SORKIN, Felix L.

Patent Trials and Appeals Board

Mar 20, 2020

14274178 - (D) (P.T.A.B. Mar. 20, 2020)

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.
14/274,178 05/09/2014 Felix L. SORKIN 1101-357 7292
24106 7590 03/20/2020
Egbert Law Offices, PLLC
1001 Texas Ave., Suite 1250
Houston, TX 77002
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
03/20/2020 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):
KMCDANIEL@EGBERTLAWOFFICES.COM
MAIL@EGBERTLAWOFFICES.COM
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FELIX L. SORKIN
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Appeal 2019-001707
Application 14/274,178
Technology Center 3600
____________

Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and JILL D. HILL,
Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 5–7, 10, 11, 18, and 20.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor,
Felix L. Sorkin. Br. 5.
2 Claims 3, 4, 8, 9, 12–17, and 19 are cancelled. Final Act. 2; Br. 23–25
(Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent. Claim 1 is reproduced below.
1. A duct coupling system comprising:
a first concrete segment having an end surface;
a first duct positioned in said first concrete segment so as
to have an end extending outwardly of said end surface, said
first duct having a pair of ridges extending circumferentially
outwardly thereof, said pair of ridges being in spaced relation to
each other;
a second concrete segment having an end surface facing
said end surface of said first concrete segment;
a second duct positioned in said second concrete segment
so as to have an end extending outwardly of said end surface of
said second concrete segment in a direction toward the end of
said first duct, said second duct having a pair of ridges
extending circumferentially outwardly thereof, said pair of
ridges of said second duct being in spaced relation to each
other;
a first seal positioned over an exterior of said first duct
between said pair of ridges of said first duct, said first seal
having an outer diameter greater than an outer diameter of each
of said pair of ridges of said first duct;
a second seal positioned over an exterior of said second
duct between said pair of ridges of said second duct, said
second seal having an outer diameter greater than an outer
diameter of each of said pair of ridges of said second duct; and
a tubular member slidably positioned over said ends of
said first and second ducts so as to join said first and second
ducts together in a liquid-tight relationship, said tubular
member having an inner wall with a constant inner diameter
that bears against the outer diameters of said first and second
seals.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
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Griffiths US 3,873,138 Mar. 25, 1975
Larry B. Krauser, Executive Summary Post-Tensioning Tendon
Protection Strategies for Precast Elements, PCMAC/Caltrans Bridge
Seminar (2009) (hereinafter “Krauser”)

REJECTION
Claims 1, 2, 5–7, 10, 11, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Krauser and Griffiths. Final Act. 3–12.

