Ex Parte Pisacreta

Patent Trial and Appeal Board

Aug 13, 2018

13492321 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/492,321 06/08/2012 Pellegrino J. Pisacreta
54549 7590 08/15/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
61807US01;
67097-1873PUS1
CONFIRMATION NO.
1020
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PELLEGRINO J. PISACRET A
Appeal2017-009945
Application 13/492,321 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER L. OGDEN, and
AVEL YN M. ROSS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 1-7, 9-14, and 22-30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is said to be United Technologies Corporation. Appeal
Brief dated December 23, 2016 ("App. Br."), at 1.
Appeal2017-009945
Application 13/492,321
The subject matter on appeal is directed to insulated tubing comprising an
inner metal tube, an inner middle insulation layer, an outer middle securing layer,
and an outer shrinkable sleeve. Representative claim 1 is reproduced below. 2
1. A tubing comprising:
an inner tube consisting of metal that is an innermost layer;
an inner middle insulation layer that contacts the inner tube;
an outer middle securing layer, wherein the outer middle
securing layer is a ceramic tape layer that secures the inner middle
securing layer over the inner tube, and the outer middle securing layer
contacts the inner middle insulation layer and is wrapped around a
length of the outer middle insulation layer from one end region of the
inner middle insulation layer to an opposing end region of the inner
middle insulation layer; and
an outer shrinkable sleeve located over the outer middle
securing layer that shrinks upon exposure to heat.
The following grounds of rejection are maintained on appeal:
(1) claims 1, 12, and 25 under 35 U.S.C. § 112, second paragraph; 3
2 Claim 1 is reproduced from the Appellant's amendment dated September 14,
2016, which was entered in the Advisory Action dated October 14, 2016 ("Adv.
Act."). Claim 1, as it appears in the Claims Appendix of the Appeal Brief, it not an
accurate reproduction of pending claim 1, for at least the reason that "the outer
middle insulation layer" has been changed to "the inner middle insulation layer."
3 The Examiner states that "[ e ]very ground of rejection set forth in the Office
action dated July 14, 2016 from which the appeal is taken is being maintained by
the examiner except for the grounds of rejection (if any) listed under the
subheading 'WITHDRAWN REJECTIONS."' Examiner's Answer dated June 8,
2017 ("Ans."), at 2. The Examiner does not reproduce the section 112, second
paragraph, rejection in the Examiner's Answer. The Examiner, however, does not
list the section 112, second paragraph, rejection as a withdrawn rejection.
In the rejection, the Examiner concludes that the phrase "the outer middle
insulation layer" lacks antecedent basis. Final Office Action dated July 14, 2016
("Final Act."), at 5---6. Although the amendment dated September 14, 2016 was
entered in the Advisory Action dated October 14, 2016, the Examiner states that
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(2) claims 1, 2, 4, and 22-26 under 35 U.S.C. § I03(a) as unpatentable
over Henderson et al. 4 in view ofNooren, 5 Igarashi et al.,6 and Samour, 7 as
evidenced by Sugita et al.; 8
(3) claims 4, 29, and 30 under 35 U.S.C. § I03(a) as unpatentable over
Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and
further in view of Collier et al.;9
(4) claim 3 under 35 U.S.C. § I03(a) as unpatentable over Henderson in
view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view
of Kimura et al.; 10
(5) claim 5 under 35 U.S.C. § I03(a) as unpatentable over Henderson in
view ofNooren, Igarashi, Samour, and Collier, as evidenced by Sugita, and further
in view of Kordyban et al. 11 and Batallas et al.; 12
(6) claim 6 under 35 U.S.C. § I03(a) as unpatentable over Henderson in
view ofNooren, Igarashi, Samour, and Collier, as evidenced by Sugita, and further
in view of Hughes; 13
"[c]laims 1, 12 and 25 still recite [the] 'outer middle insulation layer."' Adv. Act.
2 (emphasis added). Therefore, we understand that the section 112, second
paragraph, rejection is maintained by the Examiner on appeal.
