Ex Parte Schmelter et al

Patent Trial and Appeal Board

Dec 16, 2013

12285584 (P.T.A.B. Dec. 16, 2013)

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.
12/285,584 10/09/2008 Klaus Schmelter 206-055 8817
47988 7590 12/16/2013
WALTER OTTESEN
PO BOX 4026
GAITHERSBURG, MD 20885-4026
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
12/16/2013 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 KLAUS SCHMELTER and CHRISTOF KIRSCH
____________

Appeal 2012-002775
Application 12/285,584
Technology Center 3700
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/285,584

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STATEMENT OF THE CASE
Klaus Schmelter and Christof Kirsch (“Appellants”) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-6. We
have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 5 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A heated urea conduit arrangement for an exhaust-gas
aftertreatment system of an internal combustion engine, the
arrangement comprising:
a first hose conduit for conducting an aqueous urea
solution;
a second hose conduit for conducting heated water;
said first and second hose conduits running side-by-side
and parallel to each other; and,
a shrink hose surrounding said first and second hose
conduits and said shrink hose being configured to shrink when
heated thereby causing said first and second conduits to run in
tight contact with each other thereby ensuring a good thermal
transfer therebetween.
App. Br. 15, Claims App’x.
References
The Examiner relies upon the following prior art references:
Woodall US 3,669,157 June 13, 1972
Stine US 4,194,536 Mar. 25, 1980
Pithouse US 4,631,098 Dec. 23, 1986
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Rejections
Appellants seek review of the following rejections:
I. Claims 1, 2, and 4-6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stine and Woodall; and
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Stine, Woodall, and Pithouse.
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I – Obviousness over Stine and Woodall
The Examiner concluded that the combination of Stine and Woodall
would have rendered the subject matter of claims 1, 2, and 4-6 obvious to
one of ordinary skill in the art at the time of invention. Ans. 4-5. The
Examiner found that Stine discloses most of the elements of the claims, but
does not disclose “making the tight wrap to hold the tubes together, forming
such of a heat shrink fabric material, and using foam insulation.” Id. The
Examiner also found that it is well known that foams can be used as
insulation layers in place of fiberglass and that “it would have been obvious
to one skilled in the art to modify the insulation of Stine to be a foam
material where such would be more flexible than the fiberglass of Stine as
such is an old and well[-]known equivalent material used for pipe
insulations.” Id. at 5. The Examiner found that Woodall discloses a “heat
shrinkable fabric material 10[,] which can be used in insulating uses for
tubular articles and to hold articles to one another, where the fabric material
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can be coated by a covering of resin material.” Id. The Examiner concluded
that it would have been obvious to one of ordinary skill in the art to
modify the wrap material of Stine by substituting therefore a
heat shrink material to hold the tubular elements together where
such results in a closely conforming structure as suggested by
Woodall where such would then insure proper heat transfer
inherently due to the close conforming nature of the heat shrink
material.
Id.
Appellants raise several arguments in response to this rejection.1
First, Appellants assert that there is no motivation to alter the materials of
Stine. App. Br. 10. Appellants contend that there is no suggestion in Stine
to lead one of ordinary skill in the art to “discard the thermal barrier taught
by Stine et al and substitute the same with some other covering, let alone,
with a shrink hose as required by [A]ppellants’ claim 1.” Id.
Second, Appellants contend that “nowhere in [Woodall] is there any
suggestion to use the tubular fabric for the purpose of holding two or more
articles together, let alone, two hose conduits for conducting respective
fluids.” Id. at 11. Appellants assert that Woodall “does not teach or even
suggest using the shrinkable fabric for holding articles together.” Id.
Appellants’ first argument is based on an incorrect interpretation of
the Examiner’s rejection. The Examiner did not propose to substitute
Woodall’s heat shrinkable fabric material for the thermal barrier of Stine.

