Ex Parte Tailor et al

Patent Trial and Appeal Board

May 30, 2018

13230258 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/230,258 09/12/2011
26285 7590 06/01/2018
K&L GA TES LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Dilip Kumar Tailor
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.
110462PCTUS 9542
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DILIP KUMAR TAILOR,
MARK PHILLIP BRANDON, and EMERSON JOHN TACOMA
Appeal2017-007422
Application 13/230,258
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
December 31, 2015 decision finally rejecting claims 24, 25, 28, 33, 3 8--40,
and 45-50 as unpatentable under 35 U.S.C. § 103(a). Claims 34--37 and 41-
44 are withdrawn from consideration as being directed to a non-elected
invention. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Shawcor Ltd. (Br. 1 ).
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Application 13/230,258
CLAIMED SUBJECT MATTER
Appellants' invention is directed to an apparatus for heating a heat
shrinkable sleeve, which is applied around a welded pipe joint during
pipeline construction (Spec. 1 :8-9). According to the Specification, the
apparatus may also be used for pre-heating a welded pipe joint before
treating or coating (id. at 1: 10).
Claim 24 is representative and is reproduced below from the Claims
Appendix of the Appeal Brief (paragraphing added; emphasis in italics):
24. An apparatus for heating an item selected from a section of
a pipeline; and a heat shrinkable sleeve applied around a section
of a pipeline;
the apparatus comprising:
a frame member adapted to be disposed around the item,
the frame member having a
heater device adapted to heat the item and disposed
on or proximal to an inner surface of the frame member,
and
a controller for operating the heater device; the
heater device having two or more heating zones,
wherein the heater device comprises an infrared
heating element in the form of a thin stamped sheet or
foil strip,
the controller configured to operate the infrared
heating element to provide energy at a wavelength of
2.5-6 microns,
wherein the apparatus is configured for offshore
or onshore field applications.
Br. 11 (Claims App.).
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Application 13/230,258
REJECTIONS
(1) Claims 24, 25, 28, 33, 38, 39, and 45-50 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nakahara2 in view of the admitted
prior art as disclosed in the Specification and the Rule 132 Declaration of
Dilip Tailor, filed May 1, 2015. 3
(2) Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nakahara, the admitted prior art, and further in view ofHaley. 4
Appellants' arguments in support of claims 25, 28, 33, 38--40, and 45-
50 are directed to limitations recited in independent claim 24 (see Br. 2-10).
Accordingly, our analysis will focus on the obviousness rejection of claim 24.
DISCUSSION
We have reviewed the arguments set forth by Appellants in their
Appeal Brief. We conclude that, essentially for the reasons set forth by the
Examiner in the Final Action and the Answer, Appellants have not
demonstrated reversible error in the obviousness rejections. We add the
following for emphasis.
The Examiner finds that Nakahara's apparatus teaches each of the
limitations of claim 24, with the exception that Nakahara does not teach that
the disclosed "radiant infrared heaters comprise a thin stamped sheet or foil
strip and are controlled to be peak-adjustable between 2.5 & 6 microns"
2 Nakahara et al., JP 2006-194368, published July 27, 2006. We follow the
Examiner and Appellants in relying upon and citing a translation that is of
record.
3 See, e.g., Spec. 6:8-11, 6:16-19; Rule 132 Declaration ofDilip Tailor,
filed May 1, 2015, Appendix A, Appendix B.
4 Haley, US 5,434,387, issued July 18, 1995.
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Application 13/230,258
(Final Act. 3, citing Nakahara i-f 54). The Examiner relies upon the Casso
Solar V-Series infrared heater, which Appellants admit was commercially
available prior to the Specification's filing date (Final Act. 3; Spec. 6:8-11 ).
The Examiner finds that this heater uses an undulating thin foil ribbon in an
infrared heater and are designed to be peak-adjustable from 2---6 microns
(Final Act. 3). The Examiner determines that it would have been obvious
for the ordinary skilled artisan "to substitute the V-Series foil heating
element ... for the heating element of Nakahara, in order to provide a heater
with independently controlled heating zones that also has a minimum heat
sink mass and fast on-off response time and can be controlled over a wide
