Ex Parte Woessner

Patent Trial and Appeal Board

Sep 22, 2016

10501591 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/501,591 04/12/2005
26096 7590 09/26/2016
CARLSON, GASKEY & OLDS, P,C
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
David Woessner
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.
60158-272 2653
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WOESSNER, DECEASED,
by CATHERINE WOESSNER, LEGAL REPRESENTATIVE
Appeal2015---005362
Application 10/501,591
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
BRIAND. RANGE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 1--4, 7, 11-15, 28, 30-
34, 36--44, and 46 in the Office Action mailed March 25, 2010. We have
jurisdiction. 35 U.S.C. §§ 6 and 134(a).
Appeal2015---005362
Application 10/501,591
The present application was the subject of a prior appeal, Appeal No.
2011---003591 1, wherein we sustain the appealed rejections in the Decision
entered December 12, 2012.
Claim 1 illustrates Appellants' invention of a method of forming a
hose into a desired shape, and is representative of the claims on appeal:
1. A method of forming a hose into a desired shape, the method
comprising the steps of:
cutting a hose into a desired length, said hose having a first end
and an opposing second end;
drawing said desired length of said hose into a forming tube
having an inner surface that defines an inner passage that defines a
desired tube shape, the forming tube having bends, wherein the step of
drawing occurs after the step of cutting said hose, said forming tube
including a vacuum end and a loading end, wherein the step of
drawing said hose includes inserting said first end of said hose into
said loading end of said forming tube and applying a vacuum to said
vacuum end of said forming tube;
positioning a vacuum endcap on said vacuum end of said
forming tube such that said first end of said hose contacts said vacuum
endcap;
positioning a loading endcap on said loading end of said
forming tube such that said opposing second end of said hose contacts
said loading endcap;
curing said desired length of said hose into said desired shape
while said hose is located in said forming tube;
finishing said first end and said opposing second end of said
hose by the contact of said first end and said opposing second end
against said vacuum end cap and said loading endcap, respectively,
during the step of curing; and
1 Although Appellants state that "[t]here are no known related appeals or
interferences" (App. Br. 2), we consider the previous appeal in the present
application to be related to this appeal.
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Application 10/501,591
removing said hose having said desired shape from said
forming tube, wherein said hose is a single layer and an inner surface
of said hose is non-corrugated.
The Examiner, Answer 2, maintains the following rejections under 35
U.S.C. § 103(a) from the Final Office Action:
Claims 1, 4, 13, 14, 30, 33, 34, 36, 37, 42, 44, and 46 over Mitsui (JP
08-309876 B2) in view ofNishimo (JP 61-41522), Dohmen (US 6,514,068),
Sadr (US 4,865, 799), and Tally (US 4, 182,019); claims 2 and 3 over Mitsui
in view ofNishimo, Dohmen, Sadr, Tally, and Akman (US 4,957,687);
claims 7, 28, and 38 over Mitsui in view ofNishimo, Dohmen, Sadr, Tally,
and Chen (US 6,391,244 Bl); claims 11, 12, and 39 over Mitsui in view of
Nishimo, Dohmen, Sadr, Tally and Hoshishima (US 5,518,035); claim 15
over Mitsui in view ofNishimo, Dohmen, Sadr, Tally, Torghele (US
4,483,815), Houser (US 4,325,355) and Babbin (US 4,512,942); claims 31,
32, 40, and 41over Mitsui (JP 08-309876) in view ofNishimo, Dohmen,
Sadr, Tally, and Koizumi (JP 11-90993); claims 1, 13, 14, 30, 33, 34, 36,
37, 42, 44, and 46 over Matsumoto (JP 04-299129) in view ofNishimo,
Dohmen, Sadr, and Tally; claims 2 and 3 over Matsumoto in view of
Nishimo, Dohmen, Sadr, Tally, and Akman; claim 4 over Matsumoto in
view ofNishimo, Dohmen, Sadr, Tally, and Voss (US 3,859,408); claims 7
and 38 over Matsumoto in view ofNishimo, Dohmen, Sadr, Tally and Chen
(US 6,391,244); claims 11, 12, and 39 over Matsumoto in view ofNishimo,
Dohmen, Sadr, Tally, and Hoshishima (US 5,518,035); claim 15 over Mitsui
in view ofNishimo, Dohmen, Sadr, Tally, Torghele, Houser, and Babbin;
claim 28 over Matsumoto in view ofNishimo, Dohmen, Sadr, Tally, Voss,
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Application 10/501,591
and Chen; and claims 31, 32, 40, and 41 over Matsumoto in view of
Nishimo, Dohmen, Sadr, Tally, and Koizumi (JP 11-90993). (Final Act. 3-
22).
Appellants in the Appeal Brief have limited their arguments to
independent claims 1 and 37. Appellants have also limited their arguments
to the combination of (I) Mitsui in view ofNishimo, Dohmen, Sadr and
Tally; and (II) Matsumoto in view ofNishimo, Dohmen, Sadr and Tally.
Appellants have argued claims 1 and 37 together throughout the Brief. (App.
Br. 3). We select claim 1 as representative. Thus, we decide this appeal
based on independent claim 1, representing the grounds of rejections, to the
extent argued in the Briefs. 37 C.F.R. § 41.37(c)(l)(vii).
We affirm the decision of the Primary Examiner.
OPINION
I. Mitsui in view of Nishimo, Dahmen, Sadr and Tally
The dispositive issue raised by the positions of Appellants and the
Examiner is whether the combination of Mitsui in view ofNishimo,
Dohmen, Sadr, and Tally would have led one of ordinary skill in the art to
modify the method of forming a hose disclosed by Mitsui, wherein a hose
preform is inserted into a forming tube, by a vacuum to draw the hose
preform into the forming tube as exhibited by Dohmen and Sadr, and
employing endcaps while pressure-molding a hose, as described by Tally,
thus arriving at the claimed method encompassed by claim 1. (Mitsui i-fi-f 11-
21, Figs. 1, 4; Dohmen col. 211. 10-16, col.211. 48---65, Figs. 1, 2; Sadr
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Application 10/501,591
abstract, col.2 ll.8-52, Fig. 2; Tally col. 2 11. 4--5, 24--27; Final Act. 3-5 Ans.
2-7; App. Br. 3-6; Reply Br. 1-3).
Appellants submit, there would have been no reason to modify Mitsui
with respect to the embodiment illustrated in Dohmen and Sadr. (App. Br.
4). Appellants specifically states "Mitsui works perfectly well without the
claimed vacuum. In fact, Mitsui suggests that its hose 1 does not need
vacuum assistance for loading into the tube 2." (Id.).
Appellants' arguments do not persuade us of reversible error in the
Examiner's rejection. In assessing the obviousness of the subject matter
recited in the claims on appeal, " [ o] ft en, it will be necessary for ... [us] to
look to interrelated teachings of [the] multiple [prior art references relied
upon by the Examiner] ... in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed .... " KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). These
prior art references must be read in context, taking into account "demands
known to the design community," "the background knowledge possessed by
a person having ordinary skill in the art," and "the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR, 550 U.S.
at 418; see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) ("[A]
prior art reference must be 'considered together with the knowledge of one
of ordinary skill in the pertinent art."') (quoting In re Samour, 571 F .2d 559,
562 (CCPA 1978)). The background knowledge attributable to one of
ordinary skill in the art includes what was admittedly known in the art at the
time of the invention. Constant v. Advanced Micro-Devices Inc., 848 F .2d
1560, 1570 (Fed. Cir. 1988) ("A statement in a patent that something is in
the prior art is binding on the applicant and patentee for determining
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Application 10/501,591
anticipation and obviousness."); In re Nomiya, 509 F.2d 566, 570-71 (CCPA
1975) (holding that admitted prior art in applicant's Specification may be
used in determining the patentability of a claimed invention.); In re Fout,
675 F.2d 297, 301(CCPA1982) ("It is not unfair or contrary to the policy of
the patent system that appellants' invention be judged on obviousness
against their actual contribution to the art.") (footnote omitted).
In the present case, considering the collective teachings ofNishimo,
Dohmen, and Sadr from the perspective of one of ordinary skill in the art,
we determine that a person of ordinary skill in the art would have had
sufficient skill to select known techniques for loading a hose within a tube.
It is not disputed that the use of a vacuum to facilitate the loading of a hose
within a tube was known to persons of ordinary skill in the art. Contrary to
Appellants' arguments, Mitsui, at ,-r 19, does not discuss the exclusion of the
use of a vacuum. Mitsui-in this paragraph---discusses the concern
regarding ease of insertion. Dohmen and Sadr are both evidence that the use
of a vacuum was known to facilitate loading a hose within a tube. (See
Dohmen and Sadr supra). A person of ordinary skill in the art would have
reasonably expected that a vacuum would assist the loading a hose within a
tube.
Appellants further argue the rationales provided by the Examiner did
not explain why it would have been obvious to modify Mitsui to include
endcaps. (App. Br. 6).
Appellants' arguments are without persuasive merit. The Examiner
correctly points out that Mitsui discloses the use of pressure in the molding
operation. (Mitsui ,-r 21 ). A person of ordinary skill in the art would have
reasonably expected that the addition of endcaps would have aided the
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Application 10/501,591
molding operation and control of the pressure of the system. (Tally col. 3, 11.
24--27). For obviousness under§ 103, all that is required is a reasonable
expectation of success. See Pfizer, Inc. v. Apotex, 480 F.3d 1348, 1364 (Fed.
Cir. 2007); In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988).
For the reasons stated above and those presented by the Examiner, we
affirm the 35 U.S.C. § 103(a) rejections over the combination of Mitsui,
Nishimo, Dohmen, Sadr, and Tally.
II. Matsumoto in view of Nishimo, Dahmen, Sadr, and Tally
Appellants argue Matsumoto provides a coil spring that bends and
straightens thus, employing a vacuum source would go against the purpose
of Matsumoto. (App. Br. 6).
Appellants' arguments do not persuade us of reversible error in the
Examiner's rejection. Contrary to Appellants' position, rv1atsumoto
discloses that conventionally used methods are suitable for forming the
unvulcanized hose that is inserted into a pipe along with the spring member
and subsequently deformed to provide the desired shape. (Matsumoto i-f i-f 9-
15). As discussed above, the use of a vacuum to facilitate the loading of a
hose within a tube was known to persons of ordinary skill in the art. (see
Dahmen and Sadr). Furthermore, Appellants have not explained where
Matsumoto teaches the use of a vacuum is precluded by the addition of a
spnng.
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Application 10/501,591
For the reasons stated above and those presented by the Examiner, we
also affirm the 35 U.S.C. § 103(a) rejections over the combination of
Matsumoto, Nishimo, Dohmen, Sadr, and Tally.
ORDER
The rejections of claims 1--4, 7, 11-15, 28, 30-34, 36--44, and 46
under 35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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