Ex Parte SISK

Patent Trial and Appeal Board

Jun 13, 2016

12817378 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/817,378 06/17/2010
7590 06/13/2016
Paul M. Denk
763 S. New Ballas Road, Suite 305
St. Louis, MO 63141
FIRST NAMED INVENTOR
DAVID E. SISK
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.
8049 5449
EXAMINER
DRIGGERS, GWENDOLYN YVONNE
ART UNIT PAPER NUMBER
3679
MAILDATE DELIVERY MODE
06/13/2016 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 DAVID E. SISK
Appeal2014-004033
Application 12/817,378
Technology Center 3600
Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-14. 1 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellant identifies the real parties in interest as "the inventor,
David E. Sisk, and the Company to which he will assign the invention and
patent application, Bulk Tank, Inc." (Appeal Br. 4.)
Appeal2014-004033
Application 12/817,378
STATEMENT OF THE CASE
The Appellant's invention relates to "an adjustable coupler with an
improved gasket and clips." (Spec. 2, lines 7-9.)
Illustrative Claim2
1. A coupler for connecting two sections of pipe end
to end, regardless of surface condition of the pipe, comprising:
a first arm having a first end and an opposite second end
and a generally semi-circular shape;
a second arm having a first end and an opposite second
end and a generally semi-circular shape, said second arm
pivotally connecting to said first arm at their first ends;
each of said first ends connecting together at a hinge;
a closure mechanism releasably connecting each of said
second ends;
said first arm and said second arm each having a
generally U shaped cross section with a first sidewall and a
spaced apart second sidewall defining a groove for seating a
gasket therein, said first sidewall and said second sidewall
having at least a portion there along being thin;
at least two clips positioned upon the thin portions of said
first sidewall and said second sidewall upon each of said first
arm and said second arm, each of said clips having a hook
portion and an integral return leg, each said hook portion and
said return leg when applied to the thin portion of a sidewall
being generally perpendicularly disposed to the surface of the
contiguous pipe, and said return leg adapted to bite into and
engage the surface of a pipe when placed in said coupler and
adapted to transmit static electrical charge from one pipe
through said coupler to another pipe; and,
said gasket capable of forming a round cylindrical shape
and having an inside surface and an opposite outside surface,
said outside surface engaging each of said grooves of said first
arm and said second arm and said inside surface adapted to
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 16-20 of the Appeal Brief.
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Appeal2014-004033
Application 12/817,378
engage the surface of a pipe, said inside surface including an
odd number of valleys and an even number of ridges wherein
said gasket has a valley locating at the joint of two pipes in an
end to end connection;
wherein said clips are adapted to engage the pipes as
pressures within the pipes fluctuate thus preventing the
connection of the pipes from disengaging longitudinally.
Dillon
Turner
Goodall
Bur kit
References
us 2,417,741
us 3,910,610
us 4,295,670
us 5,333,916
Rejections3
Mar. 18, 1947
Oct. 7, 1975
Oct. 20, 1981
Aug. 2, 1994
The Examiner rejects claims 1--4, 6-11, 13, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Dillon and Turner. (Final Action 4.)
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Dillon, Turner, and Burkit. (Id. at 13.)
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Dillon, Turner, and Goodall. (Id. at 14.)
ANALYSIS
Independent claim 1 and 13 are directed to a coupler comprising "[a]
first arm and [a] second arm each having a generally U shaped cross section
with a first sidewall and a spaced apart second sidewall." (Claims App.)
Independent claim 1 recites that "said first sidewall and said second sidewall
hav[ e] at least a portion there along being thin." (Id.) Independent claim 13
3 The Examiner's rejection under 35 U.S.C. § 112, second paragraph (see
Final Action 3) has been withdrawn (see Answer 13).
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Application 12/817,378
similarly recites that "said first sidewall and said sidewall hav[ e] at least a
portion being thin." (Id.) The Examiner finds that Dillon discloses a
coupling comprising first and second arms with first and second side walls
"having at least a portion there along being thin." (Final Action 4.)
Independent claims 1 and 13 require the coupler to additionally
comprise "at least two clips" that are "positioned upon the thin portions of
said first sidewall and said second sidewall." (Claims App.) The Examiner
finds that Turner discloses clips "made of a metal," and the Examiner
determines that it would have been obvious "to modify the coupling in
Dillon to include clips as taught by Turner in order to correctly position the
clamp." (Final Action 6.)
Independent claims 1 and 13 also require the clips to each have a
