Ex Parte 7086131 et al

Patent Trials and Appeals Board

Jul 11, 2016

95002401 - (D) (P.T.A.B. Jul. 11, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,878 01/27/2012 7086131 191322-7021 4161
25944 7590 07/13/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/13/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

ANVIL INTERNATIONAL, LLC.
Requester 1, Cross-Appellant, Respondent 1
and
TYCO FIRE PRODUCTS, LP.
Requester 2, Respondent 2

v.

VICTAULIC COMPANY1
Patent Owner, Appellant, Respondent
____________________

Appeal 2016-003414
Inter partes Reexamination Controls 95/001,878 and 95/002,4012
Patent US 7,086,131 B23
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1 Victaulic Company is the Patent Owner and the real party in interest
(Appeal Brief of Patent Owner 1).
2 These inter partes reexamination proceedings were merged in Decision,
Sua Sponte, to Merge Reexamination Proceedings mailed July 15, 2013.
3 Patent US 7,086,131 B2 (hereinafter “the ’131 patent”) issued August 8,
2006 to Gibb et al.
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STATEMENT OF THE CASE
Claims 1–9 are subject to reexamination, claims 1–3 being rejected by
the Examiner while claims 4–9 being determined to be patentable (Right to
Appeal Notice4 PTOL-2066). The Patent Owner appeals under 35 U.S.C.
§§ 134(b) and 315 from the Examiner’s rejections with respect to the
rejected claims 1–3 (ABPO 3). In addition to its Appeal Brief, Rebuttal
Brief, and Respondent Brief (to Requester 1’s cross-appeal), the Patent
Owner also relies on declarations from Messrs. Thau, Hayden, and Dole in
support of its positions. Requester 1 cross-appeals under 35 U.S.C. § 315
from the Examiner’s refusal to adopt certain proposed rejections relative to
claims 1–9, and determination that claims 4–9 are patentable (CABR 8). In
addition to its Appeal Brief, Rebuttal Brief, and Respondent Brief (to the
Patent Owner’s appeal), Requester 1 also relies on declarations from Messrs.
Rung, Sanders, and Fleury in support of its positions. Requester 2 has filed
a Respondent Brief in response to the Patent Owner’s appeal. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 315.

4 We note that the Examiner’s Answer incorporates the Right to Appeal
Notice by reference. While the entirety of the record has been considered in
deciding the appeal, we refer to specific portions of the record, abbreviating
the documents therein as follows:
1. Right of Appeal Notice = RAN
2. Appeal Brief of Patent Owner = ABPO
3. Rebuttal Brief of Patent Owner = Reb. Br. PO
4. Respondent Brief of Patent Owner = Res. Br. PO
5. Cross-Appeal Brief of Requester 1 = CABR
6. Rebuttal Brief of Requester 1 = Reb. Br. R
7. Respondent Brief of Requester 1 = Res. Br. R1
8. Respondent Brief of Requester 2 = Res. Br. R2
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An oral hearing with the representatives of the Patent Owner and
Requester 1 was held before the Patent Trial and Appeal Board on June 1,
2016. A transcript thereof will be entered into the electronic record in due
course. We are also informed that the ’131 patent is/was involved in various
legal proceedings, which are identified in the briefs (see ABPO 1–2; CABR
6–7).
Preliminarily, we note that only those arguments timely made in the
briefs of record in this appeal have been considered. Other arguments not
made or those not properly presented to the Board have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any
arguments or authorities not included in the brief permitted under this
section or §§ 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown”).
We AFFIRM-IN-PART with respect to the Appeal of the Patent
Owner. We also AFFIRM-IN-PART with respect to the Cross-Appeal of
the Requester 1.

THE INVENTION
The ’131 patent is directed to a method of securing pipe elements
together via a deformable mechanical pipe coupling (Title, Abs.).
Representative independent claims 1 and 4 read as follows (ABPO, Claims
App., amendments incorporated):
1. A method of securing facing end portions of pipe elements
together in end-to-end relationship, wherein said end portions
of said pipe elements have an outer surface of substantially
cylindrical profile, said method comprising the steps of:
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providing a pipe coupling having a plurality of coupling
segments attached to one another end-to-end surrounding a
central space, said coupling segments having arcuate surfaces
adapted to interface with the outer surfaces of said pipe
elements, each of said arcuate surfaces subtending an angle of
less than 180º, each of said arcuate surfaces having a radius of
curvature greater than the radius of curvature of said outer
surfaces of said pipe elements;
inserting said end portions of said pipe elements into said
central space; and
deforming said coupling segments so as to conform the
curvature of said arcuate surfaces of said coupling segments to
said outer surfaces of said pipe elements.

