Ex Parte Steel et al

Patent Trial and Appeal Board

Nov 2, 2017

13177112 (P.T.A.B. Nov. 2, 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.
13/177,112 07/06/2011 Glyn STEEL 150084 5827
759027049
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
11/06/2017 EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
11/06/2017 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):
OfficeAction27049@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLYN STEEL and JOHN R. HOWARTH
Appeal 2016-000262
Application 13/177,112
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Glyn Steel and John R. Howarth (“Appellants”)1 seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated October 27, 2014 (“Final Act.”), and as further
explained in the Advisory Action dated February 5, 2015 (“Adv. Act.”),
rejecting claims 1—11. The record includes a transcript of the oral hearing
held on October 19, 2017 (“Tr.”). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm in part.
1 Appellants identify Rolls-Royce PLC as the real party in interest.
Appeal Br. 1.
Appeal 2016-000262
Application 13/177,112
BACKGROUND
The disclosed subject matter “relates to a manifold mounting
arrangement, particularly, but not exclusively, for mounting a turbine case
cooling manifold arrangement in a gas turbine engine.” Spec. 1,11. 3—5.
Claim 1, the sole independent claim, is reproduced below:
1. A manifold mounting arrangement
comprising:
- a manifold module having first and second
ends;
- a clevis arrangement having a clevis
configured to straddle a flange and to be pivotally
secured to the flange by a clevis pin; and
- a locking bar configured to be coupled to
the clevis and to constrain the manifold module
relative to the clevis arrangement in the locality of
the locking bar.
EVIDENCE RELIED ON BY THE EXAMINER
Mott US 1,819,754 Aug. 18, 1931
McBain US 4,134,255 Jan. 16, 1979
Glover US 5,100,291 Mar. 31, 1992
Barcza US 5,127,224 July 7, 1992
Dhaliwal US 2006/0016173 A1 Jan. 26, 2006
Gulf State Hangers and Supports Manufacturers, Inc., Catalog 4/02 (2002)
(“Gulf State”).
Douglas C. Giancoli, Physics for Scientists & Engineers 318—20 (4th ed.
2008) (“Giancoli”).
ERICO International Corporation, Fire Sprinkler Hanging & Bracing
Products (2008) (“Erico”).
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Application 13/177,112
Nick Artim, An Introduction to Automatic Fire Sprinklers, Part 1, CoOL
(Conservation Online) (Dec. 11, 2008), http://cool.conservation-
us. org/waac/wn/wn 16/wn 16-3 /wn16-309.html (“Artim”).2
REJECTIONS
1. Claim 9 stands rejected under 35U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1—3, 6—8, 10 and 11 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Dhaliwal.
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Dhaliwal, Gulf State, and McBain.
4. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Dhaliwal and Glover, as evidenced by Giancoli.
5. Claims 1—3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Artim, Erico, and Mott.
6. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Artim, Erico, Mott, and McBain.
7. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Artim, Erico, Mott, Barcza, and Gulf State.
2 Page 14 of Artim shows December 11, 2008, as the “Timestamp.”
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DISCUSSION
Rejection 1 — The rejection of claim 9 under
35 U.S.C. § 112, second paragraph
The Examiner concluded that the terms “flexible” and “rigid” each
render claim 9 indefinite. See Final Act. 4—6. The Examiner stated that
“[t]he term ‘flexible’ is not defined by the claim, the specification does not
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention.” Id. at 4. The Examiner also stated that the term “rigid” “is used
by the claim to mean ‘less flexible compared to the flexible portion,’ while
the accepted meaning is ‘not flexible.’” Id. at 5 (citing American Heritage
Dictionary, 4th ed. (2000)). According to the Examiner, “the term ‘rigid’ is
indefinite because the specification does not clearly redefine the term to
mean ‘less flexible compared to the flexible portion.’” Id. at 6.
