James R. Perrault et al.

Patent Trials and Appeals Board

Oct 1, 2019

15470250 - (D) (P.T.A.B. Oct. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/470,250 03/27/2017 James R. Perrault 006386-00117 3383
28827 7590 10/01/2019
GABLE & GOTWALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
EXAMINER
SNYDER, ALAN W
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. PERRAULT, SETH P. AHRENS,
ABRAHAM B. CONTRERAS, WILLIAM BARTON DRAEGER,
and FABIANO TAVARES DE SOUZA

Appeal 2019-002909
Application 15/470,250
Technology Center 3700
____________

Before JOHN C. KERINS, EDWARD A. BROWN, and
LISA M. GUIJT, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as McElroy
Manufacturing, Inc. Appeal Br. 3 (filed June 26, 2018).
Appeal 2019-002909
Application 15/470,250

2

CLAIMED SUBJECT MATTER
Claims 1 and 2 are independent. Claim 1 illustrates the claimed
subject matter.
1. For preparing opposed ends of polyolefin pipes for
fusion into a pipeline, a facer comprising a pair of spaced-apart
parallel vertically oriented cutting wheels on opposite sides of a
boom and rotatable in unison about a common axis extending
through a free end of said boom and a motor driving said pair of
cutting wheels about said common axis, said boom being
configured to enable said common axis to trace a thickness of the
opposed ends of the polyolefin pipes in a closed-loop path
whereby said pair of parallel cutting wheels will simultaneously
face the opposed ends of the polyolefin pipes.

Appeal Br. 10 (Claims App.).

REJECTIONS
Claims 1 and 2 are rejected on the ground of non-statutory double
patenting as unpatentable over claim 1 of Perrault (US 9,604,288 B2, issued
Mar. 28, 2017).
Claims 1 and 2 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Johnson (US 1,878,707, issued Sept. 20, 1932).

ANALYSIS
Non-Statutory Double Patenting
Appellant does not contest the non-statutory double patenting
rejection of claims 1 and 2. Appeal Br. 6. Instead, Appellant states that a
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Application 15/470,250

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terminal disclaimer will be submitted to address the rejection should either
of claims 1 and 2 be allowed. Id. Accordingly, we sustain the rejection.

Anticipation
The Examiner finds that Johnson discloses all limitations of claims 1
and 2. Final Act. 4–5 (citing Johnson, col. 3, ll. 11–21, Fig. 2). Particularly,
the Examiner finds that Johnson discloses a tool capable of functioning as a
facer for opposed ends of polyethylene pipes for fusion into a pipeline, the
tool comprising a pair of spaced-apart, parallel, vertically oriented cutting
wheels (cutter heads 16, 17) on opposite sides of a boom (attachment 15).
Id. at 4. The Examiner also finds that Johnson discloses an embodiment in
which cutter head 16 is removed and substituted with another head like
milling head 17 to permit face milling from either side of attachment 15.
Ans. 8–9 (citing Johnson 3:11–21). The Examiner explains that this
embodiment would include two “cutting wheels” 17 having cutting elements
20 that extend outwardly away from one another. Id. at 8. The Examiner
relies on this embodiment “with two cutting heads in the form of milling
head 17” in the rejection. Id. at 9. The Examiner further explains that, if the
workpiece were two pipes, fed into the head from the left and the right as
seen in Figure 2, the embodiment would be capable of face milling/facing
the opposed ends of the pipes. Id.
Appellant disagrees that Johnson’s head 17 is a “cutting head,” as
claimed. Reply Br. 2. Appellant contends that face milling tools have teeth
on their face, and, in the embodiment of Johnson relied on by the Examiner,
“the teeth of two teeth-on-face milling tools are faced in opposite
directions.” Id. Appellant also contends that the Examiner admits that
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Johnson’s element 17 is a milling head with cutting elements 20 used for
face milling, and asserts that the Examiner’s annotated drawing (Ans. 9)
showing the embodiment of Johnson relied on has two milling wheels, not
cutting wheels. Id.
Appellant explains that the claimed cutting wheels have teeth on their
edges. Reply Br. 3 (citing Figs. 4, 5, 9 and 13). Appellant explains that the
cutting wheels cut the walls, not the faces, of the pipes as the rotational axis
of the wheels traces the pipe thicknesses. Id. (citing Spec. 9, l. 18–10, l. 11,
Figs. 15A–15E). Appellant contends that, in contrast, Johnson’s milling
wheels 17 do not have the same structure as cutting wheels 77. Id.
Particularly, “Johnson faces with milling wheels and milling wheels require
teeth on the face. Appellant faces with cutting wheels and cutting wheels
require teeth on the edges.” Id. at 4.
Appellant’s contentions are persuasive. Appellant’s Figures 4, 5, 9,
and 13 each depict a pair of cutting wheels 77 extending parallel to each
other on opposite sides of a boom 40. As shown, the edges extend parallel
to each other and perpendicular to a common axis 79 about which cutting
wheels 77 rotate in unison. See Fig. 1. The location of the teeth on the
edges of cutting wheels 77 is shown clearly in Figure 13. As also shown in
Figures 4, 5, 9, and 13, there are no teeth on the outer faces of respective
cutting wheels 77. Appellant explains that in contrast to using a milling
head to shave pipe, the claimed invention “uses a cutting wheel to cut off the
end of the pipe in a single closed-loop path.” Reply Br. 8. Figures 15A–
15E depict the closed-loop cutting operation. See Spec. 9, l. 18–10, l. 11.
The Examiner has not established by a preponderance of the evidence
that Johnson discloses a facer comprising “a pair of spaced-apart parallel
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vertically oriented cutting wheels on opposite sides of a boom.” Johnson
describes that cutter head 17 “has bits or teeth 20 inserted therein projecting
from the front face thereof to be used in face milling operations.” Johnson
2, ll. 2–5, Fig. 2 (showing teeth 20). Johnson describes that when boring
head 16 is substituted with “another milling head like the head” a face
milling operation can be performed on both ends of a workpiece. Id. at 2, ll.
92–105. We disagree with the Examiner’s finding that Johnson’s cutter
heads 17, which both have teeth arranged and configured to perform a
milling operation, correspond to the claimed cutting wheels. The broadest
reasonable interpretation of a claim term “is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017). Here, even if Johnson’s cutter heads 17 cut material during a milling
operation, the Examiner’s finding that Johnson discloses the claimed cutting
wheels is not based on an interpretation of this term that corresponds with
what and how the present inventors describe their invention in the
Specification.
For these reasons, we do not sustain the rejection of claim 1 as
anticipated by Johnson. We also do not sustain the anticipation rejection of
claim 2 for similar reasons.

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CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 2 Non-statutory
Double Patenting,
Perrault
1, 2
1, 2 § 102(a)(1), Johnson 1, 2
Overall Outcome 1, 2 1, 2

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)(iv).

AFFIRMED