Ex Parte Tanaka et al

Patent Trial and Appeal Board

Nov 23, 2018

13261885 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/261,885 05/14/2014
25297 7590 11/27/2018
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
FIRST NAMED INVENTOR
Y oshiki Tanaka
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.
1868/24 PCT/US 1135
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
11/27/2018 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):
usptomail@jwth.com
datcheson@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIKI TANAKA, NAOTAKA ARISA WA,
NAOHIRO TAKEMOTO, and HIDEYUKI MORII
Appeal2017-010557
Application 13/261,885
Technology Center 3600
Before BENJAMIN D. M. WOOD, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010557
Application 13/261,885
STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellant 1 appeals from the Examiner's
decision, as set forth in the Final Office Action dated June 10, 2016 ("Final
Act."), rejecting claims 1---6. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a welding connection structure for pipes.
Claim 1, the only independent claim on appeal, is reproduced below with
disputed limitations italicized for emphasis:
1. A welding connection structure comprising:
a pipe having, a double-pipe portion at at least one end
thereof, the double-pipe portion having an outer pipe wall as a
pipe wall of the pipe and an inner pipe wall, which is a part of
the pipe wall, is arranged by bending back inward, and is
connected to the outer pipe wall via a bent back portion,
wherein in the structure, the double pipe portion of the
pipe is connected by welding to a mating member, to which the
pipe is to be connected, while the pipe is inserted into the mating
member.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Fukae
Koinuma
JP 10266834
JP 2006242033
Oct. 6, 1998
Sept. 14, 2006
Futaba Industrial Co., Ltd. ("Appellant") is the applicant pursuant to
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Brief,
dated February 9, 2017 ("Appeal Br."), at 2.
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Application 13/261,885
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-6 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Fukae.
3. Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koinuma and Fukae.
Appellant seeks our review of these rejections.
DISCUSSION
Rejection 1: Claims 1-6 as Being Indefinite
Because Appellant does not address Rejection 1, the rejection of
claims 1---6 is summarily sustained.
Rejection 2: Claim 1 as Anticipated By Fukae
Because Appellant does not address Rejection 2, the rejection of claim
1 is summarily sustained.
Rejection 3: Claims 1-6
as Unpatentable Over Koinuma and Fukae
Claim 1
The Examiner finds that Koinuma discloses all limitations of claim 1
except for a double-pipe portion at at least one end thereof, the double-pipe
portion having an outer pipe wall as a pipe wall of the pipe and an inner pipe
wall, which is a part of the pipe wall, is arranged by bending back inward,
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Appeal2017-010557
Application 13/261,885
and is connected to the outer pipe wall via a bent back portion. Final Act. 7.
The Examiner, however, finds that Fukae discloses this missing limitation.
Id. The Examiner determines that it would have been obvious to one having
ordinary skill to have modified Koinuma's device to have a double-pipe
portion that includes (a) an outer pipe wall and (b) an inner pipe wall, that is
a part of the pipe wall, is arranged by bending back inward, and is connected
to the outer pipe wall via a bent back portion, as taught by Fukae
for the purpose of providing a means [ 1] to increase the strength
or rigidity of a portion of a pipe, or [2] to add additional material
at the welding/welded portion of the pipe to better dissipate the
welding heat or [3] to add additional material at the
welding/welded portion of the pipe to aid in preventing weld melt
through, or [ 4] to provide a structure which would have yielded
the same predictable result of allowing to [ sic, two] components
to be welded together.
Final Act. 8.
Appellant contends that the Examiner's rejection is erroneous for
several reasons. First, Appellant contends that "Fukae itself provides no
disclosure, teaching, or suggestion that tubular member 19 is provided for
any of these particular purposes." Appeal Br. 8. According to Appellant,
"Fukae only discloses that tubular member 19 is to be interposed between an
inner tube 13 and an outer pipe 11 of an exhaust pipe having a double pipe
structure to prevent the fusion of inner tube 13 to outer pipe 11 by a weld
bead" and "Fukae is provided to solve a problem that is not relevant to the
structure disclosed by Koinuma (i.e., to create a non-fused connection
between inner and outer pipes of a double-pipe structure)." Id.
Contrary to Appellant's argument, an express teaching or motivation
in the references is not required. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
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Application 13/261,885
398,418 (2007). Instead, the Examiner need only articulate a reason to
combine the references with some rational underpinning to support the legal
conclusion of obviousness. Id. Here, the Examiner reasons that it would
have been obvious to one having ordinary skill in the art to use Fukae's
double-wall pipe in Koinuma's pipe "to increase the strength or rigidity of a
portion of a pipe," "to add additional material at the welding/welded portion
of the pipe to better dissipate the welding heat," "to add additional material
at the welding/welded portion of the pipe to aid in preventing weld melt
through," or "to provide a structure which would have yielded the same
predictable result of allowing to [sic] components to be welded together."
Final Act. 8. Appellant does not address the Examiner's articulated
reasoning for combining Koinuma and Fukae and, thus, does not identify