4 US 4,094,715, issued June 13, 1978 ("Henderson").
5 US 7,887,925 B2, issued February 15, 2011 ("Nooren").
6 US 5,849,111, issued December 15, 1998 ("Igarashi").
7 GB 2 046 865 A, published November 19, 1980 ("Samour").
8 US 2012/0028107 Al, published February 2, 2012 ("Sugita").
9 US 2011/0240166 Al, published October 6, 2011 ("Collier").
10 US 6,371,359 Bl, issued April 16, 2002 ("Kimura").
11 US 3,367,530, issued February 6, 1968 ("Kordyban").
12 US 2010/0154917 Al, published June 24, 2010 ("Batallas").
13 US 4,556,593, issued December 3, 1985 ("Hughes").
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Application 13/492,321
(7) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Henderson in
view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view
of Beck et al.; 14
(8) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Henderson in
view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view
of Gerace· 15
'
(9) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Henderson in
view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view
of Sheahall" 16
'
(10) claims 10, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over
Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and
further in view ofWashizu et al.; 17
(11) claim 27 under 35 U.S.C. § 103(a) as unpatentable over Henderson in
view ofNooren, Igarashi, Samour, and Collier, as evidenced by Sugita, and further
in view of Washizu;
(12) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Henderson in
view ofNooren, Igarashi, Samour, Collier, and Washizu, as evidenced by Sugita,
and further in view of Kordyban and Batallas; and
(13) claim 28 under 35 U.S.C. § 103(a) as unpatentable over Henderson in
view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view
of Kordyban.
14 US 5,582,905, issued December 10, 1996 ("Beck").
15 US 4,581,281, issued April 8, 1986 ("Gerace").
16 US 3,581,776, issued June 1, 1971 ("Sheahan").
17 US 4,800,109, issued January 24, 1989 ("Washizu").
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B. DISCUSSION
1. Rejection (I)
On appeal, the Appellant does not address the rejection under section 112,
second paragraph. Therefore, rejection (1) is sustained for the reasons provided by
the Examiner. See Final Act. 5---6; 18 Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed.
Cir. 2008) (summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
2. Rejection (2)
a. Claims 1, 2, and 22-26
The Examiner finds Henderson discloses a tubing comprising an insulation
layer that contacts an inner tube and an outer middle securing layer that is wrapped
over the insulation layer, wherein the outer middle securing layer is a corrosion
protective tape. Final Act. 7. The Examiner finds Henderson does not disclose
that the tape is ceramic and that an outer shrinkable sleeve is located over the outer
middle securing layer as recited in claim 1. 19 Final Act. 7.
The Examiner finds Nooren discloses a corrosion protective tape comprising
a talc filler20 "for the purpose of providing a tape that is easily applied." Final Act.
7. The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify the corrosion protective tape disclosed in Henderson with
18 Final Office Action dated July 14, 2016.
19 The Examiner also finds Henderson does not expressly disclose that the inner
tube is metal. Final Act. 7. The Examiner, however, concludes that using a metal
tube in Henderson's disclosed tubing would have been obvious to one of ordinary
skill in the art based on the teachings in Igarashi. Final Act. 7. The Appellant does
not direct us to any evidence to the contrary.
20 The Examiner finds, and the Appellant does not dispute, that Sugita discloses
that talc is ceramic. Final Act. 8.
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Nooren's corrosion protective tape "to obtain a tape that is easily applied." Final
Act. 8.
As for the "outer shrinkable sleeve" recited in claim 1, the Examiner finds
Samour discloses a pipe comprising a heat shrinkable outer layer that functions as
a protective or moisture barrier layer. Final Act. 8. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to include a heat
shrinkable layer, as disclosed in Samour, over Henderson's outer middle securing
layer "to provide for a protective or moisture barrier layer."21 Final Act. 8.
The Appellant argues that there is no reason to add an outer shrinkable
sleeve for the reason proposed by the Examiner because Henderson's tape provides
an outer moisture barrier. 22 App. Br. 3.
The outer shrinkable sleeve disclosed in Samour is not merely a moisture
barrier. Samour discloses that "the outer foamed insulation layer can be provided
with a wrapped or extruded protective or moisture barrier layer of paper or plastic,
e.g., ... an envelope or wrapped layer of heat-shrinkable plastic which is shrunk in
21 In an alternative embodiment, Henderson teaches that the tubing may have four
layers.