Appellants argue that the terms “flexible” and “rigid” “are not recited
independent of one another in a vacuum” but, rather, “they are recited in
claim 9 together such that one of ordinary skill in the art would at least
understand that ‘flexible’ is more flexible than rigid and ‘rigid’ is more rigid
than flexible.” Appeal Br. 5—6. Appellants also highlight page 3, lines 23 to
34 of the Specification, and argue that “[bjased on at least this disclosure,
the above-recited features recited in claim 9 also clearly meet” the standard
in 35 U.S.C. § 112, second paragraph. Id. at 7. According to Appellants,
“[e]ven without the explicit support cited above in the specification, one of
ordinary skill in the art at the time of filing would understand what is meant
by ‘flexible’ and ‘rigid’ at least because . . . only the relative nature of the
terms is necessary for a complete understanding of the claim.” Id.
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The Examiner responds that “Appellants] failed to clearly set forth an
explicit definition of the term different from its ordinary meaning and failed
to disavow[] or disclaim[] scope of coverage” and “[tjherefore, it was proper
for Examiner to construe the claim terms based on a dictionary definition of
the terms.” Ans. 4.
In reply, Appellants state that “one of ordinary skill in the art would
understand that ‘flexible’ is more flexible than rigid and ‘rigid’ is more rigid
than flexible.” Reply Br. 2. Appellants argue that the dictionary definitions
provided by the Examiner and the Specification (at page 3, lines 30 to 34)
support Appellants’ position that “‘flexible’ is more flexible than rigid and
‘rigid’ is more rigid than flexible.” Id. at 3.
A claim fails to comply with 35U.S.C. § 112, second paragraph,
“when it contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). For the reasons
below, in response to this Rejection, Appellants have provided a “persuasive
explanation for the record of why the language at issue is not actually
unclear.” Packard, 751 F.3d at 1311.
The terms “flexible” and “rigid” as recited in claim 9 are terms of
degree. See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370
(Fed. Cir. 2014) (identifying “unobtrusive manner” as a term of degree);
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1372 (Fed.
Cir. 2008) (“Here, the term ‘anaerobic condition’ is in effect a term of
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degree because its bounds depend on the degree of oxygen deficiency.”).
Our reviewing court has reaffirmed that terms of degree are not “inherently
indefinite.” Interval Licensing, 766 F.3d at 1370. “Claim language
employing terms of degree has long been found definite where it provided
enough certainty to one of skill in the art when read in the context of the
invention.” Id. (citations omitted). To satisfy the statute, however, “[t]he
claims, when read in light of the specification and the prosecution history,
must provide objective boundaries for those of skill in the art.” Id. at 1371.
Here, one of the passages in the Specification highlighted by
Appellants discusses “rigid portions” and “flexible portion[s]” and provides
“a bellows” as an example of a “flexible portion”:
Adjacent rigid portions 42 are coupled by a flexible portion 44,
for example a bellows. The circumferential feed duct 38 is
therefore able to expand and contract in response to thermal
gradients and to radially grow during operation of the gas
turbine engine 10.
See Spec. 3,11. 31—34. In the context of the “turbine case cooling
arrangement” recited in claim 9, we determine that this passage of the
Specification—with its discussion of an exemplary “flexible portion” and its
discussion of the functionality generally required by these structures—
provides sufficient objective boundaries for one of skill in the art to define
the metes and bounds of the claim language at issue. See, e.g., Sonix Tech.
Co. v. Publ’nslnt’l, Ltd., 844 F.3d 1370, 1378-79 (Fed. Cir. 2017)
(discussing how “the written description is key to determining whether a
term of degree is indefinite” and how examples and requirements in the
written description can, in certain instances, help provide an objective
standard for claim scope).
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To the extent the Examiner takes the position that “rigid” is indefinite
because the meaning as indicated by the intrinsic evidence may conflict with
the meaning as indicated by certain extrinsic evidence, we disagree. See
Final Act. 5. In such a situation, the intrinsic evidence should guide the
claim construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1322—23
(Fed. Cir. 2005) (en banc) (stating that a tribunal may ‘“rely on dictionary
definitions when construing claim terms, so long as the dictionary definition
does not contradict any definition found in or ascertained by a reading of the
patent documents’”) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1584 n.6 (Fed. Cir. 1996)).