error by the Examiner.
Second, Appellant summarily contends that "the Examiner's hindsight
rationalization of why such a double-pipe portion would be incorporated into
the exhaust pipe joint structure of Koinuma is inappropriate." Id. Appellant,
however, does not persuasively identify any knowledge relied upon by the
Examiner that was gleaned only from Appellant's disclosure and that was
not otherwise within the level of ordinary skill at the time of the invention,
thereby obviating Appellant's assertion of hindsight. See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellant does not apprise us of
error.
For the reasons above, the rejection of claim 1 is sustained.
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Application 13/261,885
Claim 2
As to the rejection of claim 2, the Examiner finds that Koinuma as
modified by Fukae discloses a pipe that
is configured such that at least a part of the double-pipe portion
has a larger outer diameter than another part and such that a
tapered portion in a tapered shape is formed between a large-
diameter portion comprising at least a part of the double-pipe
portion and a small-diameter portion comprising a portion
having a smallest outer diameter in the pipe wherein at least a
part of the tapered portion is formed of the double-pipe portion.
Final Act. 8-9.
The Examiner explains that a "specific length ( of the inner pipe wall's
length) of an inner pipe increases the strength or rigidity of a portion of a
pipe (the portion containing a double-pipe/wall), or better dissipates the
welding heat or aids in preventing weld melt through." Id. at 9. The
Examiner determines that it would have been an obvious matter of design
choice to have had a large-diameter portion comprising at least a part of the
double-pipe portion and a small diameter portion comprising a portion
having a smallest outer diameter in the pipe wherein at least a part of the
tapered portion is formed of the double-pipe portion:
Id.
for the purpose of providing a means to increase the strength or
rigidity of a portion of a pipe, or to add additional material at the
welding/welded portion of the pipe to better dissipate the
welding heat or to add additional material at the welding/welded
portion of the pipe to aid in preventing weld melt through, or to
provide a structure which would have yielded the same
predictable result of allowing to [sic] components to be welded
together, since such a modification would have involved a mere
change in the size and/or proportion of a component.
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Application 13/261,885
Appellant contends that the Examiner's findings and reasoning are
erroneous because "the difference between the recited configuration of the
welding connection structure and that of the proposed combination of the
teachings of Koinuma and Fukae is more than merely a difference in degree
and/or size of a component (e.g., a length of the inner piper wall)." Appeal
Br. 9. According to Appellant, Fukae discloses a "straight-sided outer tube
11 and tubular member 19 and Koinuma fails to disclose a double-pipe
portion at all, the welding connection structure recited in claim 2 provides
for a double-pipe portion that is shaped so that it extends along with the
outer pipe wall to form a tapered portion." Id. Appellant also asserts that
Fukae' s tapered pipe portion on inner pipe 13 is incompatible with Fukae' s
double-pipe portion. Id. at 10.
Appellant, however, is attacking the teachings of Koinuma and Fukae
individually. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Here, the Examiner finds that Koinuma, not Fukae, discloses a
tapered pipe and Fukae, not Koinuma, discloses the double-pipe portion.
Final Act. 7-9. The Examiner proposes adding Fukae's double-pipe portion
to Koinuma's tapered pipe, and, contrary to Appellant's argument, the
Examiner does not propose adding Fukae' s tapered inner pipe 13 to
Koinuma's tapered pipe. Appellant's argument does not address the
rejection as articulated by the Examiner, and, thus, does not identify error by
the Examiner.
For the reasons above, the rejection of claim 2 is sustained.
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Appeal2017-010557
Application 13/261,885
Claims 3, 4, and 6
As discussed above, we sustain the Examiner's rejection of claim 1.
Because Appellant does not argue claims 3, 4, and 6 apart from claims 1 and
2, or allege any other patentable distinctions for claims 3, 4, and 6, we
likewise sustain the Examiner's rejections of these claims.
Claim 5
As to the rejection of claim 5, the Examiner finds that "Koinuma as
modified by Fukae appear[ s] to disclose a tapered portion having a taper
angle (theta) approximately approaching 20 degrees but the exact angle (or
angle range) appears not to be disclosed." Final Act. 11.
Appellant contends that the Examiner's rejection of claim 5 is
erroneous because "the tapered portion having a taper angle of less than 20
degrees contradicts the express teaching of Koinuma. In particular,
Koinuma discloses in paragraph [0007] that a taper angle of between 20-60
degrees achieves the desired stress distribution." Appeal Br. 11.
In response to Appellant's argument, the Examiner correctly explains
that paragraph 7 's reference to a taper angle of 20-60 degrees "is merely a
preference and could encompass other angles." Ans. 11. We agree. As the
Examiner correctly explains, other portions of Koinuma disclose that the
taper angle could be "about 20 degrees" and "is preferably 20 degrees to 60
degrees." Ans. 11 (quoting Koinuma ,r 14). Thus, the rejection of claim 5 is
sustained.
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Appeal2017-010557
Application 13/261,885
DECISION
For the above reasons, the Examiner's rejections of claims 1---6 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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