Ex Parte Smith

Patent Trial and Appeal Board

Feb 8, 2017

12612502 (P.T.A.B. Feb. 8, 2017)

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.
12/612,502 11/04/2009 Robert E. Smith III 221-0096US 4546
29855 7590
Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
hou stonpatents @ blankrome .com
mbrininger @ blankrome. com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. SMITH III
Appeal 2015-002629
Application 12/612,502
Technology Center 3600
Before MICHAEL L. HOELTER, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—4, 6, 8—11, 14—19, 21, 23—26, 28, 29, 45—48, 50, 52—
55, and 58-60. Br. 5. Claims 5, 7, 12, 13, 20, 22, 27, 30-A4, 49, 51, 56, 57,
and 61 have been withdrawn. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to hydraulic couplings. More
particularly, it relates to undersea hydraulic couplings used in systems which
Appeal 2015-002629
Application 12/612,502
employ electrical bonding of components.” Spec. 11. Claims 1,16, 45, and
60 are independent claims. Claim 1 is illustrative of the claims on appeal
and is reproduced below.
1. A male hydraulic coupling member
comprising:
a generally cylindrical body having a first section
with a first, larger outer diameter proximate a first end
having a probe section configured for insertion into the
receiving chamber of a female coupling member and a
second section with a second, smaller outer diameter
proximate a second end adapted for connection to a
hydraulic fluid conduit, with a shoulder between the first
and second sections;
a cavity in the shoulder open towards the second
end;
an electrically-conductive member having a first
end within the cavity and a second end moveable from a
first position projecting from the cavity to a second
position substantially flush with the open end of the
cavity.
REFERENCES RELIED ON BY THE EXAMINER
Steen US 898,017 Sept. 8, 1908
Smith, III (“Smith-US”) US 2005/0212286 A1 Sept. 29, 2005
Smith, III (“Smith-GB”) GB 2447310 A Sept. 10, 2008
THE REJECTIONS ON APPEAL
Claims 1—4, 6, 8—11, 15—19, 21, 23—26, 28, and 29 are rejected under
U.S.C. § 102(b) as anticipated by Smith-GB.
Claims 1^1, 6, 8, 9, 10, 11, 15-19, 21, 23-26, 28, 29, 45^18, 50, 52-
55, 59, and 60 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Smith-US and Smith-GB.
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Appeal 2015-002629
Application 12/612,502
Claims 14 and 58 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith-US, Smith-GB, and Steen.
ANALYSIS
The rejection of claims 1—4, 6, 8—11, 15—19, 21, 23—26, 28, and 29 as
anticipated by Smith-GB
Appellant presents separate arguments for independent claims 1 and
16. Br. 15—20. We address each independent claim separately with their
respective dependent claims standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1
Appellant initially addresses the recited shoulder cavity that “open[s]
towards the second end.” Br. 15. Appellant contends that coupling
members have well-known “gender-specific mating device[s]” and that
“[t]he gender-specific mating device on a male hydraulic coupling member
is a probe.” Br. 15. Accordingly, Appellant disregards the findings and
correlations made by the Examiner and instead identifies different structure
depicted in Smith-GB as corresponding to the various claim limitations.1 Br.
16—17. Appellant justifies this change by asserting that such re-assignment
or switching “would be clear to one skilled in the art.” Br. 16.
Consequently, based on Appellant’s swapping of the Examiner’s structure in
Smith-GB that was identified as correlating to the claim limitations,
1 The Examiner addresses this stating that Appellant “apparently seeks to
rely on the terminology of the prior art instead of the actual structure
possessed.” Ans. 3. The Examiner also addresses the “configured for”
limitation stating, “this language merely requires some configuration that is
capable of performing the specified function.” Ans. 4.
3
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Application 12/612,502
Appellant contends that Smith-GB does not teach the limitation of “a cavity
in the shoulder open towards the second end.” Br. 17.
Appellant’s alteration of the Examiner’s findings, and Appellant’s
conclusion based thereon, is not persuasive the Examiner erred in rendering
the correlations made. See Final Act. 3. Further, the Examiner prefaced the
subsequent structural findings stating “claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than function.”
Final Act. 2; Ans. 4 (citation omitted). Appellant does not explain how item
12 depicted in Smith-GB cannot be correlated by the Examiner to the
claimed probe, nor does Appellant explain how the end of item 16 cannot be
correlated by the Examiner to the claimed second end.2 See Final Act. 3; see
also Ans. 5. As such, using the Examiner’s findings and orientation,
Appellant does not explain how cavity 30 depicted in Smith-GB fails to
“open towards the second end” as claimed. See also Final Act. 3; Ans. 5.
Accordingly, and based on the record presented, we are not persuaded