For these reasons, we do not sustain the rejection of claim 9 under
35 U.S.C. § 112, second paragraph.
Rejection 2 — The rejection of claims 1—3, 6—8, 10 and 11
under 35 U.S.C. § 102(b) as anticipated by Dhaliwal
Independent claim 1 recites, among other limitations, “a clevis
arrangement having a clevis.” Appeal Br. A-l (Claims App.). In this
Rejection, the Examiner identified anti-fret liner 66 in Dhaliwal as the
recited “clevis.” Final Act. 7; see also Dhaliwal 140 (discussing anti-fret
liner 66). The Examiner stated that “[t]he American Heritage Dictionary,
Fourth Edition, copyright 2000 defines clevis as ‘A U-shaped metal piece
with holes in each end through which a pin or bolt is run, used as a fastening
device.’” Id.
Appellants argue that “a liner 66 is not a clevis, as would be
understood by one of ordinary skill in the art” and that, “[tjhus, liner 66
cannot reasonably be considered to correspond to the claimed clevis.”
Appeal Br. 8. The Examiner responds that “[a]s best illustrated in Dhaliwal
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— Figs. 2, 7, and 8C, drawing element (66) satisfied the ordinary meaning of
‘clevis’ based on the dictionary definition.” Ans. 7. In the Reply Brief,
Appellants state that, as evidenced by the dictionary definition cited by the
Examiner, “the ordinary and customary meaning of a ‘clevis’ is a U- shaped
element used to fasten.” Reply Br. 6—7. Appellants argue that “Dhaliwal[’s]
anti-fret liner 66 is not a fastening device, nor is it used in Dhaliwal as a
fastener” but rather, “the liner is a ‘wear prevention means’ ‘preventing wear
of the flange 28 caused by circumferential movement of the bracket 45
during thermal expansion and contraction of the casing 20.’” Id. at 7
(quoting Dhaliwal 140).
For the reasons stated by Appellants (as set forth above), we agree
that the record does not support the finding that anti-fret liner 66 in Dhaliwal
satisfies the requirement for a “clevis” in the limitation at issue. Thus, we
do not sustain the rejection of claim 1, or the rejection of claims 2, 3, 6—8, 10
and 11, which depend from claim 1, as anticipated by Dhaliwal.
Rejections 3 and 4 —The rejection of claims 4 and 9 under 35 U.S.C.
§ 103(a) as unpatentable based on Dhaliwal and Other Prior Art
Claims 4 and 9 depend from claim 1. Appeal Br. A-l (Claims App.).
The Examiner’s added reliance on Gulf State and McBain (regarding
Rejection 3) and Glover as evidenced by Giancoli (regarding Rejection 4)
does not remedy the deficiencies in the teachings of Dhaliwal discussed
above, regarding claim 1 (see supra Rejection 2). Moreover, the Examiner
does not articulate any additional findings or reasoning and does not propose
any modification of Dhaliwal to remedy the deficiencies discussed above.
Thus, for the same reasons discussed above, we do not sustain the rejection
of claims 4 and 9.
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Rejections 5 through 7— The rejection of claims 1—5 under 35 U.S.C.
§ 103(a) as unpatentable based on Artim and Other Prior Art
For Rejection 5, Appellants argue the patentability of independent
claim 1 and do not separately argue claims 2 and 3, which depend from
claim 1. Appeal Br. 10-14; Reply Br. 10-14. Thus, we address claim 1,
with claims 2 and 3 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014). Appellants do not present additional arguments to
rebut Rejection 6 (claim 4) or Rejection 7 (claim 5). The outcome of these
Rejections turns on our determination of the patentability of claim 1.
