Ex Parte Underwood et al

Patent Trial and Appeal Board

Sep 25, 2014

12370745 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVE D. UNDERWOOD, STEVE G. GARRISON,
BOBBY D. GANT and JOHN R. PALMER1
____________

Appeal 2012-011480
Application 12/370,745
Technology Center 2800
____________

Before CHUNG K. PAK, MARK NAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision finally rejecting claims 1-25 under 35 U.S.C. § 103(a)
over Chamonard (EP 0 564 312 A1, Oct. 6, 1993)2 in view of Boutwell (US
4,507,954, April 2, 1985). We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

1 According to Appellants, the Real Party in Interest is The Boeing
Company. App. Br. 3.
2 Our reference to Chamonard is to the corresponding English translation of
record.
App
App

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with
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re 2 illustr
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nd the hos
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ates a top
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tion 42 ar
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e 12. Id.
nnular hos
STATEM
Int
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. Spec. A
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ENT OF C
roduction
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e exploded
ion 40 and
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a bore 14
d. at ¶ 14.
nal annula
er surface
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ASE
attaching
ealed sub
view of t
second po
e hose 12.
, formed w
When ho
r cavity 24
16 and sec
d 22, form
apparatus
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he hose-at
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Spec. ¶¶
hen first p
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ond outer
the ends
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taching
f the hose
2, 18. The
ortion 40
g member
oaxially
surface 18
of the
-

,
Appeal 2012-011480
Application 12/370,745

3
internal annular cavity 24. Id. The hose-attaching member 10 further has a
detector probe hole 30. Id. at ¶ 16.
Independent claim 1, directed to the hose-attaching apparatus, is
representative of the invention3 and is reproduced below from the Claims
Appendix to the Appeal Brief4:
1. A hose-attaching apparatus for leak-testing a pressurized hose
comprising:
a hose-attaching member comprising a bore extending through the
hose-attaching member, an internal annular cavity extending coaxially
around the bore, and at least one of a detector probe hole or a detector probe
connected to the internal annular cavity, wherein at least a portion of the
bore has a diameter which is at least one of substantially equal to or less than
a diameter of a hose to be leak-tested, and the internal annular cavity is for
leak-testing a hose disposed within the bore while the internal annular cavity
is at atmospheric pressure. [App. Br. 17 (emphasis added).]

ANALYSIS
We have reviewed the Examiner’s rejections in light of arguments
advanced by the Appellants in their Appeal and Reply Briefs, but are not
persuaded the Examiner erred reversibly in concluding the claims were

3 Appellants do not separately argue any individual claims on appeal. (App.
Br. 5-16.) Therefore, for purposes of this appeal, we limit our discussion to
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to
the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).

4 Appellants’ Appeal Brief of record is a Supplemental Appeal Brief
(hereafter “App. Br.”).
App
App

unpa
Fina
for l
3, re

5 Rat
refer
Brie
Repl
cons
time

eal 2012-0
lication 12
tentable fo
l Office A
The Exa
eak-testing
produced b

her than r
to the Fin
f (filed Ap
y Brief (fi
idered in t
ly raised in
11480
/370,745
r obvious
ction and E
miner find
a pressur
elow):

eiterate all
al Office A
ril 9, 2012
led July 23
his decisio
their Brie
ness, essen
xaminer’
s Chamon
ized hose.

argument
ction (ma
), the Answ
, 2012) fo
n only tho
fs.
4
tially for t
s Response
ard disclo
Final Act
s of Appel
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r the respe
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ses a hose-
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ber 21, 2
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ctive deta
nts Appel
s expresse
ent.5
attaching
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he Examin
011), the A
, 2012), an
ils. We ha
lants actua
d in the
apparatus
ard, Fig.
er, we
ppeal
d the
ve
lly and
Appeal 2012-011480
Application 12/370,745