4. A method of securing facing end portions of pipe elements
together in end-to-end relationship, wherein said end portions
of said pipe elements have an outer surface of substantially
cylindrical profile, each of said end portions having a
circumferential groove in said outer surface thereof, said
method comprising the steps of:
providing a pipe coupling having a plurality of coupling
segments attached to one another end-to-end surrounding a
central space, each of said coupling segments having a pair of
arcuate surfaces adapted to interface with the outer surfaces of
said pipe elements within said grooves,
said arcuate surfaces being in spaced apart relation to one
another on opposite sides of said coupling segments, each of
said arcuate surfaces subtending an angle of less than 180º,
each of said arcuate surfaces having a radius of curvature
greater than the radius of curvature of said outer surfaces of
said pipe elements exclusive of said grooves;
inserting said end portions of said pipe elements into said
central space;
aligning each of said arcuate surfaces with a respective
one of said grooves;
moving said coupling segments toward said pipe
elements;
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engaging each of said arcuate surfaces within said
respective one of said grooves; and
deforming said coupling segments so as to conform the
curvature of said arcuate surfaces of said coupling segments to
said outer surfaces of said pipe elements within said grooves.

I. APPEAL OF THE PATENT OWNER
A. Examiner’s Rejections
1. Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lane5 and Dole.6
2. Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lane and Smith.7
3. Claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by
Lewis8, or under 35 U.S.C. § 103(a) as unpatentable over Lewis.
4. Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lane in view of Dole or Smith, and further in view of
Vieregge.9
5. Claim 3 under 35 U.S.C. § 102(b) as anticipated by Lewis, or
under 35 U.S.C. § 103(a) as unpatentable over Lewis.

