Ex Parte Strutt

Patent Trial and Appeal Board

Aug 10, 2018

13632188 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/632, 188 10/01/2012
26353 7590 08/14/2018
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
David C. Strutt
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.
NSD2012-006 6291
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
guerral@westinghouse.com
spadacjc@westinghouse.com
coldrerj@westinghouse.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID C. STRUTT
Appeal 2017-011730 1
Application 13/632, 1882
Technology Center 3600
Before NINA L. MEDLOCK, BART A. GERSTENBLITH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5, 7-12, 14, 16, 17, and 19. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed
May 19, 2017), ReplyBrief("ReplyBr.," filed Sept. 19, 2017), and
Specification ("Spec.," filed Oct. 1, 2012), and the Examiner's Answer
("Ans.," mailed July 20, 2017), and Final Office Action ("Final Act.,"
mailed Dec. 29, 2016).
2 Appellant identifies Westinghouse Electric Company, LLC as the real
party in interest. App. Br. 2.
Appeal 2017-011730
Application 13/632, 188
CLAIMED INVENTION
Appellant's claimed invention relates to a duct connection. Spec. ,r 1.
Claims 1, 8, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A duct connection comprising:
a first flange;
a second flange;
a middle portion having a first end coupled to the first
flange and a second end coupled to the second flange;
an expandable duct section having a first end directly
coupled to the second flange and a second end configured to
couple with a first duct; and
a slip fit attached to the first flange, the slip fit having a
first portion and a second portion, wherein, in cross-section, the
first portion extends from the first flange substantially
perpendicular with respect to the first flange and the second
portion extends from the first portion of the slip fit substantially
parallel with respect to the first flange,
wherein the slip fit and the first flange form a receiving
area structured such that a portion of a corresponding flange
included on a second duct can slide into the receiving area,
wherein the expandable duct section is structured to
expand to permit the slip fit to move a limited amount in any
direction, and
wherein, in cross-section, the first flange extends from
the first end of the middle portion in a direction substantially
perpendicular with respect to the middle portion, the second
flange extends from the second end of the middle portion in the
direction substantially perpendicular to the middle portion, and
the first and second flanges are substantially parallel with each
other.
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Appeal 2017-011730
Application 13/632, 188
REJECTI0NS 3, 4
Claims 1-5, 7-12, 17, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by De Moude (US 2,933,334, iss. Apr. 19, 1960).
Claims 8-12, 14, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over De Moude.
ANALYSIS
Anticipation
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1 and 17 under 35 U.S.C. § 102(b) at least
because De Moude does not disclose "an expandable duct section having a
first end directly coupled to the second flange and a second end configured
to couple with a first duct," as recited in claim 1, and similarly recited in
claim 17. App. Br. 16-20; see also Reply Br. 1--4. The Examiner cites
De Moude's ends 1 and 2 of adjacent pipe sections as disclosing the claimed
expandable duct section. Final Act. 7 ( citing De Moude, Fig. 2).
De Moude relates to improvements in pipe couplings "for quickly and
conveniently joining the ends of pipe sections." De Moude, col. 1, 11. 15-19.
A principal object of De Moude is to provide a coupling for sections of pipe,
hose, or similar tubular elements. Id. at col. 1, 11. 20-25. End of a pipe
section 1 is coupled with adjacent end 2 of an adjacent pipe section. Id. at
3 The Examiner has withdrawn the rejections under 35 U.S.C. § 112, first
and second paragraphs. Ans. 2-5.
4 Appellant argues that the Examiner erred in objecting to the drawings.
App. Br. 7. However, the objection is not subject to review by the Board.
See MPEP § 706.02 ("an objection, if persisted, may be reviewed only by
way of petition to the Director of the US PTO").
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Appeal 2017-011730
Application 13/632, 188
col. 1, 11. 51-55. Ends 1 and 2 are provided with internal ferrules 3 and 4,
respectively. Id. at col. 1, 11. 55-56.
Relying on Figure 1 of De Moude, the Examiner finds that ends 1, 2
of adjacent pipe sections are made out of"thin metal." Ans. 9. Specifically,
the Examiner finds that the cross-hatching depicts that the material of the
pipe sections is metal. Id. (citing MPEP § 608.02 (IX)). And, comparing