For claim 1, the Examiner relied on Artim as teaching a “manifold
module having first and second ends.” Final Act. 14 (citing Artim Fig. 4-1);
see also id. at 15 (providing an annotated version of Artim Fig. 4-1). The
Examiner stated that “Erico teaches, on Pg. 83, a fire sprinkler pipe support
adjacent to an end sprinkler nozzle” and “teaches, on Pg. 123, that the
maximum pipe span between pipe supports for a 1 inch pipe was 12 feet.”
Id. The Examiner relied on Figures 1 and 2 of Mott as teachings the last two
clauses of claim 1. See id. at 16—17 (providing an annotated version of
Figures 1 and 2 of Mott). According to the Examiner,
improving a particular device (manifold module) based upon
the teachings of such improvement in Erico and Mott would
have been obvious to one of ordinary skill in the art, i.e.,
applying these known “improvement” techniques in the same
manner to the manifold module of Artim and the results would
have been predictable and readily recognized, that utilizing the
pipe support of Mott to secure the fire sprinkler manifold
module of Artim per the maximum support spacing taught by
Erico would have complied with the NFPA (National Fire
Protection Association) requirements.
Id. at 16.
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First, Appellants argue that “the Artim sprinkler bar cannot reasonably
be considered to correspond to the claimed manifold module” and that “[i]n
order to arrive at this conclusion, the Examiner relies on a secondary
definition of ‘manifold’ that is incongruent with the meaning of manifold as
used in claim 1.” Appeal Br. 11 (discussing a definition of “manifold”
provided at Final Act. 14).
The Examiner responds by providing a definition of “manifold” from
the Dictionary of Civil Engineering (Fourth Edition), which defines
“manifold” as “[a] thick pipe, generally curved, into which or from which
several smaller pipes lead.” Ans. 18. The Examiner states, “[accordingly,
the arrangement of pipes in reference Artim reads on the broadest reasonable
interpretation of ‘manifold.’” Id. The Examiner also states that
“Appellants’] arguments are wrong because there is no support for
Appellants’] narrow interpretation of the claim limitations.” Id.
Appellants reply that “the specification adequately defines ‘manifold
module’” because “[t]he specification describes the claimed manifold
module as a module with an array of impingement apertures provided in its
radially inner surface so that cooling fluid can be ejected from the apertures
to impingement cool the intermediate pressure turbine casing 34 radially
inwardly of the manifold module.” Reply Br. 11 (citing Spec. 4,11. 1—11).
According to Appellants, “[n]o inquiry into any other possible definition of
‘manifold module,’ such as that provided by the Examiner from the
Dictionary of Civil Engineering, Fourth Edition (1993), which is
inconsistent with specification, should be required.” Id.
We are not apprised of error by this argument because Appellants
have not demonstrated why the definition provided by the Examiner (Ans.
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18) is “inconsistent with [the] [Specification” (Reply Br. 11). Here, the
definition provided by the Examiner is consistent with the Specification,
including the passage cited by Appellants. The Specification describes an
“annular array of discrete manifold modules 46 that are arc-shaped and
positioned intermediate the circumferential feed duct 38 and the casing 34”
and that are “coupled to a rigid portion 42 of the circumferential feed duct
38 by an air transfer box 48.” Spec. 4,11. 1—3, 12—13 (discussing Fig. 2).
The Specification also provides that “[t]he [cooling] fluid passes through
alternate rigid portions 42 and flexible portions 44” and “[a] portion of the
fluid is diverted from each rigid portion 42 through an air transfer box 48
and into a manifold module 46 to be sprayed at the casing 34 to perform
impingement cooling.” Id., 11. 15—18.
To the extent Appellants seek to limit the recited “manifold module”
to use in a gas turbine engine (as in the passage from page 4 of the
Specification cited by Appellants), as acknowledged by Appellants at the
oral hearing, claim 1 does not limit the “manifold module” to such use. See
Tr. 13:19 — 14:6; see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (“[F]imitations are not to be read into the claims from the
specification.”); Spec. 1,11. 3—5 (“The present invention relates to a manifold
mounting arrangement, particularly, but not exclusively, for mounting a
turbine case cooling manifold arrangement in a gas turbine engine.”
