Ex Parte Roberts et al

Patent Trials and Appeals Board

Jul 3, 2019

14132763 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/132,763 12/18/2013
149749 7590 07/08/2019
ITW c/o MCANDREWS HELD & MALLOY
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
James Martin Roberts
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.
62364US01 (62071-US) 6417
EXAMINER
PANCHOLI, VISHAL J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/08/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MARTIN ROBERTS and
JOHNNY DALE ANGEL
Appeal2018-000242
Application 14/132,763
Technology Center 3700
Before BENJAMIN D. M. WOOD, SCOTT C. MOORE, and
FREDERICK C. LANEY, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000242
Application 14/132,763
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The claims are directed to jacket systems for enclosing and protecting
insulated pipes, and more particularly to jacket joints, which are shaped to fit
over pipe elbows and tees. Spec ,r,r 1-2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
Furugen
Crandall
Boncalo
1. A system comprising:
a protective jacket for insulating pipe, wherein the
protective jacket comprises:
a first metal shell comprising an interior
surface and an exterior surface, wherein the
interior surface comprises a moisture protective
coating, and the exterior surface comprises a film
adhered to the exterior surface by an adhesive,
wherein the adhesive comprises a medium tack
adhesive that provides for toolless removal of the
film, and
wherein the first metal shell is produced by
applying the film to the exterior surface before
form pressing or punch molding the first metal
shell into a shape configured to follow contours
of the pipe.
REFERENCES
US 6,840,283 B2
US 2007/0126201 Al
US 2010/0156091 Al
2
Jan. 11, 2005
June 7, 2007
June 24, 2010
Appeal2018-000242
Application 14/132,763
REJECTIONS
Claims 1-10 are rejected under 35 U.S.C. § 103 as unpatentable over
Boncalo and Crandall.
Claims 11-20 are rejected under 35 U.S.C. § 103 as unpatentable over
Boncalo, Crandall, and Furugen.
ANALYSIS
Claims 11-20-Rejected as Unpatentable
over Boncalo, Crandall, and Furugen 1
Appellant argues claims 11-20 as a group. App. Br. 5-10. We select
claim 11 as representative of the group, and decide the appeal of this
rejection on the basis of claim 11 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Boncalo teaches all of the limitations of
claim 11 except for the step of applying a film to the exterior surface of the
metal sheet using an adhesive, wherein the adhesive comprises a medium
tack adhesive that provides for toolless removal of the film. Final Act. 4---6
(citing Boncalo ,r,r 13, 40-41); Ans. 9 (citing Boncalo ,r,r 3, 6). 2 For this
limitation, the Examiner relies on Crandall. Final Act. 5 ( citing Crandall
,r 11, 73, Figs. 2, 33); Ans. 9-10. The Examiner determines that it would
have been obvious to one of ordinary skill in the art at the time of the
invention "to have provided an additional polymeric film layer [with] a
1 We address the rejections in the same order that Appellants address them in
the Appeal Brief. App. Br. 5-14.
2 The Examiner relies on Crandall and Furugen, in addition to Boncalo, to
teach punch molding or form pressing metal parts. Final Act. 5 ( citing
Crandall ,r 61, Fig. 5; Furugen, Fig. 3); see Furugen, 4:23-32. Based on
these teachings the Examiner concludes that press forming or punch molding
metal parts is "widely known in the art." Id. at 5---6.
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Application 14/132,763
medium-tack adhesive on the exterior surface of the metallic shell in the
device of Boncalo as taught by Crandall in order to protect the metal shell
during the manufacturing process from any surface damage while also
providing an easy removal option via the medium-tack adhesive." Final Act.
5---6.
We have considered Appellants' arguments in support of the
patentability of claim 11, but find them unpersuasive for essentially the same
reasons as set forth by the Examiner. We address specific arguments below
for emphasis.
Appellants first argue that although "the examiner appear[ s] to
suggest modifying Crandall by replacing all of Crandall's bending stages A
through Q into a single punch mold operation as taught by Furugen,"
Crandall's "step rail body appears to include a geometry that is non-
conforming to manufacture by punch molding or form pressing." App. Br.
9. This argument mischaracterizes the proposed combination and is
therefore unpersuasive. The Examiner is not proposing to modify Crandall
to incorporate punch molding, but rather to modify Boncalo, which already
teaches punch molding jacket joints, to incorporate Crandall's step of
applying a protective film. Ans. 9.
Appellants also argue that "the examiner has no evidence on the
record that press forming or punch molding a film would result in a desired
film attachment to pipe jacket insulation, as opposed to: 1) the film sliding
away from the pipe jacket because, for example, of higher pressures found in
press forming or punch molding, and/or 2) certain portions (or all) of the
film being tom because of the higher pressures." Reply Br. 2-3. This
argument is also unpersuasive. As an initial matter, Appellants have not
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Application 14/132,763
provided any evidence that press forming or punch molding Boncalo's
jacket joint would necessarily require a higher pressure than would be
required to roll-form Crandall's vehicle step rail. In any event,
"[o]bviousness [under 35 U.S.C. § 103] does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success." In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988) (citations
omitted). Appellants have not persuaded us that the Examiner erred in
finding that, because Crandall's film remains in place on a metal sheet
undergoing Crandall's 17-step roll-molding process, one of ordinary skill in
the art would have had a reasonable expectation that Crandall's film would
also remain in place on a metal sheet undergoing Boncalo 's press
forming/punch molding.
Appellants next argue that Crandall is non-analogous art. App. Br.
11-12. A reference qualifies as prior art for an obviousness determination
only when it is analogous to the claimed invention. In re Clay, 966 F .2d
656, 658 (Fed.Cir.1992). "Two separate tests define the scope of analogous
prior art: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved." In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (internal citations omitted). "The Supreme
