Ex Parte Resendes

Patent Trial and Appeal Board

Dec 1, 2016

12689931 (P.T.A.B. Dec. 1, 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.
12/689,931 01/19/2010 Mark David Resendes 22614/YOD (ITWO:0400) 6810
52145 7590 12/01/2016
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
12/01/2016 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 MARK DAVID RESENDES
Appeal 2015-0012861’2
Application 12/689,931
Technology Center 3700
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, “[t]he invention relates generally to an air
hose assembly, and[,] more particularly, to a hose assembly that facilitates
1 Our decision references Appellant’s Specification (“Spec.,” filed Jan. 19,
2010) and Appeal Brief (“Appeal Br.,” filed May 19, 2014), as well as the
Final Office Action (“Final Action,” mailed Nov. 19, 2013) and the
Examiner’s Answer (“Answer,” mailed Sept. 3, 2014).
2 Appellant indicates that Hobart Brothers Company is the real party in
interest. Appeal Br. 2.
Appeal 2015-001286
Application 12/689,931
the transfer of preconditioned air from an air delivery system to a
destination, such as an aircraft.” Spec. 12. Claims 1, 10, and 15 are the
only independent claims on appeal. See Appeal Br., Claims App. We
reproduce claim 1, below, as representative of the appealed claims.
1. An air hose delivery assembly, comprising:
an external conduit; and
a continuous inner liner disposed within the external
conduit and secured to the external conduit only at ends of the
continuous inner liner to form a tubular structure configured to
be collapsed to a flat structure.
Id.
REJECTION AND PRIOR ART
The Examiner rejects claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Koizumi (US 2008/0185064 Al, pub. Aug. 7, 2008) and
Berardi (US 8,291,941 Bl, iss. Oct. 23, 2012). See Final Action 2—3; see
also Answer 2—3.
ANALYSIS
Independent claim 1 recites, among other limitations, “a continuous
inner liner disposed within the external conduit and secured to the external
conduit only at ends of the continuous inner liner.” Appeal Br., Claims App.
The Examiner finds that
Koizumi discloses all of the recited structure with the exception
of the liner only being connected to the outer layer at the ends.
The reference to Berardi discloses that it is old and well known
in the art to form the inner single continuous layer 14 and outer
layer 12 of hoses that are only connected at the ends of the hose
to assist with storage of the hose.
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Appeal 2015-001286
Application 12/689,931
Final Action 3; see also Answer 3. In response to Appellant’s argument that
“Berardi does not qualify as prior art” (Appeal Br. 7) (emphasis omitted),
with which we agree, the Examiner determines that
[Berardi is] used only as evidence and not as part of a
combination, and since such is only being used for evidence is
not required to pre-date the filing date of the instant application.
The Berardi reference sets forth that it is known in the art to not
connect the inner and outer layers of hoses, where the only
connection would be formed by the connectors at the ends, and
that such is old and known in the art. Berardi references at least
a couple references in the background section of the reference
that point to teachings of not connecting the inner and outer
layers further supporting that Berardi understood that this was a
known feature in the art (Answer 4).
We determine that the Examiner’s statements are insufficient to support a
determination, based on a substantial evidence, that it was old and well
known, prior to the filing of Appellant’s application, to provide “a
continuous inner liner disposed within the external conduit and secured to
the external conduit only at ends of the continuous inner liner” as recited in
claim 1.
We note that the Examiner does not direct our attention to any place
where Berardi discloses it was old or well known, prior to the filing date of
Appellant’s application, to use “a continuous inner liner disposed within the
external conduit and secured to the external conduit only at ends of the
continuous inner liner,” as claimed, and does not direct our attention to
anywhere Berardi describes any other reference as disclosing such an old
and well known inner liner. Even the Examiner’s ostensible reliance on
Fujimoto, discussed in Berardi’s column 5, is insufficient, as it is unclear
whether the Examiner finds that Fujimoto does or does not disclose the
claimed inner liner, and because it appears that Fujimoto does not, in fact,
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Appeal 2015-001286
Application 12/689,931
disclose such an inner liner. See Answer 6 (“[A]ppellant[’]s arguments with
regards to Fujimoto are immaterial when this reference is not in fact being
used as the teaching reference, but was only given as further support that
Berardi knew this feature to be old and known in the art”); see also Appeal
Br. 9 (“Fujimoto also clearly describes and illustrates that there are other
points between the inner wall 2 and the outer wall 3 that do remain bonded.
See, e.g., [Fujimoto] FIGS. 1[—]3.” Further, we decline to review, without
further guidance from the Examiner, any of the more than two dozen
references discussed by Berardi to determine whether any discloses (while
predating the filing date of Appellant’s application) “a continuous inner liner
disposed within the external conduit and secured to the external conduit only
at ends of the continuous inner liner.”
Thus, based on the foregoing, we do not sustain the rejection of
independent claim 1, or the rejection of claims 2—9 that depend from
claim 1. See Appeal Br., Claims App. Further, inasmuch as each of
independent claims 10 and 15 recites a similar limitation as claim 1, and are
rejected for similar reasons as claim 1, we do not sustain the rejection of
independent claims 10 or 15, or the rejection of their dependent
claims 11—14 and 16—20. See Appeal Br., Claims App.; see also
Answer 2—3. We note that with respect to independent claim 15, which
recites “a continuous liner configured to be secured to one or more
additional layers only at ends of the continuous liner” (Appeal Br., Claims
App.), the Examiner does not make any findings apart from those based on
Berardi that Koizumi’s liner is capable of being or otherwise may be secured
to one or more of Koizumi’s additional layers only at ends of the liner (see
Answer 2—3).
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Appeal 2015-001286
Application 12/689,931
DECISION
We REVERSE the Examiner’s obviousness rejection of claims 1—20.
REVERSED
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