Ex Parte Swift et alDownload PDFPatent Trial and Appeal BoardJun 3, 201612380920 (P.T.A.B. Jun. 3, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/380,920 0310512009 26683 7590 06/03/2016 GA TES CORPORATION IP LAW DEPT. 10-A3 1551 WEWATTA STREET DENVER, CO 80202 FIRST NAMED INVENTOR Jonathan Clark Swift 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. C08-114A 5937 EXAMINER DRIGGERS, GWENDOLYN YVONNE ART UNIT PAPER NUMBER 3679 MAILDATE DELIVERY MODE 06/03/2016 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 Exparte JONATHAN CLARK SWIFT, KURTIS HORWATH, and SHAHRAM TOTONCHIAN Appeal2014-004585 Application 12/380,9201 Technology Center 3600 Before STEFAN STAICOVICI, GEORGE R. HOSKINS and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Swift et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4 and 6-9. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. According to Appellants, the real party in interest is Gates Corporation. Br. 1 (filed Mar. 25, 2013). 2 Claims 5 and 10 have been canceled. Id. at 11-12. Appeal2014-004585 Application 12/380,920 INVENTION Appellants' invention relates to a tube connector for making a tube joint. Spec. 1, 11. 6, 14. Claims 1 and 6 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A tube connector comprising: a male portion ( 10) having a male portion thread ( 11) on an outer surface; a first tube (30) having a first tube surface (32) disposed at a seat angle (8) of approximately 37° to a tube connector centerline (A- A); the male portion having a clearance engagement with the first tube; a nut (20) having a clearance engagement with a second tube ( 40), the nut engagable with the male portion thread; the second tube having a second tube surface ( 41) disposed at a seat angle in the range of (8 + x) 0 , where xis 1°; and the first tube surface compressed by the nut and the male portion against the second tube surface for a sealing engagement between the first tube surface and the second tube surface. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1--4 and 6-9 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. The Examiner rejected claim 1--4 and 6-9 under 35 U.S.C. § 103(a) as unpatentable over Dick (US 1,987,100, iss. Jan. 8, 1935) in view of Shutt (US 4, 133,565, iss. Jan. 9, 1979). 2 Appeal2014-004585 Application 12/380,920 ANALYSIS Rejection I The Examiner finds that the limitation "disposed at a seat angle in the range of (8 + x) 0 , where xis 1°" constitutes new matter because "[t]he disclosure of a range of values does not provide support for the recitation of a single specific value within that range at the exclusion of all other values ofthat range." Final Act. 4 (mailed Feb. 28, 2013). We are not persuaded by the Examiner's position because the purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to "'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed."' Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). In this case, Appellants' Specification describes a range of values for x between +0° up to 1°. See Spec. 5, 11. 19- 22. As such, Appellants' Specification provides support for at least the end value of 1 °. We thus agree with Appellants that the Specification clearly describes x = 1 degree in the range of x = +0° up to 1 °. Br. 6. We therefore do not sustain the rejection of independent claims 1 and 6, and claims 2--4 and 7-9 depending therefrom, respectively, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Rejection II The Examiner finds that Dick discloses a tube connector including a first tube (24') having a first tube surface (25') disposed at a first seat angle to a tube connector centerline, and a second tube ( 16) having a second tube 3 Appeal2014-004585 Application 12/380,920 surface (27') disposed at a second seat angle. See Final Act. 5. The Examiner further finds that "Dick does not explicitly indicate the angle of the surfaces," but rather defines the claim term "approximately" to mean "very similar" under the broadest reasonable interpretation, and thus concludes that Dick discloses a general seat angle as shown in the Figures that is "approximately 37°" or "approximately 45°." Ans. 11. In response, Appellants argue that Dick does not disclose the claimed seat angles and the Examiner incorrectly relies upon scaling the Figures in Dick. Br. 8. We agree with Appellants that the Figures in Dick do not disclose an angle of approximately 37° and 45°, as called for by independent claims 1 and 6, respectively. First, the Examiner has not stated how the seat angle of Dick can be both "approximately 37°" and "approximately 45°." See Final Act. 6; Ans. 11. Secondly, because Dick does not indicate that the Figures are drawn to scale, the Figures cannot be relied upon to establish either of the precise seat angles. See Hockerson- Halbertstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000) (patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue). Lastly, as Appellants' Specification clearly describes a difference in seat angle of up to 1 °, we do not see how such a small angle differential can be reasonably viewed by simply looking at the Figures of Dick. The Examiner further opines that even if the Figures in Dick do not disclose an angle of approximately 37° and 45°, "a person of ordinary skill ... would be able to make the obvious modification to slightly vary the angles in order to find a workable range." See Ans. 11. We are not 4 Appeal2014-004585 Application 12/380,920 persuaded by the Examiner's position because the Examiner has not shown by a preponderance of the evidence that the seat angles of Dick achieve a recognized result, that is, are result-effective variables, rendering their optimization within the grasp of one of ordinary skill in the art. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (citations omitted)); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) ("discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art" and thus usually obvious (citation omitted)). Finally, the Examiner additionally finds that Shutt discloses two different seat angles. Final Act. 5-6 (citing Shutt, Figures 3, 5). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to "modify the coupling of Dick to include differential taper angles as taught by Shutt in order to enhance the seal between the surfaces by creating a localized region of pressurization." Id. (citing Shutt, col. 3, 11. 33-35 and Fig. 5). Although we appreciate that Shutt discloses differential tapers l 8a, l 9a, nonetheless, Shutt does not disclose a seat angle difference of 1 °, as called for by each of independent claims 1 and 6. Hence, we agree with Appellants that by simply showing "different" seat angles, Shutt does not disclose a seat angle difference of 1 °. See Br. 9-10. In conclusion, for the foregoing reasons, we do not sustain the rejection of independent claims 1 and 6, and claims 2--4 and 7-9 depending therefrom, respectively, under 35 U.S.C. § 103, as being unpatentable over the combined teachings of Dick and Shutt. 5 Appeal2014-004585 Application 12/380,920 SUMMARY The Examiner's decision to reject claims 1-4 and 6-9 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation