Ex Parte Ripperger et al

Patent Trial and Appeal Board

Sep 26, 2016

12939199 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/939, 199 11/04/2010
30734 7590 09/28/2016
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT A VE. N.W.
WASHINGTON, DC 20036-5304
FIRST NAMED INVENTOR
Robert M. Ripperger
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.
040128.021500 4977
EXAMINER
CRANDALL, JOEL DILLON
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
eofficemonitor@bakerlaw.com
edervis@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. RIPPERGER, MARK BARTLETT,
JOHN E. KNOLLE, and MICHAEL L. PITTINGER
Appeal2014-007289
Application 12/939,199
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert M. Ripperger et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's final rejection of claims 1-20. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM
1 Although Appellants submitted an Amendment with the Appeal Brief
attempting to cancel claim 17 and add the subject matter thereof to claim 16,
the Amendment was not entered by the Examiner. Thus, claim 1 7 has not
been canceled. See Advisory Action (dated May 16, 2014); Appeal Br. 33
(Claims App.). In addition, the amendment to claim 16 in the Claims
Appendix of the Appeal Brief is inaccurate. Id.
Appeal2014-007289
Application 12/939,199
CLAIMED SUBJECT MATTER
Independent claims 1, 9, and 16 are pending. Independent claim 1
illustrates the claimed subject matter and is reproduced below.
1. An in-line sonde carrier for a plumbing snake,
compnsmg:
a proximal coupling for releasably connecting to a distal
end of a plumbing snake, the proximal coupling including an
axial through-passage;
an elongated sonde carrying section constructed of coiled
metal wire, the sonde carrying section being mounted to the
proximal coupling;
a distal coupling mounted to the sonde carrying section;
a tool including a tool coupling configured to releasably
engage the distal coupling of the sonde carrying section; and
a sonde tether assembly, including
a retainer shaped to be received and captured
within the proximal coupling, and
an elongated, flexible tether coupled to and
extending distally from the retainer, the tether being
adapted to mount to a sonde extending distally from the
tether;
wherein the tether and the sonde of the sonde tether
assembly are received within the sonde carrying section via
insertion through the axial through-passage of the proximal
coupling.
Appeal Br. 30 (Claims App.).
REJECTION
I. Claims 1-3 and 5-13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bartucciotto (US 2009/0300863 Al, pub. Dec. 10,
2009), Peach (US 6,421,871 Bl, iss. July 23, 2002), and Deutsch (US
2,880,435, iss. Apr. 7, 1959). Final Act. 2.
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Application 12/939,199
IL Claims 4, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bartucciotto, Deutsch, Peach, and Auringer (US
1,863,460, iss. June 14, 1932). Final Act. 7.
III. Claims 16-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bartucciotto, Deutsch, and Peach, and Schnepp (US
2,608,421, iss. Aug. 26, 1952). Final Act. 9.2
ANALYSIS
Rejection I
Appellants argue claims 1-3 and 5-13 as a group. Appeal Br. 12-19.
We select claim 1 as representative. Claims 2, 3, and 5-13 stand or fall with
claim 1.
The Examiner finds that Bartucciotto discloses an in-line sonde carrier
comprising a proximal coupling 102 for releasably connecting to a distal end
of a plumbing snake 710, an elongated sonde carrying section 104, 704
containing a sonde 712 and mounted to the proximal coupling 102, and a
distal coupling (identified as end cap 106) mounted to the sonde carrying
section 104, 704. Ans. 2 (citing Bartucciotto Figs. 1, 7, i-f 6). The Examiner
finds that Bartucciotto fails to disclose (1) a tool and a tool coupling
configured to engage at its end cap 106, and (2) a sonde tether. Id. The
Examiner finds that Peach discloses a tool and a tool coupling (56, 67)
configured to releasably engage a distal coupling 30 of a carry section 40.
2 Claim 20 is not addressed in the statement of the rejection, but is
addressed in the Examiner's findings and conclusions. We consider the
statement of the rejection to include a typographical error. Also, although
this rejection was addressed in two separate sections by the Examiner (Ans.
10, 11), the sections are properly combined here as one rejection.
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Application 12/939,199
Id. at 3 (citing Peach Fig. 6, 5:33--45). The Examiner also finds that Deutsch
discloses a pipe cleaner having a tether 22 with a retainer 48 "received and
captured within [a] proximal coupling." Id. (citing Deutsch, Fig. 2).
The Examiner concludes that it would have been obvious to modify
the end ofBartucciotto's device with Peach's tool and tool coupling "to
better aid in freeing the inside of pipes from possible clogs ... as it is ...
moved through the pipe." Ans. 3. The Examiner further concludes that it
would have been obvious to "attach a tether as taught by Deutsch between
the coupling and the sonde of Bartucciotto . .. to allow retrieval of the sonde
in case of the sonde carrying section breaking." Id.
Tool with Tool Coupling and Sande Carrying Section
Appellants contend that the combination of cited art does not teach or
suggest a tool with both a tool coupling and a sonde carrying section.
Appeal Br. 13. Appellants support this contention by arguing that
Bartucciotto does not suggest that its end cap can be used as a mechanical
tool, "nor is there any suggestion or capability of installing a tool beyond
end cap 706" and in line with Bartucciotto's sonde carrier. Id. at 14.
Appellants continue that it would not have been obvious to add a sonde to
Peach or Deutsch. Id.
The Examiner responds that, while Bartucciotto discloses a plumbing
snake with a sonde carrying section, the rejection relies on Peach for
disclosing tools coupled to the end of a plumbing snake "as a way to handle
a wide variety of clogs." Ans. 15. According to the Examiner, because
Bartucciotto "can be used as a pipe cleaning device [Bartucciotto; paragraph
0003] and since Peach teaches these end attachments assist in pipe
cleaning," it would have been obvious "to modify the end cap of
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Appeal2014-007289
Application 12/939,199
Bartucciotto with the tools taught by Peach to better clear the pipe." Id.
(brackets in original). The Examiner contends that, even if Bartucciotto is
not intended to be used as a plumbing snake, one skilled in the art would
expect "Bartucciotto to come into contact with clogs and blockages," and
would therefore find it advantageous to employ various coupled tools at the
end of Bartucciotto "to clear possible clogs and blockages along the way."
Id.
We agree with the Examiner's findings regarding the disclosure of
Bartucciotto and Peach. Further, Appellants have not persuaded us that the
Examiner's conclusion of obvious lacks a rational basis.
Teaching Away
Appellants also argue that Bartucciotto teaches away from adding a
tool with a tool coupling. Appeal Br. 15. Appellants contend that
Bartucciotto discourages using "flexible push rods modified with probes ...
because they are costly and vulnerable to breakage." Id. at 15-16 (citing
Bartucciotto i-f 3).
The Examiner responds that Bartucciotto does not teach away from
adding a tool and tool coupling. Ans. 16. Rather, the Examiner contends,
Bartucciotto teaches away from using a micro-camera for visually inspecting
plumbing because they are expensive and can break. Id. (citing Bartucciotto
,-r 3).
The Examiner has the better position. The cited paragraph of
Bartucciotto, at best, teaches away from employing a micro-camera to
visually inspect plumbing, because they are costly and break.
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Appeal2014-007289
Application 12/939,199
Sande Carrier and Tool Combination not Derived
Appellants argue that the prior art references fail to contemplate "a
plumbing snake that includes a sonde carrier in-line with a plumbing tool,"
such that "the only way that the Office [A ]ction could have found the
various elements of the claims ... was to use hindsight reconstruction of the
invention as claimed based solely upon the claim language itself, which is
impermissible." Appeal Br. 16-17.
The Examiner responds that Bartucciotto recognizes that sonde loss is
an issue, and Deutsch discloses preventing loss via an inner cable (tether)
that is "made of two helical portions so constructed that if one helical
portion should break it is possible to remove the cleaning cable by means of
the other helical portion." Ans. 17 (citing Deutsch 1 :31-35). The Examiner
concludes that it would have been obvious to modify "Bartuciotto's [sic]
sonde carrying portion with a tether connected to the proximal coupling [as
in Deutsch] to prevent loss of the sonde" and, while Deutsch's opposing
helical arrangement prevents kinks by neutralizing twisting forces, one
skilled in the art "would not disregard the advantage of a tether taught by
Deutsch merely because they could not provide the [opposing] helical
arrangement" when accommodating a sonde. Id. at 17-18.
Regarding the combination with Peach, the Examiner responds that
Bartucciotto states that its device can be used for pipe cleaning, and Peach
discloses various tools used for pipe cleaning and a coupling at a tip that
accommodates the tools. Ans. 18. The Examiner concludes that it would
have been "obvious to modify the end cap of Bartucciotto with the tools
taught by Peach to better clear the pipe." Id.
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Application 12/939,199
Lacking a persuasive explanation from Appellants regarding why the
Examiner's reasoning lacks a rational underpinning, we are not persuaded by
this argument.
Rejection II
Appellants make no argument that claims 4, 14, and 15 would be
patentable over Bartucciotto, Deutsch, Peach, and Auringer, if claim 1 is not
patentable over Bartucciotto, Deutsch, and Peach. We therefore sustain
Rejection II for the reasons set forth above regarding Rejection I.
Rejection III
Appellants argue claim 16 as if it were amended to include the subject
matter of claim 17. Appeal Br. 20, 22-26. As indicated above, the
Amendment was not entered by the Examiner. However, we address the
arguments presented by Appellants as they apply to the correct pending
claims. In addition, Appellants argue claims 16-20 as a group. See id. at
20. We select pending, unamended claim 16 as representative. Claims 17-
20 stand or fall with claim 16.
Tether
Appellants argue that one skilled in the art would understand that the
issue of sonde loss is already addressed by Bartucciotto' s sonde
encapsulation, such that one skilled in the art would not "look to Deutsch for
an additional method to retain the sonde." Appeal Br. 21. Appellants also
argue that Deutsch does not disclose a tether and, even if Deutsch's element
22 is a tether, Deutsch teaches away from the proposed combination because
element 22 "spans the entire interior space prohibiting a sonde from being
placed within the space of the outer helical member." Id.
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The Examiner responds that Deutsch's inner helical member 22 is
provided to (1) tether parts of the cable in case of breakage, and (2) prevent
twisting in the cable. The Examiner contends that, even if encapsulation of a
sonde would prevent Deutsch's inner helical member from spanning the
entire length to prevent cable twisting, one skilled in the art would recognize
that Deutsch's inner helical member 22 "could still span between the
proximal coupling and a part, in this case a sonde, to prevent loss of the
sonde in case of breakage." Ans. 19 (citing Deutsch 1:31-35).
Absent persuasive argument to the contrary, we agree with the
Examiner that one skilled in the art would understand that Deutsch's inner
helical member 22 could span between a proximal coupling and a sonde to
prevent loss of the sonde if the encapsulating coils 704 break. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983), In re Nievelt, 482 F.2d 965 (CCPA 1973).
Tool with Tool Coupling and Sande Carrying Section
Appellants again argue that the cited art does not disclose a tool with a
tool coupling and a sonde carrying section. Appeal Br. 22. For the reasons
set forth above regarding claim 1, we are not persuaded by this argument.
Teaching Away
Appellants again argue that Bartucciotto teaches away from adding a
tool with a tool coupling, contending that Bartucciotto discourages using
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Application 12/939,199
"flexible push rods modified with probes ... because they are costly and
vulnerable to breakage." Appeal Br. 25 (citing Bartucciotto i-f 3). For the
reasons set forth above regarding claim 1, we are not persuaded by this
argument.
Sande Carrier and Tool Combination not Derived
Appellants again argue that the prior art references fail to contemplate
"a plumbing snake that includes a sonde carrier in[-]line with a plumbing
tool," such that "the only way that the Office [A]ction could have found the
various elements of the claims ... was to use hindsight reconstruction of the
invention as claimed based solely upon the claim language itself, which is
impermissible." Appeal Br. 26-28. For the reasons set forth above
regarding claim 1, we are not persuaded by this argument.
DECISION
We AFFIRM the rejection of claims 1-3 and 5-13 under 35 U.S.C.
§ 103(a) as unpatentable over Bartucciotto, Peach, and Deutsch.
We AFFIRM the rejection of claims 4, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Bartucciotto, Deutsch, Peach, and Auringer.
We AFFIRM the rejection of claim 16-20 under 35 U.S.C. § 103(a)
as unpatentable over Bartucciotto, Deutsch, Peach, and Schnepp.
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
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