Ex Parte Shumate et alDownload PDFPatent Trial and Appeal BoardNov 26, 201812855833 (P.T.A.B. Nov. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/855,833 08/13/2010 29602 7590 11/28/2018 JOHNS MANVILLE 10100 WEST UTE A VENUE PO BOX 625005 LITTLETON, CO 80162-5005 FIRST NAMED INVENTOR Monroe William Shumate 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. 7982 1797 EXAMINER DULKO, MARTA S ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 11/28/2018 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): lavoie@jm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MONROE WILLIAM SHUMATE and DEREK COOPER BRISTOL Appeal 2018-001539 Application 12/855,833 1 Technology Center 1700 Before DONNA M. PRAISS, N. WHITNEY WILSON, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 10, 12, 13, and 16-20. We have jurisdiction. 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Johns Manville Corporation. Appeal Br. 3. Appeal 2018-001539 Application 12/855,833 STATEMENT OF THE CASE2 Appellants describe the invention as relating to pipe insulation products having an insulating material core enclosed within a laminate jacket. Claims 10 and 16, reproduced below with formatting added for readability and emphases added to certain key recitations, are illustrative of the claimed subject matter: 10. A method for producing a laminate that provides a greater laminate seal, the method comprising: providing a foil or metallized polymeric sheet material, the foil or metallized polymeric sheet material forming an inner layer of the laminate that provides a fluid vapor barrier to minimize fluid vapor transmission through the laminate, the foil or metallized polymeric sheet material comprising: a length, a width, a first face, and a second face, wherein the length and width form an area that define the first face and the second face; providing a polymeric sheet material, wherein the polymeric sheet material is coextensive with the second face and the polymeric sheet material forms an outer exposed layer of the laminate; providing an intermediate layer disposed between the foil or metallized polymeric sheet material and the polymeric sheet material, wherein the intermediate layer provides reinforcement for the laminate; bonding, via an adhesive material, the foil or metallized polymeric sheet material, the intermediate layer, and the 2 In this Decision, we refer to the Final Office Action dated September 7, 2016 ("Final Act."), the Appeal Brief filed April 26, 2017 ("Appeal Br."), the Examiner's Answer dated September 27, 2017 ("Ans."), and the Reply Brief filed November 27, 2017 ("Reply Br."). 2 Appeal 2018-001539 Application 12/855,833 polymeric sheet material together to form the laminate jacket, wherein the laminate jacket comprises a closure flap configured to seal opposite sides of the laminate jacket in a closed position so that the laminate jacket forms a hollow cylindrical tube and wherein the closure flap curves away from the closed position; positioning a tubular core of insulating material directly adjacent the first face of the foil or metallized polymeric sheet material, wherein the tubular core comprises: a length and a longitudinal axis; a substantially cylindrical outer surface, the substantially cylindrical outer surface comprising a surface area that is roughly equivalent to the area of the first face; a substantially cylindrical inner surface; and a wall extending between the cylindrical outer surface and the cylindrical inner surface; the wall comprising: a radially extending thickness; and a slit extending from the cylindrical outer surface to the cylindrical inner surface and extending parallel to the longitudinal axis of the tubular core for the length of the tubular core; and bonding, via an additional adhesive material, the tubular core of insulating material with the first face of the foil or metallized polymeric sheet material, wherein the laminate and tubular core are flexible so as to be opened, placed about a pipe, and closed without degrading the laminate jacket; and subjecting the laminate jacket and tubular core of insulating material to a heating process to reshape the closure flap so that the closure flap is radially closer to the outer surface of the laminate to provide a greater adhesive seal, wherein the heating process compnses: folding the closure flap over a proximal edge of the laminate and into the closed position so that the laminate jacket and tubular core of insulating material form a hollow cylindrical tube; 3 Appeal 2018-001539 Application 12/855,833 positioning a restraint over the closure flap and the laminate jacket to secure the closure flap over the proximal edge and in the closed position; heat treating the laminate to soften the polymeric sheet material; and cooling the polymeric sheet material so that upon removal of the restraint, the polymeric sheet material hardens with the closure flap curled toward the closed position; and subsequent to the cooling process and during shipment of the laminate, maintaining the laminate in the closed position with the closure flap folded over the proximal edge of the laminate and into the closed position so that the laminate jacket and tubular core of insulating material form the hollow cylindrical tube; wherein the laminate is maintained in the closed position via the restraint to induce shape memory and thereby further reshape the closure flap. 16. A method for producing a laminate that provides a greater laminate seal, the method comprising: providing a foil or metallized polymeric sheet material, the foil or metallized polymeric sheet material forming an inner layer of the laminate that provides a fluid vapor barrier to minimize fluid vapor transmission through the laminate, the foil or metallized polymeric sheet material comprising: a length, a width, a first face, and a second face, wherein the