[I]f the sheet material [ or tape] is not required to serve as a vapor
barrier or is not intended to provide additional corrosion coating, a
material such as fiberglass or its equivalent may be employed. In
some instances, a material such as fiberglass is used and a corrosion
protective coating or vapor barrier coating is sprayed, dipped,
extruded, taped or otherwise applied over the sheet material.
Henderson, col. 4, 11. 54---62.
22 The Appellant also argues that if the Examiner interprets Henderson's tape as
being the outer layer, Henderson still fails to disclose a ceramic tape and there
would have been no rational reason to add a ceramic tape to Henderson's tubing.
App. Br. 4. The Examiner does not interpret Henderson's tape as corresponding to
the claimed outer layer or sleeve. Therefore, it is not necessary to address the
Appellant's argument.
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place to conform to the foamed insulation." Samour 3, 11. 39--45 (emphasis added).
Samour discloses that a protective layer provides a barrier against puncture and
moisture penetration. Samour 3, 11. 52-55. One of ordinary skill in the art would
have considered puncture resistance to be a useful property in Henderson's tubing
which is said to be used in oil recovery and oil transportation, as well as natural gas
recovery and water, steam, and sewer pipes. Henderson, col. 1, 11. 39--48; see Ans.
1623 ( concluding that it would have been obvious to provide Henderson with a
layer of protective material).
The Appellant also argues that "the numerous references [i.e., five] included
in the rejection[] indicate that the claims are not obvious." App. Br. 4.
As explained by the Court in In re Gorman, 933 F.2d 982, 986 (Fed. Cir.
1991 ), the criterion for combining a large number of references is not the number
of references, but what the references "would have meant to a person of ordinary
skill in the field of the invention." Thus, the mere fact that the Examiner relied on
five references in the rejection of claim 1 does not, by itself, weigh against a
conclusion of obviousness.
Based on the foregoing, a preponderance of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the obviousness rejection of
claim 1 is sustained. The Appellant does not present arguments in support of the
separate patentability of any of claims 2 and 22-26. Therefore, the obviousness
rejection of claims 2 and 22-26 also is sustained.
23 Examiner's Answer dated June 8, 2017.
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b. Claim 4
Claim 4 depends from claim 1 and recites "wherein the inner middle
insulation layer includes two outer layers and an insulation filler located
therebetween." App. Br. 12.
The Appellant argues that the limitation recited in claim 4 would have not
been obvious to one of ordinary skill in the art based on the teachings in
Henderson. App. Br. 4.
The Examiner does not address the limitations of claim 4 in rejection (2).
See Final Act. 7-8. Therefore, the obviousness rejection of claim 4 based on the
combination of Henderson, Nooren, Igarashi, Samour, and Sugita is not sustained.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial
burden of presenting a prima facie case ofunpatentability).
3. Rejection (10)
As for independent claim 12, the Appellant relies on the same arguments
presented in support of the patentability of claim 1 to establish that claim 12 is
patentable. App. Br. 8-9. The Appellant also argues that claims 10 and 13 are
patentable for the reasons that claims 1 and 12 are patentable. App. Br. 9.
For the reasons discussed above, the Appellant's arguments in support of the
patentability of claim 1 do not demonstrate reversible error. Therefore, the
obviousness rejection of claims 10, 12, and 13 is sustained.
4. Rejection (3)
a. Claim 4
The Examiner finds that Henderson, N ooren, Igarashi, and Samour do not
disclose the limitation recited in claim 4 (i.e., "the inner middle insulation layer
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includes two outer layers and an insulation filler located therebetween"24). Final
Act. 9. The Examiner, however, finds Collier discloses an insulation layer as
claimed. Final Act. 9. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art to modify Henderson's insulation layer with the
insulation layer disclosed in Collier "to prevent freezing during low temperature
use as taught by Collier." Final Act. 9. In other words, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art to substitute
Henderson's insulation layer with the insulation layer disclosed in Collier.
