Ex parte Steketee

Board of Patent Appeals and Interferences

Jan 28, 2000

08421463 (B.P.A.I. Jan. 28, 2000)

Application for patent filed April 12, 1995. According1
to appellant, this application is a continuation of
Application 08/010,522, filed January 25, 1993, now abandoned,
which is a continuation of Application 07/808,305, filed
December 16, 1991, now abandoned, which is a continuation of
Application 07/180,904, filed April 13, 1988, now abandoned,
which is a continuation-in-part of Application 07/076,973,
filed July 28, 1987, now U.S. Patent No. 4,867,921, issued
September 19, 1989, which is a continuation of Application
06/846,322, filed March 31, 1986, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 64
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CAMPBELL H. STEKETEE, JR.
_____________
Appeal No. 1997-4430
Application 08/421,4631
______________
HEARD: January 10, 2000
_______________
Before COHEN, STAAB and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 39
through 41 and 60 through 66. Claims 15 through 18 have been
Appeal No. 1997-4430
Application 08/421,463
Our understanding of this document is derived from a2
reading of a translation thereof prepared in the United States
2
canceled. Claims 1 through 14, 19 through 38, 42 through 59,
and 67 through 70, the only other claims remaining in the
application, stand withdrawn pursuant to 37 C.F.R. § 1.142(b),
as being drawn to a nonelected invention.