length and width form an area that define the first face and the second face; providing a polymeric film sheet material, wherein the polymeric film sheet material is coextensive with the second face and the polymeric film sheet material forms an outer exposed layer of the laminate; 4 Appeal 2018-001539 Application 12/855,833 providing a scrim comprising a mesh of a plurality of fibers, wherein the scrim is substantially coextensive with the second face; providing a porous media sheet material that is separate from the scrim, wherein: the scrim and porous media sheet material are positioned between the foil or metallized polymeric film sheet and the polymeric film sheet material with the scrim positioned directly adjacent to the polymeric film sheet material, and the porous media sheet material is substantially coextensive with the second face; bonding, via an adhesive material, the foil or metallized polymeric sheet material, the scrim, the porous media sheet material, and the polymeric film sheet material together to form the laminate jacket, wherein the laminate jacket comprises a closure flap configured to seal opposite sides of the laminate jacket in a closed position so that the laminate jacket forms a hollow cylindrical tube and wherein the closure flap is biased away from the closed position; and subjecting the closure flap to a heating process to reshape the closure flap so that after the heating process, the closure flap is radially closer to the outer surface of the laminate to provide a greater adhesive seal, wherein the heating process comprises: positioning the closure flap in the closed position so that the laminate jacket forms a hollow cylindrical tube; positioning a restraint over the closure flap to secure the closure flap in the closed position; heat treating the laminate to soften the polymeric film sheet material; and 5 Appeal 2018-001539 Application 12/855,833 cooling the polymeric film sheet material so that upon removal of the restraint, the polymeric film sheet material hardens with the closure flap biased toward the closed position. Appeal Br. 18-22 (Claims App.). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Adamczyk et al. ("Adamczyk") Cohen et al. ("Cohen") Kissell Moore et al. ("Moore") us 5,607,529 US 2004/0146680 Al US 7,159,620 B2 US 2008/0081138 Al REJECTIONS The following rejections are before us on appeal: March 4, 1997 July 29, 2004 January 9, 2007 April 3, 2008 Rejection 1. Claims 10, 12, 13, and 16-20 on the ground of nonstatutory double patenting as being unpatentable over claims 7-11 of U.S. Patent No. 8,141,594 B2 in view of Moore. Final Act. 3. Rejection 2. Claims 10, 12, 13, and 16-20 on the ground of nonstatutory double patenting as being unpatentable over claims 7-11 of U.S. Patent No. 8,104,519 Bl in view of Moore. Id. Rejection 3. Claims 10, 12, 13, and 16-20 on the ground of nonstatutory double patenting as being unpatentable over claims 10-15 of U.S. Patent Application No. 12/855,876 (which has now issued as U.S. Patent No. 9,376,814 B2) in view of Moore. Id. 6 Appeal 2018-001539 Application 12/855,833 Rejection 4. Presented as a new ground in the Answer, claims 10, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Moore in view of Kissell and Cohen. Ans. 2. Rejection 5. Claims 16-20 under 35 U.S.C. § 103 as unpatentable over Moore in view of Kissell and Adamczyk. Final Act. 8. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejections 1-3. Appellants do not argue the Examiner's non-statutory obviousness-type double-patenting rejections separately from rejections 4 and 5 except to summarily state the rejections are in error because "Moore and/or Kissell fail to teach or suggest the recitations of claims 10 and 16." Appeal Br. 16. As explained below, Appellants' arguments with respect to Moore, Kissell, Cohen, and Adamczyk fail to establish reversible error as to rejections 4 and 5. Accordingly, we sustain the obviousness-type double- patenting rejections for the same reasons. 7 Appeal 2018-001539 Application 12/855,833 Rejection 4. As a new ground presented in the Answer, the Examiner rejects claims 10, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Moore in view of Kissell and Cohen. Ans. 2. Appellants do not separately argue claims 12 and 13. We thus limit our discussion to claim 10. Claims 12 and 13 stand or fall with that claim. 37 C.F.R. § 4I.37(c)(l)(iv) (2013). The Examiner finds that "Moore describes substantially all the limitations of the instant claim 10 except for (i) steps of positioning a restrain[t], heat treating and cooling laminate; and (ii) maintaining the laminate in closed position during shipment." Ans. 4. The Examiner finds that Kissell describes a method for making jacketed insulation for pipes including wrapping a strap 650 around insulation to secure it around a pipe and heating and cooling so that the insulation laminate retains its memory. Id. at 5. The Examiner determines it would have been obvious to modify Moore with these teachings of Kissell in order to "predictably allow to make a 'pre-cured covering, able to grip a pipe and thus hold itself about the pipe without the aid of the user or installer thus making the pipe blanket easier to work with and handle."' Id. at 6 ( quoting Kissell 21 :5-9). The Examiner finds that Cohen teaches making a laminated pipe insulation jacket by maintaining the jacket in a closed position with closure flap folded over after manufacture and during shipment. Ans. 6. The Examiner determines it would have been obvious to modify the teachings of Moore and Kissell with teachings of Cohen "because such modification predictably 'maintains the surfaces to be joined on the underside of the flap and the outer surface of the jacket in a clean and dry condition."' Id. (quoting Cohen ,r 12). 