Ex Parte Shumate et al

Patent Trial and Appeal Board

Nov 26, 2018

12855833 (P.T.A.B. Nov. 26, 2018)

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.").
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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;
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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;
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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
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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.
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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.
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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).
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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).
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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
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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
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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).
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