the pipe sections with other components of the coupling shown in Figure 1,
the Examiner finds that the metal is thin. Id. The Examiner determines that
the ordinary meaning of "expand" is: (1) "to increase in extent, size,
volume, scope, etc.," and (2) "to spread or stretch out; unfold." Id. at 10
( citing www.dictionary.com). And the Examiner concludes that
De Moude's pipe sections "can ... reasonably be considered as expandable"
(id.), because: (1) thin metal is thermally expandable (id. at 9; see also id. at
11 ("De Moude's [pipe sections] are expandable, as by application of heat");
and (2) De Moude's pipe sections are mechanically expandable (see id. at 9
("one of ordinary skill in the art would know that pipes able to be crimped or
depressed are expandable") (citing De Moude, Figs. 1-3, col. 1, 11. 55-62),
11 ("De Moude's ducts ... also are expandable by mechanical means, such
as a reamer or mandrel or other mechanical tool .... ")).
Appellant argues that one of ordinary skill in the art would understand
the term "expandable duct section" to mean a duct section that expands by
unfolding or unpleating, thereby allowing its end or a part coupled to its end
to move in any direction. App. Br. 19. Appellant asserts that the
Examiner's interpretation unreasonably renders all duct and pipe (e.g., solid
metal pipe, solid polyvinyl chloride (PVC) pipe, and solid fiberglass pipe) to
be construed as the claimed "expandable duct sections." Reply Br. 3 ("all
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Appeal 2017-011730
Application 13/632, 188
three types of pipes [are] susceptible to thermal expansion or [are] able to
[be] reformed using tools"); App. Br. 19 ("The present application pertains
to the field of ductwork. Most ductwork is made of metallic material that
expands minimally due to heat exposure."). Appellant contends that one of
ordinary skill in the art would not consider a solid pipe section, such as
De Moude's pipe section 2, to be an expandable duct section (Reply Br. 3-
4), and would understand that "[t]he ability of a pipe to be crimped or
depressed is not determinative of whether or not said pipe is expandable"
(id. at 4 ). We agree with Appellant.
During prosecution the USPTO gives claims their "broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000) (citation omitted). But this interpretation
"must be reasonable in light of the claims and [S]pecification." PPC
Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 747, 755
(Fed. Cir. 2016). Here, Appellant's Specification relates to ducts, and more
particularly, duct connections that require less time for uninstalling and
reinstalling ducts. See Spec. ,r,r 1--4. With reference to Figure 1, the
Specification provides that expandable duct section 10 allows duct
connection 20 to move a limited amount in any direction, thereby
compensating for misalignment between duct connections 20 and other
ducts, and also alleviating concerns about the duct assembly becoming stuck
during coupling or uncoupling. Id. ,r 34; see also id. at Fig. 1 (showing or
suggesting that expandable duct section 10 includes pleated or folded
material that could be stretched or expanded to provide for limited
mechanical movement).
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Appeal 2017-011730
Application 13/632, 188
In our view, one of ordinary skill in the art would understand the term
"expandable duct section," in light of the Specification, to mean a duct
section that expands, such as by unfolding, stretching, or unpleating. See
Ans. 10 ( defining the term "expand" as having the ability to increase in
extent or size, spread, stretch out, or unfold). De Moude' s pipe sections,
which may expand due to thermal expansion and may be crimped or
depressed, do not teach the claimed expandable duct section, as recited in
claim 1 and similarly recited in claim 1 7.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 17, and dependent claims 2-5, 7, and 19 under
35 U.S.C. § 102(b).
Obviousness
Independent claim 8 recites language similar to the language recited in
independent claims 1 and 17. The rejection of claim 8 does not cure the
deficiency in the Examiner's rejection of claims 1 and 17. Therefore, we do
not sustain the Examiner's rejection of claim 8 and dependent claims 9-12,
14, and 16 under 35 U.S.C. § 103(a) for the same reasons set forth above
with respect to independent claims 1 and 1 7.
DECISION
The Examiner's rejection of claims 1-5, 7, 17, and 19 under 35 U.S.C.
§ 102(b) is reversed.
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Appeal 2017-011730
Application 13/632, 188
The Examiner's rejection of claims 8-12, 14, and 16 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
7