range of industrial heating temperatures" (id. at 3--4).
Appellants make the following arguments urging reversal of the
Examiner's § 103(a) rejection of claim 24: (1) the Examiner's findings are
erroneous because Nakahara requires far-infrared heating panels, which
teaches away from the present invention (Br. 3---6); (2) the Examiner's
interpretation ofNakahara's term "far-infrared" is incorrect because an
ordinary skilled artisan would have known that this term excludes
wavelengths within the claimed range of 2.5-6 microns (id. at 5-8); and (3)
it would not have been obvious for one of ordinary skill in the art to use the
Casso Solar V-Series infrared heaters in an apparatus configured for
offshore or onshore field use (id. at 8-10).
Appellants' arguments are not persuasive.
With respect to argument ( 1 ), Appellants do not point to anything in
Nakahara that criticizes, discredits, or discourages employing Casso Solar
V-Series' undulating thin foil ribbon in an infrared heater. Without such an
express teaching, it cannot be said that the art teaches away from the
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Application 13/230,258
necessary modification. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Furthermore, Appellants have not identified reversible error with the
Examiner's findings that "Nakahara explicitly [and] repeatedly states that
various other types of heaters may be used instead of the exemplary far-
infrared heater" (Ans. 2; see, e.g., Nakahara i-fi-149, 54; see also In re Fritch,
972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that "[i]t is well settled
that a prior art reference is relevant for all that it teaches to those of ordinary
skill in the art")). We, therefore, agree with the Examiner that Nakahara
cannot be construed as teaching that the heating of contraction material is
limited to far-infrared heaters only (Ans. 3).
Appellants' argument (2) is not persuasive because the Examiner does
not rely on Nakahara for teaching or suggesting the limitation at issue.
Rather, the Examiner relies on the admitted prior art for teaching or
suggesting infrared heaters controlled to provide energy at a wavelength of
2.5-6 microns (Final Act. 3). Moreover, there is no dispute that the Casso
Solar V-Series infrared heaters provide energy at the requisite wavelengths
(Rule 132 Declaration ofDilip Tailor, filed May 1, 2015, i-f 17). Thus, it is
immaterial whether Nakahara's term "far-infrared" excludes wavelengths
within the range of 2.5---6 microns.
Argument (3) is not persuasive because Appellants have failed to
establish that the ordinary skilled artisan would not have expected the Casso
Solar V-Series infrared heaters to work in the requisite field applications.
There should be actual evidence of unexpected results. See In re Lindner,
457 F.2d 506, 508 (CCPA 1972) ("[M]ere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
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Application 13/230,258
Office questions the efficacy of those statements."). We note that the Rule
132 Declaration of Dilip Tailor, filed Dec. 2, 2015, provides assertions of
unexpected results only through statements provided by the Declarant and
the hearsay of a Casso Solar Engineer (see i-fi-f 18, 23).
Furthermore, even though "[a] modification results in great
improvement and utility over the prior art, it may still not be patentable if the
modification was within the capabilities of one skilled in the art, unless the
claimed ranges produce a new and unexpected result which is different in
kind and not merely in degree from the results of the prior art." In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). In this instance, we agree with
the Examiner that exposing the heated element to a small amount of water to
produce steam in a solar panel factory "is not considered [a] sufficient
showing that the [heating] elements would not be expected to work in a
generally undefined offshore/onshore field environment" (Ans. 8).
Accordingly, we affirm the rejection of claim 24 for the reasons set
forth above and explained in the Examiner's Final Action and the Answer.
Dependent claims 25, 28, 33, 38--40, and 45-50 fall with independent claim
24. 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We AFFIRM the rejection of claims 24, 25, 28, 33, 38, 39, and 45-50
under 35 U.S.C. § 103(a) as obvious over Nakahara in view of the admitted
prior art.
We AFFIRM the rejection of claim 40 under 35 U.S.C. § 103(a) as
obvious over Nakahara, the admitted prior art, and further in view of Haley.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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