by Appellant’s alteration of the Examiner’s findings that the Examiner erred
such that the Examiner’s rejection warrants reversal. We sustain the
Examiner’s rejection of claims 1—4, 6, 8—11, and 15 as being anticipated by
Smith-GB.
2 Appellant and the Examiner agree as to how claim 1 is to be construed,
they just disagree on the structure upon which the claim language is to be
applied. Br. 19 (“Thus, it is clear from the claim language that the ‘first end’
of the claimed male hydraulic coupling member is the end with the probe
section and the ‘second end’ must therefore be the opposing end.”).
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Appeal 2015-002629
Application 12/612,502
Claim 16
In the Final Office Action, the Examiner references Figures 1—8 as
disclosing the structure recited in claim 16. Final Act 4—5. Appellant,
inexplicably, disregards these Figures 1—8 and instead addresses “Figure 9 of
Smith-GB” and presents a different set of structure as corresponding to the
limitations of this claim.3 Br. 17—18. Again, Appellant contends that as per
this new figure and this new correlation, Smith-GB does not teach the
limitation “a cavity in the shoulder open towards the second end,” or other
limitations of claim 16. See Br. 18—19.
In other words, Appellant does not explain how the Examiner’s
correlation of the claimed receiving chamber to Smith-GB item 15, or the
correlation of the claimed second end to “the end containing element 16” as
depicted in Figures 1—8 of Smith-GB is in error. Final Act. 4—5; see also
Ans. 9. In short, Appellant focuses on different figures and employs a
different correlation between the limitations of claim 16 and the structure
depicted in these other figures. See Br. 17—19; Final Act. 4—5. Accordingly,
Appellant’s contentions are not persuasive of Examiner error. We sustain
the Examiner’s rejection of claims 16—19, 21, 23—26, 28, and 29 as being
anticipated by Smith-GB.
The rejection of claims 1—4, 6, 8, 9, 10, 11, 15—19, 21, 23—26, 28, 29, 45—48,
50, 52—55, 59, and 60 as unpatentable over Smith-US and Smith-GB
Appellant argues independent claims 1, 16, 45, and 60 as a group. Br.
20. We select claim 1 for review with the remaining claims, including their
dependent claims, standing or falling therewith.
3 The Examiner states, “Appellant’s arguments are not commensurate with
the scope of the claim nor the rejection of record as advanced.” Ans. 7.
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Appeal 2015-002629
Application 12/612,502
Appellant initially contends, “neither Smith-GB nor Smith-US
discloses a coupling member having a cavity in a shoulder open towards the
second, non-mating end of the coupling.” Br. 20. This matter (and the
actual claim language employed) was discussed supra and was not found to
be persuasive of Examiner error.4
Appellant also contends that there is no teaching or suggestion in
either reference “of a hydraulic coupling member having an automatic
bonding device configured to provide an electrical path.”5 Br. 21. However,
Smith-GB describes and discusses “bonding device 32,” located within
cavity 30, which comprises “a helically-wound, electrically conductive
compression spring” and a “sharp projection” used to “establish a low-
resistance electrical path between the two coupling members.” Smith-GB
25—26. Appellant does not address this teaching or indicate how Smith-
GB fails to disclose the limitation directed to “an electrically-conductive
member” “within the cavity” and having “a first position projecting from the
cavity” that, when abutment occurs, retracts into the cavity under spring
pressure. See e.g., Ans. 12. Accordingly, we sustain the Examiner’s
rejection of claims 1—4, 6, 8, 9, 10, 11, 15—19, 21, 23—26, 28, 29, 45—48, 50,
52—55, 59, and 60 as unpatentable over Smith-US and Smith-GB.
4 Here, “[t]he [Ejxaminer notes that it appears that the [Ajppellant is merely
making general allegations as to the patentability of the claims and such is
not sufficient.” Ans. 10.
5 To be clear, claim 1 is directed to a hydraulic coupling member having an
electrically-conductive member movable between first and second positions
The word “automatic’ does not appear in claim 1 (or any other claim).
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Application 12/612,502
The rejection of claims 14 and 58
as unpatentable over Smith-US, Smith-GB, and Steen
Appellant does not present separate arguments for the rejection of
these dependent claims, but instead contends that these claims are allowable
because they depend from allowable claims. Br. 22. Appellant’s contention
is not persuasive of Examiner error. We sustain the Examiner’s rejection of
claims 14 and 58 as being unpatentable over Smith-US, Smith-GB, and
Steen.
DECISION
The Examiner’s rejections of claims 1—4, 6, 8—11, 14—19, 21, 23—26,
28, 29, 45—48, 50, 52—55, and 58—60 are 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)(l)(iv).
AFFIRMED
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