5
Figure 3 illustrates a hose-attaching member with detached first and second
portions (two half-shells (62)), which together would form a cylinder to
enclose a portion of a length of hose. Specifically, with respect to claim 1,
referring to Chamonard, Figure 3, the Examiner finds a hose-attaching
member (20) with a bore extending through the hose-attaching member, an
internal annular cavity (the open space around 30) extending coaxially
around the bore, and at least one of a detector probe hole (near 68) or a
detector probe (noting detector 38 inside of 10) connected to the internal
annular cavity, wherein at least a portion of the bore has a diameter either
substantially equal to or less than a diameter of a hose to be leak tested, and
the internal annular cavity is for leak-testing a hose disposed within the bore.
Final Action 2. The Examiner finds “Chamonard does not necessarily
disclose that the internal annular cavity is at atmospheric pressure.” Id.
The Examiner finds Boutwell teaches a similar leak testing device and
teaches sampling at atmospheric pressure and that it is the pressure
differential that matters when detecting leakage. Id. at 3 (citing Boutwell,
col. 1, l. 59 to col. 2, l. 5 and col. 2, ll. 50-64). The Examiner then
determines it would have been obvious to one of ordinary skill to operate the
hose-attaching apparatus of Chamonard by leaving its interior annular cavity
at atmospheric pressure (not applying suction with pump 10) to collect or
accumulate any gas leaking from the hose within the interior annular cavity
and using a suction pump (vacuum means) with a detection means to draw
out a sample gas from the interior annular cavity for the leak detection
purposes. Final Action 3 and Ans. 3.
Appellants do not dispute the Examiner’s finding that Chamonard
discloses all of the structures recited in claim 1. Compare Ans. 3 with App.
Appeal 2012-011480
Application 12/370,745

6
Br. 5-16.6 Rather, contending it discloses operating its internal cavity at a
vacuum pressure, rather than at atmospheric pressure, Appellants argue that
the Examiner has not shown the references teach or suggest all elements of
the claims and that the Examiner has failed to supply a valid reason to
modify the cited references to provide missing claim elements. App. Br.
8-16. In support of this argument, Appellants focus on the disclosures of
U.S Patent 2,766,614 issued to Cook on October 16, 1956 (“Cook”) and
U.S. Patent 3,762,212 issued to Morley et al. on October 3, 1973 (“Morley”)
referred to in the portion of Boutwell relied upon by the Examiner.
App. Br. 12-16; see also Boutwell, col. 1, l. 59 to col. 2, l. 5 and col. 2,
ll. 50-64 relied upon by the Examiner. However, neither the disclosure of
Cook nor the disclosure of Morley relied upon by Appellants shows that one
of ordinary skill in the art would not have been led to operate the hose-
attaching apparatus of Chamonard by leaving its interior annular cavity at
atmospheric pressure (not applying suction with pump 10) to collect or
accumulate any gas leaking from the hose or pipe within the interior annular
cavity and withdrawing a sample gas from the interior annular cavity using a
suction pump (vacuum means) with a detection means for the leak detection
purposes. In fact, consistent with the Examiner’s finding indicated supra,
Cook referred to in Boutwell teaches using an interior cavity formed with a
blanket similar to an interior annular cavity formed by two half-shells in
Chamonard to collect or accumulate any gas which may have been leaked

6 Any new arguments pertaining to a hose raised for the first time in the
Reply Brief are deemed waived as explained below especially since
Appellants could have raised it earlier due to the Examiner’s finding relating
to Chamonard’s disclosure of a hose-attaching apparatus. See generally
Final Office Action.
Appeal 2012-011480
Application 12/370,745

7
from a hose or a pipe at atmospheric pressure prior to withdrawing a sample
gas from the cavity for the detection purposes. Cook, col. 3, ll. 1-8.
More importantly, however, Appellants do not demonstrate that the
interior annular cavity of the hose-attaching apparatus taught by Chamonard
is not capable of being under atmospheric pressure (via not applying vacuum
with a suction pump). App. Br. 12-16. Nor do Appellants identify any
structural difference between the hose-attaching device taught by
Chamonard and the apparatus recited in claim 1. App. Br. 5-16; In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“There is no dispute that
the structural limitations recited in Schreiber’s application are all found in
the Harz reference upon which the examiner and the Board relied. . . .
Although Schreiber is correct that Harz does not address the use of the
disclosed structure to dispense popcorn, the absence of a disclosure relating
to function does not defeat the Board’s finding of anticipation”); In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (emphasis added) (“Where, as here, the
claimed and prior art products are identical or substantially identical . . . , the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”).
Thus, on this record, Appellants have not identified any harmful or
reversible error in the Examiner’s determination regarding obviousness of
the subject matter recited in the claims on appeal.
Appellants argue for the first time in the Reply Brief that Chamonard
was designed for testing pipes and not a hose and that seals formed by the
claimed invention could not be formed with pipes as tested in Chamonard
because “pipes, unlike hoses, are manufactured with rigid materials” (Reply
Appeal 2012-011480
Application 12/370,745

8
Br. 3-4). We decline to consider these arguments because they could have
been raised in the Appeal Brief. Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative decision) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).

DECISION
We AFFIRM the rejection of claims 1-25 under 35 U.S.C. § 103(a) as
obvious over Chamonard in view of Boutwell.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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