Appellant’s invention pertains to a replacement pipe
product in reduced form for insertion in an existing conduit
and to a replacement pipe product for insertion in an existing
conduit. An understanding of the invention can be derived
from a reading of exemplary claims 39 and 61, copies of which
appear in the SUPPLEMENTAL APPENDIX TO APPEAL BRIEF (Paper No.
58).
As evidence of anticipation and obviousness, the examiner
relies upon the following documents:
Harper et al. (Harper) 2,794,758 Jun. 4, 1957
Hyodo et al. (Hyodo) 4,723,579 Feb. 9, 1988
Laurent 2,503,622 Oct. 15, 1982
(France)2
Appeal No. 1997-4430
Application 08/421,463
Patent and Trademark Office. A copy of the translation is
appended to this opinion.
3
The following rejections are before us for review.
Claims 39 through 41 and 60 through 65 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Laurent.
Claims 61 through 64 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Laurent.
Claims 39 through 41 and 65 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Laurent in view of Hyodo.
Claim 66 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Laurent (as applied to claim 65 in the
anticipation rejection, supra) or Laurent in view of Hyodo (as
applied to claim 65 immediately above), further in view of
Harper.
The full text of the examiner's rejections and response
Appeal No. 1997-4430
Application 08/421,463
In our evaluation of the applied documents, we have3
considered all of the disclosure of each reference for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
to the argument presented by appellant appears in the answer
(Paper No. 57), while the complete statement of appellant’s
argument can be found in the brief (Paper No. 55).
In the brief (page 5), appellant groups the claims as
follows. The first group includes claims 39 through 41, with
claim 40 separately patentable from claim 39. The second
group includes claims 61 through 66, with claims 63 through 66
separately patentable from claim 6 (sic, claim 61).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied references,3
Appeal No. 1997-4430
Application 08/421,463
5
and the respective viewpoints of appellant and the examiner.
As a consequence of our review, we make the determinations
which follow.
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Application 08/421,463
6
We reverse each of the examiner’s rejections of
appellant’s claims. Our reasoning appears below.
The Anticipation Rejections
This panel of the board determines that neither
independent claim 39, nor independent claim 61, is
anticipated by the Laurent disclosure. The same applies of
course to the claims respectively dependent therefrom.
In particular, we are of the view that the limitations of
claim 39 are not addressed by the tube in the shape of star
(Fig. 1C) taught by Laurent. While clearly a deformed tube,
the star shape tube of Laurent nevertheless fails to exhibit a
flattened and longitudinally folded shape, as does the H and U
shapes of the respective embodiments of Figs. 1B and 1D (see
translation, page 5). Thus, the star shape of Laurent cannot
be fairly said to teach the pipe product of claim 39 that
comprises, inter alia, a pipe in reduced form having a
flattened and longitudinally folded shape, with the bulbous
Appeal No. 1997-4430
Application 08/421,463
We note that the teaching of Laurent is somewhat akin to4
the embodiment of appellant’s Figures 1 and 3 wherein a memory
exists for a rounded tubular shape.
7
end of a shorter leg nesting behind the bulbous end of a
longer leg to minimize the overall thickness of the folded
pipe.
As to claim 61, we find that the claimed replacement pipe
product is not anticipated by the Laurent teaching. As can be
discerned from the Laurent document, an initial cylindrical
tube is provided with an elastic memory, which initial tube
shape is subsequently returned to or regained from a deformed
tube configuration (Figs. 1A, 1B, 1C, and 1D). This is not4
the replacement tube product of claim 61 which requires a
memory for a “reduced non-circular form”.
The Obviousness Rejections
We reverse the respective rejections of claims 39 through
41 and 65, and claim 66 under 35 U.S.C. § 103, for reasons set
forth, infra.
Appeal No. 1997-4430
Application 08/421,463
The Fig. 3 embodiment taught by appellant appears to be5
comparable to the Fig. 1D embodiment of Laurent.
8
Claim 39 is drawn to a replacement pipe product and
requires, inter alia, a pipe that is substantially rigid at
ambient temperature and in a reduced form having a flattened
and longitudinally folded shape, with the bulbous end of a
shorter leg nesting behind the bulbous end of a longer leg to
minimize the overall thickness of the folded pipe. Claim 65
(and claim 66 dependent thereon) recites pipe shape
limitations comparable to those set forth in claim 39, and
additionally includes the requirement of a memory for a
reduced non-circular form, as earlier discussed relative to
claim 61.
We note, at this point, that appellant’s specification
informs us (pages 20 and 21) that the preferred form of folded
pipe depicted in Fig. 8 includes the important feature of
bulbous fold and leg ends for preventing the folded portions
of the pipe from splitting when folded, which might occur with
a pipe such as that shown in Fig. 3. The specification (page5
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Application 08/421,463
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21) also reveals the importance of the passages 86, 88, and 89
in enabling steam or other hot fluid to pass full-length
through the folded pipe for reheating and reworking after the
folded pipe is installed.
Turning now to the Laurent and Hyodo references, we are
of the opinion that these documents, collectively considered,
would not have been suggestive of the subject matter of claims
39 and 65 to one having ordinary skill in the art. We, of
course, certainly appreciate some visual similarity between
the tubular fabric 5 of Hyodo (Fig. 1) when considered
relative to the configuration shown in appellant’s Fig. 8.
However, the teaching of Hyodo must be considered as a whole
in conjunction with the overall disclosure of Laurent. From
that perspective, the tubular fabric 5 must fairly be viewed
in its proper context, i.e., as a component part, with open
holes 9, that acts together with a tubular fabric 2 and a
binder 11 to form a lining material 1 for a pipe 10 (Fig. 4),
when the composite is turned inside out. As we see it, only
reliance upon appellant’s own teaching, and not the applied
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Application 08/421,463
10
art alone, would have provided the essential motivation to
configure the distinguishable single article taught by Laurent
with the particular shape taken from the tubular fabric 2 of
Hyodo. At this point, we particularly note that, even if so
modified, the resulting pipe would not be that as claimed
since adoption of the shape of the folded tubular fabric 2 of
Hyodo with its turnover 8 (Fig. 1) would not effect a
configuration of legs nested “to minimize the overall
thickness of the folded pipe” (as seen in appellant’s Fig. 8),
an express requirement of each of claims 39 and 65. Thus, the
claimed invention would not have been rendered obvious on the
basis of the Laurent and Hyodo disclosures. As to the Harper
patent, it is apparent to us that it clearly fails to overcome
the noted deficiencies of Laurent and Hyodo.
In summary, this panel of the board has:
reversed the rejection of claims 39 through 41 and 60
through 65 under 35 U.S.C. § 102(b) as being anticipated by
Laurent;
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Application 08/421,463
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reversed the rejection of claims 61 through 64 under 35
U.S.C. § 102(b) as being anticipated by Laurent;
reversed the rejection of claims 39 through 41 and 65
under 35 U.S.C. § 103 as being unpatentable over Laurent in
view of Hyodo; and
reversed the rejection of claim 66 under 35 U.S.C. § 103
as being unpatentable over Laurent (as applied to claim 65 in
the anticipation rejection, supra) or Laurent in view of Hyodo
(as applied to claim 65 immediately above), further in view of
Harper.
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Application 08/421,463
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The decision of the examiner is reversed.
REVERSED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1997-4430
Application 08/421,463
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ICC/dal
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Application 08/421,463
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MICHAEL I. WOLFSON
COWAN, LIEBOWITZ & LATMAN, P.C.
1133 AVENUE OF THE AMERICAS
10036-6799
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Application 08/421,463
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