Court's decision in KSR International Co. v. Teleflex, Inc . ... directs us to
construe the scope of analogous art broadly." Wyers v. Master Lock Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010) (citing 550 U.S. 398,402 (2007)).
Appellants assert that Crandall is not in the same field of the
inventor's endeavor because "the art of manufacturing vehicle steps via roll
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Appeal2018-000242
Application 14/132,763
forming is not in the same field of endeavor as jacket manufacturing for
industrial conduits or pipes via punch molding or form pressing." App. Br.
11. Appellants also contend that Crandall in not reasonably pertinent
because "a person of ordinary skill in the art would not be apt to refer to
form rolling of vehicle steps to solve a problem having to do with press
forming or punch molding of pipe jackets." Id. The Examiner responds,
inter alia, that Crandall is reasonably pertinent to the problem addressed by
the inventor, which is to provide a layer that protects a metal sheet during
manufacture of an article, and is easy to remove after manufacture, and in
fact addresses the problem in the same way. Ans. 11.
"A reference is reasonably pertinent if ... it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem." In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992). "Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve." Id. Crandall uses
a protective film layer for precisely the same purpose as does the invention:
to provide protection during manufacture and easy removal after
manufacture. Thus, we agree with the Examiner that Crandall is reasonably
pertinent to the claimed invention.
Finally, Appellants assert that they have provided evidence of
secondary considerations, such as commercial success and unexpected
results, which support the patentability of the claims. App. Br. 12. For
commercial success, Appellants offer a Declaration from one of the named
inventors, James Roberts, who testifies that metal shells made in accordance
with the claims "have been proven a commercial success, at least in part by
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Application 14/132,763
incorporating the adhesive film." Id. at 12-13; see Roberts Deel. ,r,r 6-7.
For unexpected results, Appellants offer (App. Br. 12) the following
testimony from the same Declaration:
At the time of the invention, it was believed that painting the
metal shell was sufficient protection for the metal shell, however,
it was found that it was possible to gain additional protection
(e.g., scratch protection and/or shipping protection) by applying
an adhesive film instead of paint. Further, it was found that the
adhesive film did not tear during pressing of a metal sheet into
the form of a metal shell.
Roberts Deel. ,r 7.
"In the ex parte process of examining a patent application ... the PTO
lacks the means or resources to gather evidence which supports or refutes
the applicant's assertion that the sales constitute commercial success." In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (internal citation omitted). Thus,
to establish the commercial success of a patented product, an application
must provide "hard evidence." Id. at 140. Such evidence must relate not
only to the number of units sold, but also indicate whether "the reported
sales represent a substantial share of any definable market." Id. (internal
citation and quotation marks omitted). Here, Appellants have not provided
evidence indicating the number of units sold or whether such sales represent
a substantial share of the relevant market. Accordingly, we accord little
weight to Appellants evidence of commercial success.
Regarding evidence of unexpected results, such evidence "must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharm. USA, Inc., 752 F.3d 967, 9776 (Fed. Cir. 2014)
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Application 14/132,763
(internal citation omitted). In this case, as discussed above, Crandall teaches
that film applied to a metal sheet survives a 17-step roll-forming process.
Thus, we are not persuaded that one of ordinary skill in the art would not
have expected the film to survive press forming/punch molding, and
therefore accord little weight to Appellants' evidence of unexpected results.
Claims I-JO-Rejected as obvious over Boncalo and Crandall
Appellant argues claims 1-10 as a group. App. Br. 13-14. We select
claim 1 as representative of the group, and decide the appeal of this rejection
on the basis of claim 1 alone. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In determining that claim 1 is unpatentable over Boncalo and
Crandall, the Examiner does not give any patentable weight to the limitation
"wherein the first metal shell is produced by applying the film to the exterior
surface before from pressing or punch molding the first metal shell into a
shape configured to follow contours of the pipe." Final Act. 2-3. The
Examiner characterizes claim 1 as a product-by-process claim and asserts
that "such claims are not limited to the manipulations of the recited steps,
only the structure implied by the steps." Id. at 3 (citing MPEP § 2113). The
Examiner finds that the combination of Boncalo and Crandall teaches the
structural limitations of claim 1. Id. at 2-3.
Appellants respond that the product of claim 1 "is structurally
different than Boncalo because it includes a protective film applied via form
pressing or punch molding that may be, at a later time, removed by hand."
App. Br. 13. This argument is unpersuasive because it does not address the
combined teachings of Boncalo and Crandall, which is the rejection
articulated by the Examiner. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
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references. In re Keller, 642 F.2d 413,425 (CCPA 1981). Appellants
further assert that combining Crandall with Boncalo is improper because
"Crandall is a different product entirely." App. Br. 14. This assertion is
essentially the same as Appellants' analogous-art argument, which we found
unpersuasive. Appellants also request that we consider the secondary-
considerations evidence discussed above in connection with claims 11-20 as
also probative of the patentability of claims 1-10. Id. However, we give
this evidence little weight for the reasons discussed above.
DECISION
For the above reasons, the Examiner's rejection of claims 1-20 is
affirmed.
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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