The Appellant argues:
In Henderson, the insulation layer is a foamed insulation 58.
The foamed insulation 58 is applied to the tube as a liquid, is allowed
to rise, and then tape 61 [ corresponding to the claimed outer middle
securing layer] is wrapped around the foamed insulation 58 to apply
pressure to the risen foam 58. The tape 61 compacts the foamed
insulation 58 and increases its density.
App. Br. 5. The Appellant argues that "[m]odifying Henderson to include the
claimed feature would not allow these method steps of creating the pipe with the
ideal insulation layer to be performed." App. Br. 5.
Significantly, the Appellant does not direct us to any evidence establishing
that Henderson's tubing, modified with the insulation layer disclosed in Collier,
would not be suitable for its intended use, i.e., oil recovery and oil transportation,
as well as natural gas recovery and water, steam, and sewer pipes. See Henderson,
col. 1, 11. 39--48. In that regard, we note that Collier, like Henderson, teaches that
the disclosed insulation is added to pipelines that transport fluids, such as oil,
water, and sewage. Collier ,r,r 2, 4.
24 App. Br. 12.
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Based on the foregoing, a preponderance of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the obviousness rejection of
claim 4 based on the combination of Henderson, Nooren, Igarashi, Samour, Sugita,
and Collier is sustained.
b. Claim 29
Claim 29 depends from claim 1 and recites "wherein the inner middle
insulation layer is wrapped around the inner tube such that edges of the inner
middle insulation layer contact or overlap." App. Br. 15.
The Appellant argues that "[ t ]he insulation layer is applied in a liquid foam
form. Therefore, it is not possible for the edges of the insulation layer to overlap
or contact as it is applied in a liquid form. Instead, a continuous layer of foam
would be formed that has no edges." App. Br. 5.
The Appellant is apparently referring to the insulation layer disclosed in
Henderson. In the rejection on appeal, however, the Examiner finds Collier
discloses the limitation recited in claim 29. 25 See Final Act. 1 O; see also Collier ,r
48 ( disclosing that third and fourth sides 226, 22 8 of insulation panel 200 may be
secured together and/or to the pipeline directly); Collier Fig. 2B. The Appellant
does not direct us to any error in the Examiner's finding. Therefore, the
obviousness rejection of claim 29 is sustained.
25 As in rejection (3), the Examiner is substituting Henderson's insulation layer
with the insulation layer disclosed in Collier. In the Reply Brief, the Appellant
argues that "there is no reason to believe that the proposed modification based on
Collier would improve freezing prevention in Henderson." Reply Brief dated July
17, 2017 ("Reply Br."), at 4 (emphasis added). Notably, there is no requirement
under 35 U.S.C. § 103(a) that a modification improve a prior art invention. Rather,
a modification to a prior art invention may simply involve the substitution of one
known equivalent for another and yield the same, predictable results.
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c. Claim 30
Claim 30 depends from claim 29 and recites "wherein the edges of the inner
middle insulation layer contacts or overlaps at a seam that extends along a
longitudinal axis of the tubing." App. Br. 15.
Similar to the argument presented in response to the rejection of claim 29,
the Appellant argues that because "the insulation layer is applied in a liquid foam
form, it is not possible for the edges of the foam to overlap or contact at a seam
that extends along a longitudinal axis of the tubing." App. Br. 6.
Again, the Appellant is apparently referring to the insulation layer disclosed
in Henderson. In the rejection on appeal, however, the Examiner finds that Collier
discloses the limitation recited in claim 30. See Final Act. 1 O; see also Collier Fig.
2B. The Appellant does not direct us to any error in the Examiner's finding.
Therefore, the obviousness rejection of claim 30 is sustained.
5. Rejections (4), (7}--{9), (11)
The Appellant argues that claims 3, 7, 9, 11, and 27 are patentable for the
reasons presented in support of the patentability of claim 1. App. Br. 6, 7-8, 9.
For the reasons discussed above, the Appellant's arguments do not demonstrate
reversible error in the obviousness rejection of claim 1. Therefore, the obviousness
rejections of claims 3, 7, 9, 11, and 27 are sustained.