(emphasis added)), discussed at Tr. 15:6—14.
Second, Appellants argue that “[n]either rigid depending element 6
nor bar 7 [of Mott] are a locking bar configured to be coupled to the clevis
and to constrain a manifold module relative to the clevis arrangement in the
locality of the locking bar” as recited in the last clause of claim 1. Appeal
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Br. 11. Appellants argue that, “[a]t best, elements 6, 7 merely constrain the
load, a pipe, to the yoke-shaped upper socket 8 (see [Mott] Figures 1—3).”
Id. Appellants argue that ‘“configured to’ constrain the manifold module
relative to the clevis arrangement is a structural feature of the claimed
locking bar.” Reply Br. 10.
The Examiner responds that Appellants’ arguments from the Appeal
Brief are “mere allegations without any factual support for Appellants’]
conclusory arguments based on Appellants’] narrow interpretation of the
terms ‘locking bar,’ ‘clevis,’ and ‘manifold module.’” Ans. 14.
We are not apprised of error based on this argument because
Appellants recite the language of the claim and state that the prior art does
not disclose that limitation but do not explain why. See 37 C.F.R.
§ 41.37(c)(l)(iv) (“The arguments shall explain why the examiner erred as
to each ground of rejection contested by appellant.”); see also Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“An appellant may
attempt to overcome an examiner’s obviousness rejection on appeal to the
Board by submitting arguments and/or evidence to show that the examiner
made an error . . . .” (emphasis added)). Further, at the oral hearing,
Appellants clarified that this argument relies entirely on the position that
Artim does not disclose a “manifold module” (see supra first argument) and
thus (according to the argument) the modified device does not satisfy the last
clause of claim 1. See Tr. 12:1 — 13:12.
Third, Appellants state that “Artim discloses a network of pipes with
spray outlets in a fire sprinkler system” and argue that “Artim is not related
to a manifold mounting arrangement and certainly not a manifold mounting
arrangement in the context of a gas turbine engine.” Appeal Br. 12.
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Appellants also argue that “Erico, which is also directed to fire sprinkler
systems, is also non-analogous art for at least the same reasons.” Id. at 13.
The Examiner responds that claim 1 “does not recite any limitations
that would even hint to one of ordinary skill in the art that Appellants’]
claimed invention is in the gas turbine engine art.” Ans. 19. According to
the Examiner, because claim 1 “failed to explicitly or implicitly recite any
limitations that would link the claimed invention to the gas turbine art, it was
proper for Artim and Erico to be applied against Claim 1 based on the
broadest reasonable interpretation of Claim 1.” Id. at 20.
In reply, Appellants argue that “[t]he broadest reasonable
interpretation of claim 1 in view of the specification is that the claimed
manifold mounting arrangement is directed to use in a gas turbine engine, as
would be understood by one of ordinary skill in the art.” Reply Br. 12.
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). A prior art reference that satisfies either
test is considered analogous art. See In re Kahn, 441 F.3d 977, 987—88 (Fed.
Cir. 2006). Because Artim and Erico both satisfies the first test, we will not
address the second test.
Here, the Examiner identifies the field of endeavor as manifold
mounting arrangements. See Ans. 20 (“Since Appellants’] Claim 1 recites
‘A manifold mounting arrangement comprising . . . locking bar’, Artim and
Erico are analogous art because Artim teaches a manifold as discussed in the
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Second response on [pages 16—18 of the Answer] and Erico teaches a
mounting arrangement for Artim’s manifold.”). For the reasons discussed
above regarding Appellants’ first argument for this Rejection, we are not
apprised of error in the determination that the identified structures in Artim
satisfy the recited “manifold module” under the broadest reasonable
interpretation of that term. As noted by the Examiner (Ans. 19—20), claim 1
does not limit the recited “manifold module” to use in a gas turbine engine.