return leg adapted to "engage the surface of a pipe when placed in said
coupler" and adapted to "transmit static electrical charge from one pipe
through said coupler to another pipe." (Claims App.) The Examiner finds
that Turner teaches that its clip has a return leg designed for engaging the
surface of the adjacent pipe; and the Examiner finds that Turner's metal
clips, when placed in Dillon's coupler, would be adapted to transmit static
electrical charge in the claimed manner. (See Final Action 5---6.)
The Appellant advances arguments premised upon the prior art failing
to show or suggest providing a coupler with clips for electrical grounding
purposes. (See Appeal Br. 11-14.) We are not persuaded by these
arguments because, while the Appellant's premise may be correct, it does
not implicate Examiner error. The Examiner's reason for combining the
prior art need not be based upon the static-electric-charge problem that the
Appellant was trying to solve; the Examiner's reason for combining the prior
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Appeal2014-004033
Application 12/817,378
art can be based upon any need or problem known in the field of pipe
couplers.4 Here, the Examiner's reason for combining the prior art is based
upon Turner's teaching that clips can be used to position a clamping element
properly on a pipe end. (See Final Action 6; see also Turner, col. 1,
lines 50-56.)
As discussed above, the Examiner finds that it would have been
obvious to provide Dillon's coupling with metal clips as taught by Turner
"in order to correctly position the clamp." (Final Action 6.) The Appellant
does not point, with particularity, to flaws in this finding by the Examiner.
In other words, the Appellant does not dispute that it would have been
obvious to modify Dillion's coupling, for clamp-positioning purposes, to
include metal clips positioned upon both thin sidewall portions of its arms. 5
The Appellant also does not offer a technical explanation as to why
these metal clips, albeit put on Dillon's coupler for clamp-positioning
4 See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (It is error to
hold that "patent examiners should look only to the problem the patentee
was trying to solve" because "[u]nder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed").
5 The Appellant asserts that "[t]he clip of Turner is only shown as used on
one side." (Appeal Br. 12.) Certain drawings in Turner do depict the
clips 98 on spigot ring 30, but not bell ring 28. (See e.g., Turner, Figures 1
and 2.) However, the Examiner finds, and the Appellant does not challenge
in a Reply Brief, that "Turner discloses use of the clips (98) around the bell
ring section (28)." (Answer 13, citing to Turner, col. 4, lines 42--46.) Thus,
the Appellant does not adequately address why Turner does not teach using
clips 98 on both bell ring 28 (i.e., as described in the cited passage) and
spigot ring 30 (i.e., as shown in Figures 1 and 2) or, more generally, on both
sides of a pipe coupling.
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Application 12/817,378
purposes, would not provide the metal-to-metal contact necessary to allow
transmission of static electrical charge from one pipe to another pipe through
a metal arm of Dillon's coupler. The Appellant does not, for example,
identify structural features in the modified version of Dillion's coupler that
would prevent or hinder this transmission of electrical charge.
Thus, the Appellant's arguments do not establish that the Examiner's
proposed combination of the prior art is unreasonable, without rational
underpinning, and/or would not create the claimed invention. Thus, we
sustain the Examiner's rejection of independent claims 1 and 13 under
35 U.S.C. § 103(a) as unpatentable over Dillon and Turner.
With respect to the dependent claims, the Appellant appears to
generally argue that "[t]here are other minor features" of the claimed
invention "which are not really shown in the prior art." (Appeal Br. 14.)
However, the Appellant does not point, with particularity, to flaws in the
Examiner's findings with respect to such "minor features." The Appellant
does not adequately address, for example, the Examiner's findings regarding
self-lubricating gasket material (see Final Action 7), the "rising and falling"
of stepped gasket surfaces (see Answer 16), well-known gasket button
features (see id. at 16-17) and/or the pertinence of a safety pin to the
problem of securing a coupling lever (id. at 18).
The Appellant's arguments with respect to the dependent claims
otherwise hinge on the above-discussed alleged deficiencies in the
Examiner's combination of Dillon and Turner. (See Appeal Br. 13-15.) As
the Appellant does not sufficiently establish that this combination is
deficient, we are not persuaded by these arguments. Thus, the dependent
claims fall with independent claims 1 and 13.
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Application 12/817,378
DECISION
We AFFIRM the Examiner's rejections of claims 1-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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