6. Rejections (5) and (6)
Claim 5 depends from claim 4 and recites "wherein the two outer layers
include ceramic fibers and the insulation filler has a chalky consistency." App. Br.
12.
The Appellant argues that because "the foam is applied in Henderson in a
liquid foam form, it is not possible for the foam to have a chalky consistency as
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claimed." App. Br. 6; see also App. Br. 7 (arguing that claim 6 is not obvious
because Henderson's foam does not have a chalky consistency as claimed).
The Examiner finds that Collier in combination with Batallas, not Henderson
alone, teaches a loose fill insulation having a chalky consistency. 26 Final Act. 11.
The Appellant does not direct us to any error in the Examiner's finding. Therefore,
the obviousness rejections of claims 5 and 6 are sustained.
7. Rejection (12)
Claim 14 depends from claim 12 and recites "wherein the inner middle
insulation layer includes two outer layers and an insulation filler located
therebetween, and the two outer layers include ceramic fibers and the insulation
filler has a chalky consistency." App. Br. 14.
The Appellant argues that "a foam application cannot create chambers that
contain an insulation filler." App. Br. 10.
The Appellant is apparently referring to the insulation layer disclosed in
Henderson. In the rejection on appeal, however, the Examiner finds Collier
discloses an insulation layer comprising a membrane that forms pockets filled with
insulation. Final Act. 9, 17; see also Collier ,r 31 ( disclosing an insulation panel
including a cover or jacket encasing an insulation material). The Appellant does
not direct us to any error in the Examiner's finding. Therefore, the obviousness
rejection of claim 14 is sustained.
26 Contrary to the Appellant's argument, the Examiner is not proposing to add
loose fill insulation to Henderson's insulation layer. See Reply Br. 3. Rather, in
the obviousness rejection on appeal, the Examiner is substituting Henderson's
insulation layer with the insulation layer disclosed in Collier and relying on
Batallas to show that Collier's loose fill insulation has a chalky consistency. Final
Act. 11.
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8. Rejection (13)
Claim 28 depends from claim 1 and recites "wherein the inner middle
insulation layer includes ceramic fibers." App. Br. 15.
The Examiner finds Kordyban discloses an insulating material for a pipeline.
The Examiner finds the insulating material provides a radiant heat barrier and
includes ceramic fibers as recited in claim 28. Final Act. 18. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art to
modify Henderson's tubing with the ceramic fibers disclosed in Kordyban "to
obtain a radiant heat barrier." Final Act. 18. In other words, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art to
substitute Henderson's insulating material with the insulating material disclosed in
Kordyban.
The Appellant does not direct us to any error in the Examiner's factual
findings. Rather, the Appellant argues that "[i]f the insulation layer was applied as
a layer including two outer layers with an insulation filler there before [ as disclosed
in Kordyban], it would not be possible to apply a liquid foam layer [as disclosed in
Henderson]." App. Br. 10. Therefore, the Appellant argues that "a very dense
foam layer could not be created as required" and a pipe or tubing "with the ideal
insulation layer" would not be produced. App. Br. 10.
Significantly, the Appellant does not direct us to any evidence establishing
that Henderson's tubing, modified with the insulating material disclosed in
Kordyban, would not be suitable for its intended use, i.e., oil recovery and oil
transportation, as well as natural gas recovery and water, steam, and sewer pipes.
Henderson, col. 1, 11. 39-48. In that regard, we note that the insulating material
disclosed in Kordyban is said to be suitable for insulating cryogenic liquid
containers. Kordyban, col. 4, 11. 34--40.
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Based on the foregoing, a preponderance of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the obviousness rejection of
claim 2 8 is sustained.
C. DECISION
The Examiner's decision is affirmed. 27
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
27 The Examiner's decision rejecting claim 4 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Henderson, Nooren, Igarashi, Samour, and
Sugita is reversed. However, the Examiner's decision rejecting claim 4 under 35
U.S.C. § 103(a) as unpatentable over the combination of Henderson, Nooren,
Igarashi, Samour, Sugita, and Collier is affirmed.
14