1 Appellants do not separately argue claims 1, 2, and 4-6. See
App. Br. 10-13; Reply Br. 2-6. We select claim 1 as representative.
Accordingly, claims 2 and 4-6 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351
(Fed. Cir. 2011).
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Rather, the rejection is based on substituting Woodall’s heat shrinkable
fabric material for wrap material 12. See Ans. 4-8.
Appellants’ second argument is also not persuasive because we agree
with the Examiner’s finding that Woodall teaches using the heat shrinkable
fabric material for holding items together, specifically fiber glass rods. See
Ans. 8 (citing Woodall, col. 3, ll. 20-23; id. at col. 4, ll. 7-14). Woodall
discloses a heat shrinkable tubular fabric comprising a heat shrinkable filling
yarn. Woodall, Abstract. Woodall teaches that the heat shrinkable fabric
may “be employed as a component in the construction of numerous
elongated articles. . . . the fabric may be shrunk about a bundle of fiber glass
rods to form an elongated circular article such as a fiber glass fishing rod.”
Woodall, col. 3, ll. 14-15, 20-22. Thus, Appellants’ argument that Woodall
does not disclose using the heat shrinkable fabric to hold articles together is
not persuasive.
Further, the Examiner determined that it would have been obvious to
one of ordinary skill in the art to substitute one wrap material (Woodall’s
heat shrink material) for another wrap material (Stine’s wrap material 12).
Id. at 5. In such circumstance, “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellants have not presented any evidence or argument that their claimed
combination yields more than a predictable result. Accordingly, Appellants’
argument regarding lack of motivation is not persuasive.
In their Reply Brief, Appellants assert two additional arguments.
First, Appellants contend that the Examiner relies upon two different
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embodiments disclosed in Stine—one embodiment shown in Figures 1 and 2
(including a first hose conduit 1 for transporting liquid and a second hose
conduit 2 for conducting heated water, but not expressly showing binder
member 12); and a second embodiment shown in Figures 5 and 6 (including
several fluid conveyance lines and binder member 12, but not expressly
showing a second hose conduit 2 for conducting heated water). Reply
Br. 2-3. Appellants assert that the Examiner erred by not explaining why
one of ordinary skill in the art would have been motivated to combine two
different embodiments of Stine.2
Second, Appellants assert that Stine and Woodall teach away from
making the modifications to arrive at the claimed invention. Reply 5-6.
Appellants assert that Stine’s embodiments already include elements which
bind or hold the conduits together and therefore “why should there be a need
here for a still further reinforcement of the binding function via a heat shrink
fabric material?” Id. at 5.
Appellants’ arguments are not persuasive. First, while Stine discloses
several embodiments, we do not agree that the Examiner’s rejection
improperly combined an embodiment of Figures 1 and 2 with an
embodiment of Figures 5 and 6. The Examiner found that Stine discloses a
first hose conduit 1 for transporting a liquid, a second hose conduit 2 for
conducting heated water, and a wrap material 12 for holding the heating
element in place on the first conduit. Ans. 4. The Examiner also found that

2 Appellants also reassert their position that one of ordinary skill in the art
would not have been motivated to combine Woodall and Stine. See Reply
Br. 4-5. For the reasons we explained supra, this argument is not
persuasive.
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“the first and second hoses run side by side and as seen in other
embodiments can run parallel to the first conduit.” Id.
Stine is a directed to a composite tubing product and in describing the
embodiment shown in Figure 11, which includes tubular fluid conveyance
line 1 and tubular heating line 2, Stine indicates that the composite tubing is
not limited to the structural elements shown; rather, the product
may include variations thereof such as, for example, . . .
providing for substitution of one or more electrical heating lines
for the tubular heating lines of the above, providing for the
inclusion of filler members, binding members and/or protective
members such as members 8, 12, 13 and 14 hereinbefore
described and providing for the lines being dis[p]osed in
contiguous parallel heat transfer relationship instead of the
spiral relationship shown.
Stine, col. 7, ll. 40-51. In light of this express disclosure, we agree with the
Examiner that Stine itself indicates that the tubular product of Figure 11 can
include binding member 12 and provide for the lines in a parallel heat
transfer relationship. See Ans. 6-7 (citing Stine, col. 7, ll. 33-51). Thus,
Appellants’ argument regarding combining various embodiments of Stine is
unpersuasive.
Second, Appellants have failed to point to any disclosure in Stine or
Woodall that would discourage one of ordinary skill in the art from
combining the teachings therein. Nor does the fact that Stine includes
member 12 as a binding member discourage or lead one of ordinary skill in
the art away from substituting Woodall’s heat shrinkable fabric material 10
for Stine’s member 12. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
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from the path that was taken by the applicant.” (quoting Tec Air, Inc. v.
Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999))). Rather,
Appellants’ argument further solidifies our understanding that the
Examiner’s proposed combination is a simple substitution of one known
element for another known to perform the same or similar function, yielding
predictable results. See KSR, 550 U.S. at 416. Thus, Appellants’ argument
is not persuasive.
Accordingly, we sustain Rejection I.
Rejection II – Obviousness over Stine, Woodall, and Pithouse
The Examiner concluded that the combination of Stine, Woodall, and
Pithouse would have rendered obvious the subject matter of claim 3 to one
of ordinary skill in the art at the time of invention. Ans. 5-6. Appellants’
sole response to this rejection is that Pithouse does not fill the alleged void
in the combination of Stine and Woodall for the reasons asserted by
Appellants in the context of Rejection I.
Accordingly, because Appellants’ arguments were not persuasive in
the context of Rejection I, we sustain Rejection II.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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