes “[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to modify the pump taught by Shigeki by attaching it to an above ground
mortar supply as taught by Kirwan for the purpose of reducing the amount of
equipment in the pipe.” (Ans. 5.)
The Examiner finds Chen teaches a cement extruder which includes
apertures to allow for “‘addition of fluids such as water, slurries and other
components such as viscosity enhancing agents, etc.’ (paragraph 0039) after which
‘the paste is simultaneously mixed and kneaded to ensure a homogeneous
composition’ (paragraph 0040).” (Ans. 5.) The Examiner concludes “[i]t would
have been obvious to one of ordinary skill in the art at the time of the invention to
modify the pump taught by the [Shigeki/Kirwan] combination [] by adding inlet
means for additives as taught by Chen for the purpose of modifying the cement
composition at the pump.” (Ans. 6.)
Appellants contend the Examiner reversibly erred in rejecting the claims
because: (1) Shigeki teaches away from positioning the mortar source at a
significant distance from the pump, e.g., at a ground level location, and (2) the
applied prior art fails to teach or suggest supplying a “low-viscosity mortar” from
ground level to the pump. (App. Br. 8-9.)
We have considered Appellants’ arguments, but are not persuaded of
reversible error in the Examiner’s obviousness determination for the reasons
expressed in the Answer. (Ans. 4-6; 16-18.)
The Examiner maintains, and we agree, that one of ordinary skill in the art,
upon reading Shigeki, would have understood that mortar setting speed must be
considered when selecting the distance between mortar feed and application points.
(Ans. 17 (citing Shigeki [0042-0043]).) However, one of ordinary skill in the art
Appeal 2010-011940
Application 11/406,410

5
would not have been discouraged from making the Examiner’s proposed
modification of attaching Shigeki’s pump to an above-ground mortar supply. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.”) In fact, as
acknowledged by Appellants in the Specification, at the time of the invention, it
was known that high viscosity mortar could be supplied from a source located at
ground level to a pump located in a pipeline, provided that the distance from the
mortar source to the pump was not too large. (Spec. 3:1-8.)
Appellants also argue Kirwan fails to disclose that the mortar supplied from
ground level is a low-viscosity mortar. (App. Br. 9.) We agree with the Examiner
that Kirwan must necessarily “have a sufficiently low viscosity to be pumped from
above ground to below ground and subsequently applied to the pipe.” (Ans. 17.)
Further, as pointed out by the Examiner (Ans. 16), Shigeki teaches supplying to the
pump a mortar having a lower viscosity than the mortar injected between the pipe
and liner by virtue of the additive used to delay setting of the mortar. Thus, we
agree with the Examiner that the combination of Kirwan, Shigeki, and Chen would
have resulted in a method which included “supplying low-viscosity mortar through
piping from ground level to the pump equipped with the kneading section, . . . with
the high-viscosity mortar injected into the space [between the pipe and liner] by the
pump equipped with the kneading section” as recited in claim 1.4

4 We additionally note that have reviewed the entire Specification, but find no basis
to support Appellants’ contention that the terms “low-viscosity” and “high-
viscosity,” when interpreted in light of the Specification, define over the method
which results from the Examiner’s proposed combination. (See Reply Brief filed
Aug. 23, 2010, 2.)
Appeal 2010-011940
Application 11/406,410

6
We note that, in addition to the arguments directed to limitations in
independent claim 1, Appellants have presented separate arguments in support of
patentability of dependent claims 4 and 6. (App. Br. 10-11.) The Examiner has
fully addressed these arguments in the Answer (Ans. 18), and we find them
unpersuasive for the reasons expressed therein.
In sum, for the reasons expressed in the Answer and above, we are not
persuaded of reversible error in the Examiner’s conclusion of obviousness as to
appealed claims 1-16. Accordingly, we sustain all five grounds of rejection.

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).
AFFIRMED

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