OPINION
Appellant presents arguments for independent claims 1 and 18
together (Appeal Br. 15–20) and relies on the same arguments for dependent
claims 2, 5–7, 10, 11, and 20 (id. at 20). We select claim 1 as representative
of the issues that Appellant presents in the appeal, and claims 2, 5–7, 10, 11,
18, and 20 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Krauser teaches most of the limitations of
independent claim 1, but acknowledges that Krauser fails to teach first and
second seals positioned over an exterior of first and second ducts,
respectively, between pairs of ridges extending circumferentially outward
from the first and second ducts. Final Act. 4–5. Although the Examiner
asserts that Krauser’s tubular member “is capable of being slidably
positioned” (id. at 4), the Examiner also alternatively asserts that Krauser
fails to teach “a tubular member slidably positioned over said ends of said
first and second ducts so as to join said first and second ducts together in a
liquid-tight relationship” (id. at 5).
The Examiner turns to Griffiths and finds that Griffiths teaches first
and second seals 13, 13' positioned over an exterior of first and second ducts
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11, 11', respectively, between pairs of ridges extending circumferentially
outward from first and second ducts 11, 11'. Id. at 5. The Examiner also
finds that Griffiths teaches tubular member 15 slidably positioned over the
ends of first and second ducts 11, 11' so as to join first and second ducts 11,
11' together in a liquid-tight relationship. Id. The Examiner concludes that
it would have been obvious to modify Krauser to have, among other things,
first and second seals and a tubular member slidably positioned over the
ends of the first and second ducts “as taught by Griffiths, for the purpose of
providing a means to form a slip joint which can aid in reducing the time of
assembling the joint, alternatively, providing a structural configuration
which would yield the same predictable result(s) of forming a secure leak
free joint.” Id. at 6.
We need not consider whether or not Krauser’s tubular member is
capable of being slidably positioned as asserted by the Examiner, and as
contested by Appellant, because the Examiner’s rejection specifically
modifies Krauser so as to have Griffiths’ tubular member. Final Act. 6.
Thus, we do not discuss Appellant’s arguments as to Krauser’s tubular
member failing to be slidably positioned. Br. 16–17.
We have considered Appellant’s argument that “Krauser fails to show
first and second seals position[ed] between the pair of ridges at the ends of
each of the ducts” because “the ends of [Krauser’s] coupler actually overlie
only a single ridge,” and “[t]hus, to the extent that there are seals located
within the interior surface of the coupler, the seals would only be located at
the ends of the duct[,] not between the pair of ridges of the duct.” Id. at 17–
18. We do not find such an argument persuasive because the Examiner’s
rejection does not rely on any seals or tubular member of Krauser, but rather
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on Griffiths for such limitations. Appellant has not shown error in the
Examiner’s finding that Griffiths teaches the claimed location of seals
between pairs of ridges extending circumferentially outwardly of ducts.
As to whether Griffiths’s tubular member is “slidably positioned,”
Appellant argues that “Griffiths . . . shows a coupling that is specifically
designed so as to be in a fixed position and not to be axially displaceable.”
Br. 18–19 (citing Griffiths 1:18–26, 2:7–11). The Examiner responds that
“when one or both of the clip members 18 and 18'[] are removed from the
inner surfaces of the fla[r]ed ends 16 and 16' by removing the corresponding
cap screws 19 and 19'[,] the sleeve 15 can then slide off and on the duct(s)”
and queries “[i]f the annular sleeve 15 cannot be ‘slidably positioned’ over
the duct(s) end(s)[,] then how is the joint of Griffiths assembled?”. Ans. 6.
The Examiner also responds that “[t]he claims do not set forth that the
coupler is able to slide from a first position over one of the ducts to a second
position overlying the ends of both of the ducts and that the sliding motion
that is carried out [is] from one duct to the other duct[,] but rather the
independent claim(s) recites a broader language.” Id. at 12–13.
We agree with the Examiner that upon removal of cap screws 19, 19',
Griffiths’ annular sleeve 15 is slidably positioned over the first and second
ducts so as to join them together in a liquid-tight relationship, and that
removal of the cap screws would be necessary in order to assemble
Griffiths’ joint. Appellant does not address this position by the Examiner
with sufficient particularity so as to persuade us of error in the Examiner’s
finding that Griffiths’ tubular member is “slidably positioned” over the ends
of the ducts so as to join the ducts in a liquid-tight relationship, as claimed.
Indeed, it is exactly because of the slidability between ducts 11, 11' and
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annular sleeve 15 that clip members 18, 18' and cap screws 19, 19' are
utilized in the design of Griffiths.
Moreover, we agree with the Examiner that the claim language “a
tubular member slidably positioned over said ends of said first and second
ducts so as to join said first and second ducts together in a liquid-tight
relationship” does not require any particular amount of slidability of the
tubular member relative to the ducts (e.g., sufficient slidability so as to be
