Ex Parte Purdon

Patent Trial and Appeal Board

Dec 13, 2016

13661193 (P.T.A.B. Dec. 13, 2016)

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.
13/661,193 10/26/2012 Jeffrey Purdon P081 P02395-US1 8996
3017 7590 12/13/2016
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI02903
EXAMINER
SILBERMANN, JOANNE
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
12/13/2016 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 JEFFREY PURDON
Appeal 2015-003311
Application 13/661,193
Technology Center 3600
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
SEAN P. O’HANLON, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-003311
Application 13/661,193
CLAIMED SUBJECT MATTER
The claims are directed to a pipe insulation fitting cover. Spec. 12.
Claim 1, reproduced below with emphasis added, is the sole independent
claim and is illustrative of the claimed subject matter:
1. A pipe fitting cover for covering an angled pipe joint
comprising:
a shell formed from a flexible resilient material having a
shape which is substantially the same shape as an angled pipe
joint to be covered, said shell including two peripheral edges that
encircle sections of pipe extending from said angled pipe joint
and a longitudinal seam extending between said peripheral edges
thereby allowing said shell to be opened and installed onto said
angled pipe joint; and
a gasket material installed along said peripheral edges
and at said longitudinal seam to form a seal against an outer
surface of said sections ofpipe.
Appeal Br. 12 (Claims App.).
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Zack
Helmsderfer
US 4,139,026
US 5,915,413
Feb. 13, 1979
June 29, 1999
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Appeal 2015-003311
Application 13/661,193
REJECTIONS1
(I) Claims 4, 8, and 9 are rejected under 35U.S.C. § 112, second
paragraph, as indefinite.
(II) Claims 1—4, 6, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Zack.
(III) Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Zack.
(IV) Claims 5, 7, and 10 are rejected under 35 U.S.C. 103(a) as
unpatentable over Zack and Helmsderfer.
OPINION
Rejection (I)
The Examiner finds that the term “said gasket” in claims 4, 8, and 9
does not have antecedent basis because claim 1 uses the word “gasket” only
in the phrase “gasket material,” i.e., claim 1 recites the material of a gasket,
not the gasket itself. Final Act. 3; see also Ans. 2. The Examiner finds that
the dependent claims recite the terms “said gasket” as well as “said gasket
material.” Id.
Appellant asserts that antecedent basis is provided for “said gasket” in
claims 4, 8, and 9 because “the term gasket was clearly defined as a positive
feature and limitation in Claim 1. Claims 4, 8 and 9 all depend from Claim
1.” Br. 6.
1 The drawings are objected to (Final Action 2), and Appellant traverses this
objection (Appeal Br. 5). We do not address the objection of the drawings
because such matters are not appealable and instead should be addressed via
petition.
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Appeal 2015-003311
Application 13/661,193
We agree with the Examiner on this issue. The term “a gasket
material” in claim 1 provides antecedent basis for a material, not for a
gasket. Consistent with this antecedent basis, claim 2 properly uses the term
“said gasket material.” In contrast, claims 4, 8, and 9 use the term “said
gasket.” Aside from the clear difference between the material used to make
a gasket, i.e., gasket material, and a device known as a gasket, the use of two
different gasket-related terms in claims 2, 4, 8, and 9, which all depend from
claim 1, implies that the terms “gasket” and “gasket material” have different
meanings in these claims. Accordingly, we sustain the Examiner’s rejection
of claims 4, 8, and 9 as indefinite.2
Rejection (II)
The Examiner finds that Zack discloses all of the features recited in
claim 1, and in particular, discloses that “[gjasket material 4 is installed
along the peripheral edges and at the longitudinal seam (at the edges
thereof). The gasket material 4 is arranged to prevent infiltration of moisture
and may include adhesive (column 2 lines 53—54).” Final Act. 3.
Appellant argues that Zack describes element 4 as tape or restraining
means, and element 4 is not arranged to prevent infiltration of moisture. See
Br. 6—7. Appellant also asserts that “element 4 is applied at the outside of
the elbow fitting. In no way could this tape applied to the outside surface of
the fitting operate as a gasket as between the fitting and the pipe insulation
to prevent infiltration of moisture.” Id. at 7.
2 Although we sustain the rejection of claims 4, 8, and 9 as being indefinite
under 35 U.S.C. § 112, second paragraph, the indefmiteness does not impact
our consideration of the rejections under 35 U.S.C. §§ 102, 103.
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Appeal 2015-003311
Application 13/661,193
As shown in Figure 4 of Zack, tape 4 is disposed around an outer
periphery of cover 2. Tape 4 is not disclosed as being exposed to an interior
surface of cover 2, i.e., tape 4 is not exposed to an outer surface of a pipe.
Accordingly, tape 4 is not arranged “to form a seal against an outer surface
of said sections of pipe” as required by claim 1. We therefore do not sustain
the rejection of claim 1 and claims 2—4, 6, and 8 depending therefrom as
anticipated by Zack.
Rejections (III)—(IV)
Neither the Examiner’s modification to Zack based on design choice
in Rejection (III) nor the Examiner’s reliance on Helmsderfer in Rejection
(IV) remedies the deficiency discussed above regarding the rejection of
claim 1 as anticipated by Zack. See Final Act. 4. Accordingly, we do not
sustain Rejections (III) and (IV).
DECISION
(I) We affirm the rejection of claims 4, 8, and 9 under 35 U.S.C.
§112, second paragraph, as indefinite
(II) We reverse the rejection of claims 1—4, 6, and 8 under 35
U.S.C. § 102(b) as anticipated by Zack.
(III) We reverse the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Zack.
(IV) We reverse the rejection of claims 5, 7, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Zack and Helmsderfer.
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Appeal 2015-003311
Application 13/661,193
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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