5 UK Patent Application GB 2 218 768 A, published Nov. 22, 1989.
6 Patent No. US 6,581,977 B1, issued June 24, 2003.
7 Patent No. US 3,550,638, issued Dec. 29, 1970.
8 UK Patent Application GB 2 211 255 A, published June 28, 1989.
9 German Patent Publication No. DE 100 06 029 A l, published Aug. 30,
2001.
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B. Analysis
Rejection 1: Claims 1 and 2 Over Lane and Dole.
In rejecting independent claim 1, and claim 2 depending therefrom, as
being unpatentable, the Examiner finds, inter alia, that the combination of
Lane and Dole discloses “coupling segments having arcuate surfaces
adapted to interface with the outer surfaces of [] pipe elements, each of said
arcuate surfaces subtending an angle of less than 180º” as recited by
independent claim 1 (RAN 31). The Patent Owner disagrees with this
finding (ABPO 5–8). We generally agree with the Patent Owner for the
reasons discussed infra.
As the Patent Owner points out (ABPO 6), the Examiner concedes
that Lane fails to disclose the limitation requiring that arcuate surfaces of the
coupling segments subtend less than 180º finding that the drawings only
show the coupling segments in assembled condition (RAN 6, 11, 42). We
agree with the Examiner’s finding. The assertion to the contrary by
Requester 1 and Requester 2 summarized by the Examiner (RAN 29–30),
that one of ordinary skill in the art would understand that the embodiment of
Lane shown in Figure 4 must necessarily include arcuate surfaces
subtending an angle less than 180º, is speculative and ignores the fact that
the two coupling segments of Lane can be loosely attached via the disclosed
bolts, and clamped together by tightening the bolts to secure the pipe
elements, even if the two coupling segments of Lane subtend 180º. Such
configuration and clamping is described in detail by the Patent Owner in its
Rebuttal Brief, which we find persuasive and with which we agree (see Reb.
Br. PO 2–4).
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The Examiner relies on Dole to remedy this deficiency of Lane in
agreeing (RAN 31) with the Requesters’ assertion that “the figures of Dole
et al. also clearly show that the arcuate surfaces subtend an angle of less than
180º.” (RAN 30.) The Patent Owner disagrees and argues that Dole
discloses coupling segments that “subtend an arc of a semi-circle.” (ABPO
8, quoting Dole, col. 2, ll. 1–4.)
Firstly, we disagree with the assertion that figures of Dole “clearly
show that the arcuate surfaces subtend an angle of less than 180º” as asserted
by the Examiner and the Requesters. Figure 1 of Dole shows prior art
coupling elements in their assembled and tightened configuration wherein
the arcuate surfaces subtend 180º (Dole, Fig. 1). Thus, it provides no
information as to the shape of the coupling elements when not in their
assembled configuration. As to the remainder of the drawings, such as
Figures 4 and 5 of Dole that show a gap between bolting faces 22, 24, such
drawings are also not dispositive as to the shape of the coupling elements
because they merely show a partial view and the specification of Dole does
not explain at what stage of installation the coupling elements are illustrated,
for instance, whether the illustrations show the coupling elements when they
are in a fully installed and tightened configuration or when they are in a
partially assembled configuration prior to full tightening.
The Requesters also rely on Dole’s disclosure and submitted
declaration, which explains that these coupling elements must subtend an
angle of less than 180º because of Dole’s disclosure that the coupling
elements flex so that the arcuate radius of the coupling segment is reduced
and the teeth bite into the pipe upon tightening of the coupling elements
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(Res. Br. R1 8–9, citing Decl. Rung10 ¶ 55; Res. Br. R2 5–7; see also Dole,
col. 1, ll. 56–60; col. 2, ll. 1–15). The Patent Owner disagrees, relying on
the fact that Dole explicitly discloses that the two coupling segments
“subtend an arc of a semi-circle,” and on the declaration evidence, which
explains that coupling elements need not subtend an angle of less than 180º
to flex but, to the contrary, subtend 180º and flex to reduce the arcuate radius
upon the angled (diverging) undersides of the bolt pads being pressed
together by the bolts (ABPO 8, citing 1st Decl. Hayden11 ¶ 31; see also 1st
Decl. Hayden ¶¶ 32–33; Decl. Dole ¶¶ 7–8).
Upon considering the evidence, we find that the evidence of record is
inadequate to establish that Dole necessarily discloses arcuate surfaces of the
coupling segments that subtend less than 180º as asserted by the Examiner
and the Requesters. The competing declaration evidence set forth two
plausible explanations as to the manner in which the coupling of Dole may
work in view of its limited disclosure in that regard. Such limited disclosure
is not surprising in view of the fact that Dole is principally focused on the
use of T-bolts, and not to the coupling elements themselves. Moreover,
while both explanations appear plausible, we find it more likely than not that
Patent Owner’s understanding of Dole is the correct one in view of the lack
of explicit disclosure or illustration in Dole to the contrary, and provision of
the angled/diverging undersides on the bolt pads.
Correspondingly, because neither Lane nor Dole discloses the
limitation that arcuate surfaces of the coupling segments subtend less than

10 Declaration of Robert Rung, dated Apr. 11, 2014.
11 First Declaration of Louis E. Hayden, dated Oct. 29, 2014.
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180º, we reverse Rejection 1. The remaining arguments between the parties
as to this rejection are moot and we decline to comment on the same.