movable between a first position entirely overlying the first duct to a second
position entirely overlying the second duct). See Ans. 12–13. Although clip
members 18, 18' that are attached to flared ends 16, 16' of annular sleeve 15
cooperate with annular shoulders 14, 14' of conduits 11, 11' in order to
“prevent[] the conduits from moving axially away from the sleeve”
(Griffiths 1:25; 2:10–11 (emphasis added)), this does not necessarily mean
that any and all axial movement of annular sleeve 15 relative to conduits 11,
11' is prevented. Rather, it appears that some amount of axial movement
may be tolerated so long as conduits 11, 11' do not move in an amount that
would separate conduits 11, 11' from annular sleeve 15. See Griffiths Fig.
(illustrating space between annular shoulders 14, 14' and circularly-shaped
end of clip members 18, 18' in the longitudinal direction of ducts 11, 11'). In
this way, Griffiths also may be considered to teach “a tubular member
slidably positioned over said ends of said first and second ducts,” as
claimed.
We have also considered Appellant’s argument that “the Griffiths
patent is from a field of art far removed from that of the present invention or
the Krauser article.” Appeal Br. 19. The established precedent of our
reviewing Court sets up a two-fold test for determining whether art is
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analogous: “[‘](1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.”’ In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). The Examiner responds that “[b]oth
Griffiths . . . and the instant invention are in a field of art related to pipes,
where the pipes are connected to each other via a sleeve coupler” and further
that “the Griffiths patent . . . [is] solving the same problem as the instant
application because both . . . illustrate how two pipe ends are being bridged
by a slidable coupler to form a joint between the two pipes.” Ans. 19.
Appellant has not persuasively presented arguments and evidence to refute
the Examiner’s position that Griffiths is in Appellant’s field of endeavor and
that Griffiths is reasonably pertinent to a particular problem with which the
inventor is involved. Moreover, to the extent that Appellant is comparing
the relevance of the references to each other, this is not the required legal
test and is not persuasive.
We have also considered Appellant’s argument that “the Griffiths
patent actually teaches away from any structure that would allow such ‘axial
slidability’” and “[t]he Griffiths patent would provide no teaching,
suggestion or motivation for the inventor of the device shown in [the]
Krauser article to allow for this axially slidable sleeve for use in a wet joint.”
Appeal Br. 19. The Examiner responds that such an argument is “not
commensurate with the scope of the claims” in that “[t]he claims do not
recite ‘axial slidability of a tubular member.’” Ans. 10. The Examiner also
responds that, in any event, “[t]he Griffiths patent does not teach away
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because the Griffiths [patent] illustrates a structure that would allow such
‘axial slidability’, as discussed above.” Id. at 20. In our view, as described
above Griffiths teaches “a tubular member slidably positioned over . . . ends
of . . . first and second ducts so as to join . . . first and second ducts together
in a liquid-tight relationship,” as claimed, and thus, does not teach away
from such an arrangement. Consequently, when modifying Krauser with the
arrangement of Griffiths in accordance with the Examiner’s articulated
rejection, the Examiner has explained adequately how the combination
results in a tubular member slidably positioned over the ends of first and
second ducts so as to join the first and second ducts together in a liquid-tight
relationship.
We have also considered Appellant’s arguments that “[s]ince the
Griffiths patent is designed for marine applications, it is unlikely that there
would be any suggestion of a ‘first concrete segment’ or a ‘second concrete
segment and the relationships between the ducts and these concrete
segments” and that “[t]he prior art combination would fail to show the
structure of the present invention as used in a ‘wet joint.’” Appeal Br. 19–
20. The Examiner responds that “the Griffiths patent is not being used to
disclose/teach a ‘first concrete segment’ or a ‘second concrete segment’ and
the relationships between the ducts and these concrete segments because
Krauser discloses such.” Ans. 19. The Examiner also responds that
“Krauser (see Fig. 2) illustrates a joint to be used in a wet joint (see page 8
in lines 1 and 2; which recites ‘Figure 2 shows a duct-to-duct coupler . . . in
the wet joint . . . ‘) so Krauser in view of Griffiths would also then be in a
‘wet joint.’” Id. at 21. We agree with the Examiner’s response as to why
Appellant’s arguments regarding Griffiths being designed for marine
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applications are not persuasive of error by the Examiner, and adopt the
Examiner’s reasoning as our own.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Krauser and Griffiths renders obvious the
subject matter of independent claim 1. Accordingly, we sustain the rejection
of claim 1, and claims 2, 5–7, 10, 11, 18, and 20 falling therewith, under
35 U.S.C. § 103 as unpatentable over Krauser and Griffiths.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 5–7, 10,
11, 18, 20
103 Krauser, Griffiths 1, 2, 5–7, 10,
11, 18, 20

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)(1)(iv).
AFFIRMED