8 Appeal 2018-001539 Application 12/855,833 Appellants argue3 that the Examiner errs by stating that claim 10 requires two separate curl inducing processes (Reply Br. 2, 4) and by finding that Kissell describes these processes in two separate embodiments (id. at 2). We agree with Appellants that Kissell teaches securing a laminate and heating and cooling a laminate. Id. at 2; Kissell 20:63-21:4. Appellants' argument does not, however, identify harmful error. Appellants do not persuasively dispute the Examiner's core findings regarding the teachings of Moore, Kissell, or Cohen, and Appellants do not challenge the Examiner's stated rationales for combining the teachings of these references. Appellants' argument also does not distinguish the cited art from claim 10' s recitations. Appellants argue that "Kissell never teaches or suggests a process that involves securing its covering 14 about a pipe to further reshape a closure flap of the covering 14." Reply Br. 3. The Examiner finds, however, that Kissell teaches positioning a laminate jacket in a desired final form, securing it with a restraint, and heating and cooling it to induce shape memory. Ans. 6. The Examiner finds that Cohen teaches restraining a closure flap. Id. These findings are supported by a preponderance of the evidence. Kissell 20:63-21 :4; Cohen ,r,r 12, 36. Appellants do not persuasively rebut these findings, and Appellants do not persuasively explain why the combined teachings of Moore, Kissell, and Cohen would not meet the recitations of claim 10. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a 3 Because the Examiner designates this rejection as a new ground of rejection in the Answer, we consider Appellants' arguments as stated in Appellants' Reply Brief. 37 C.F.R. § 4I.39(2)(b)(l). 9 Appeal 2018-001539 Application 12/855,833 combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because Appellants' arguments do not identify reversible error, we sustain the Examiner's rejection. Rejection 5. The Examiner rejects claims 16-20 under 35 U.S.C. § 103 as unpatentable over Moore in view of Kissell and Adamczyk. Final Act. 8. The Examiner finds that Moore "describes substantially all the limitations of the instant claim 16 except for the step of subjecting the closure flap to heat treating and maintaining the laminate in closed position and location of the scrim layer adjacent to polymeric film layer." Id. at 10. As to heat treating and maintaining in a closed position, the Examiner relies on Kissell as explained above with regard to Rejection 4. Id. at 10-11. As to the scrim layer being adjacent to the polymeric film layer, the Examiner finds that Adamczyk teaches an insulating jacket for a pipe with ordered layers where the order is either polymeric film/porous media material/scrim (as in Moore) or polymeric film/scrim/porous media. Id. at 11 (citing Adamczyk Fig. 6, Fig. 7, 4:60-65). The Examiner determines: It would have been obvious to one ordinary skill in the art at the time of the invention to have modified the method for making laminated insulator jackets for pipes of Moore by rearranging the scrim layers above the insulation layer of the laminate, as described by Adamczyk, because either the claimed order of the layers or the order of the layers described by Adamczyk both are well-known in the art of making laminated insulated jackets for the pipes to provide laminated insulation with additional strength. Id. (citing Adamczyk 4:60-65). Appellants argue that Adamczyk is directed to applying separate strips of material rather than a unitary laminate jacket, and it would, therefore, not 10 Appeal 2018-001539 Application 12/855,833 motivate a person having skill in the art to modify the laminate of Moore. Appeal Br. 14--16. Appellants' argument is unpersuasive because Adamczyk and Moore both relate to providing insulating layers. Moore Abstract; Adamczyk Abstract. The Examiner correctly finds that Adamczyk teaches that layers of insulation material can be arranged so that the scrim is positioned directly adjacent to polymeric film sheet material. Final Act. 11. Adamczyk suggests that an insulation device will work in the same manner whether arranged polymeric film/porous media material/ scrim ( as in Moore) or polymeric film/scrim/porous media. Adamczyk Fig. 6, Fig. 7; see also In re Japikse, 181 F.2d 1019, 1032 (CCPA 1950) (holding claims to hydraulic power press were unpatentable despite having different starting switch position than art because changing position of switch would not have modified the operation of the device). Thus, Adamczyk suggests that Moore's order of layers could be rearranged to polymeric film/scrim/porous media with an equally reasonable expectation of success. Appellants identify no evidence to the contrary. The Examiner also determines that a person having ordinary skill in the art would have been motivated to modify Moore to produce the polymeric film/scrim/porous media layers of Adamczyk in order to provide additional strength. Final Act. 11 (citing Adamczyk 4:60-65). Appellants do not persuasively dispute this rationale to combine the references' teachings. In particular, Appellants fail to explain why teachings regarding wrapped insulation would be inapplicable to laminated insulation despite both utilizing similar4 materials to achieve the same purpose. 4 The similarity of materials in Adamczyk and Moore is further buttressed by the Examiner's finding that Adamczyk could be considered a laminate at 11 Appeal 2018-001539 Application 12/855,833 Because Appellants' arguments do not identify reversible error, we also sustain this rejection. DECISION For the above reasons, we affirm the Examiner's rejections of claims 10, 12, 13, and 16-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED least in the sense that its layers are bonded to each other with adhesive. Advisory Action (dated Nov. 9, 2016). 12 Copy with citationCopy as parenthetical citation