Thus, we see no error in the Examiner’s finding that Artim is from the same
field of endeavor as the claimed invention. For the same reasons, we see no
error in the finding that Erico teaches a mounting arrangement for Artim’s
manifold (Ans. 20), and that Erico therefore is also from the same field of
endeavor as the claimed invention.
Fourth, Appellants argue that “there would have been no reason for
one of ordinary skill in the art to modify Artim and Erico with Mott in the
manner suggested by the Examiner” because “Mott is directed to a
suspension device for use in movable load services such as suspension
bridges” whereas “fire sprinkler systems are fixed and stationary, rendering
the application of configurations useful in the movable load context futile.”
Appeal Br. 13. Appellants also argue that “Artim and Mott are directed to
completely different endeavors” and that “adding the Mott yoke-shaped
socket to the Artim fire sprinkler configuration would enhance movability of
the Artim pipe structure and clearly frustrate the function of Artim which
relies on secure fixed attachment to ceilings in order to support the structure
over time and withstand the force of water during operation.” Id. at 14.
The Examiner responds that “pipe hangers/supports for fire sprinklers
are basically identical to generic pipe supports” and that “the pipe
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hanger/support of Mott was related to fire sprinkler pipe hangers/supports
because they were both in the pipe hanger/support art.” Ans. 23-24.
We are not apprised of error based on this argument. As an initial
matter, we do not agree with Appellants that Mott limits the possible uses of
the disclosed suspension device to use only for “movable load services such
as suspension bridges.” Reply Br. 13 (discussing Mott 1,11. 1—7). The cited
passage in Mott provides that the invention is “particularly directed to
suspension devices for movable load service, such as the suspension of. . .
bridges” and other structures, but also provides that the “invention related
generally to suspension devices” and specifically directed to the “suspension
of pipe lines.” Mott 1,11. 1—7 (emphasis added); see also Tr. 15:19— 17:7
(discussing the cited passage in Mott).
Moreover, even assuming that Artim relates to “fixed” structures
whereas Mott relates to “movable” structures, Appellants have not shown
that the alleged differences identified undermine the factual findings or
reasoning relied on to support the conclusion of obviousness. See Final Act.
14—17; Ans. 25—26; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007) (“[FJamiliar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
Based on these alleged differences between the teachings of Artim
and Mott, Appellants also allege that (1) “the proposed modification would
. . . require undue design and reengineering that would have involved
substantial cost and skill,” (2) “[a]ny attempt to reconstruct the above-recited
features of claim 1 with Artim, Erico and Mott would require improper
hindsight reasoning,” and (3) “there is no motivation cited by the Examiner,
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or otherwise disclosed in any of the applied references, to suggest why or
how one of ordinary skill in the art would have predictably modified Artim
to constrain a manifold module to a clevis arrangement, as allegedly taught
by Mott.” Appeal Br. 14. We are not apprised of error based on these
additional arguments.
As to the first, we agree with the Examiner that Appellants do not
support this argument with evidence. See Ans. 27 (paragraph beginning
“Fourth”). As to the second, Appellants allege “improper hindsight
reasoning” but, as noted above, do not address the reasoning provided. By
not showing error in the reasoning provided, Appellants have not shown
error in the conclusion as to obviousness. See In re Cree, Inc., 818 F.3d 694,
702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as
“essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references”). As to the third,
Appellants do not explain why the proposed modification of the structures in
Artim with the structures in Mott would have been unpredictable.
For the reasons above, we sustain the rejection of independent claim
1. Claims 2—5 fall with claim 1.
DECISION
We reverse the decision to reject claim 9 under 35U.S.C. § 112,
second paragraph;
we reverse the decision to reject claims 1—3, 6—8, 10 and 11 under
35 U.S.C. § 102(b) as anticipated by Dhaliwal;
we reverse the decision to reject claims 4 and 9 under 35 U.S.C.
§ 103(b) as unpatentable based on Dhaliwal and other prior art; and
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we affirm the decision to reject claims 1—5 under 35 U.S.C. § 103(a)
as unpatentable based on Artim and other prior art.3
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-IN-PART
3 See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.”).
17