Rejection 2: Claims 1 and 2 Based on Lane and Smith
In agreeing with Requester 1 that claims 1 and 2 are unpatentable over
the combination of Lane and Smith (RAN 39), the Examiner adopts and
incorporates by reference, the rejection as set forth by Requester 1 in pages
28–31 of the Request for Inter Partes Reexamination filed January 27, 2012
(hereinafter “Reexamination Request”) (RAN 31–32). The incorporated
portion of the Reexamination Request states that to the extent that Lane fails
to disclose each of the limitations of reexamined claim 1 (unamended):
Smith clearly teaches [the] deformation step and thus motivates
one of ordinary skill in the art to combine Lane and Smith
because adding the deformation step taught by Smith to the
Lane coupling yields the predictable result of creating greater
sealing characteristics around the circumference of the pipe.
(Reexamination Request, pg. 28, citing Smith, Fig. 2; col. 3, ll. 74–75; col.
4, ll. 1–8; see also Reexamination Request, pgs. 29–31.)
Page 31 of the Reexamination Request further states:
Smith may be combined with Lane to render the ’131 patent
obvious because the deformable coupling segments of Smith are
one of many obvious ways of solving the problem of the
difficulty of creating a seal between two pipes. One of ordinary
skill in the art would understand that the configuration of the
pipe coupling of Smith is easily adaptable for use in a pipe
coupling for securing two facing end portions of pipe elements
because the functional elements of Smith, particularly creating a
seal between the pipe elements, are also necessary.
(Reexamination Request, pg. 31.)
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The Examiner concludes that it would have been obvious to one of
ordinary skill “to combine the deformability and radius of curvature of
Smith’s coupling with the coupling of Lane to provide coupling segments
whose arcuate surfaces are adapted to interface with and conform to the
outer surfaces of the pipes.” (RAN 33.)
We generally agree with the Examiner’s findings and conclusion.
While we find that Lane does not disclose the limitation requiring that
arcuate surfaces of the coupling segments subtend less than 180º as
discussed supra, Smith clearly discloses coupling segments that satisfy this
limitation (Smith, Fig. 2). Smith further discloses that the coupling
segments are formed “slightly out of round or sprung as indicated by the
angle 29” thereby disclosing an arcuate surface having a radius of curvature
greater than that of the pipe element components with which the coupling
segments engage (Smith, Fig. 2; col. 3, ll. 74–75; col. 4, ll. 1–8). In this
regard, Smith also explains the benefit of such configured coupling segments
stating “[t]o prevent deformation of the tubular gaskets at the flange 27
when the coupling is placed on the pipe joint and to effect a more uniform
contact pressure along the full length of gaskets 26 and 28,” and that full
contact pressure between the gaskets and the outer cylindrical faces is
assured (Smith, Fig. 2, col. 3, ll. 71–74; col. 4, ll. 1–6). Thus, Smith
provides a reason for one of ordinary skill in the art to apply its teachings to
the pipe coupling of Lane.
The Patent Owner argues that Smith does not cure the deficiencies of
Lane because the arcuate surface of section 11 of Smith does not interface
with the pipes (ABPO 27–28), and section 11 does not deform to conform to
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the pipes, but instead, conforms to the gaskets that conform to the pipes
(ABPO 28; see also 1st Decl. Hayden ¶¶ 38–40). However, the Patent
Owner argues the prior art references separately while non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
426 (CCPA 1981). The rejection relies on Lane for disclosing coupling
segments with arcuate surfaces that interface with pipes (Lane, Fig. 4), and
modifying the same to add the deformation step taught by Smith, that is,
modifying the coupling segments of Lane so that their arcuate surfaces
subtend an angle of less than 180º and deform to conform to the outer
surfaces of the pipe elements upon installation as disclosed in Smith.
The Patent Owner also argues that there is no reason to combine Lane
and Smith because Smith is directed to an apparatus and method for
repairing an existing joint or coupling so that it addresses an entirely
different problem than that addressed in Lane (ABPO 29–31; see also 1st
Decl. Hayden ¶ 37). However, we are in agreement with the Examiner that
Smith is analogous art because its teachings are reasonably pertinent to the
problem of providing a leak-tight seal between pipe ends, and more
importantly, because Smith also teaches that its coupling may be used for
split pipes that do not have abutting joint flanges (RAN 33). In this regard,
Smith specifically states “[i]t will be seen that by axially extending the
length of the coupling halves and providing fastener along the length of the
coupling halves, the invention herein may be employed as a coupling for
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split pipes without abutting joint flanges.” (Smith, col. 5, ll. 34–39,
emphasis added.)
We further observe that the Examiner notes that the Patent Owner
previously relied on evidence purporting to establish the existence of
secondary considerations in support of patentability of the claimed
invention, including purported evidence of long-felt need, commercial
success, and copying, in the form of the Declaration of Thau, Jr. (RAN 42–
43.) The Examiner considered the evidence but found it inadequate to
demonstrate non-obviousness of the rejected claims (RAN 42–43). The
Patent Owner does not contest the Examiner’s weighing and conclusions
with respect to the proffered evidence in its Appeal Brief or Rebuttal Brief,
thereby conceding to the Examiner’s weighing and conclusions.
Therefore, in view of the above, we agree with the Examiner’s
conclusion that it would have been obvious to one of ordinary skill “to
combine the deformability and radius of curvature of Smith’s coupling with
the coupling of Lane to provide coupling segments whose arcuate surfaces
are adapted to interface with and conform to the outer surfaces of the pipes.”
(RAN 33.)

Claim 2
Claim 2 depends from claim 1, and recites “further comprising
supporting said coupling segments on a seal positioned between said
coupling segments, said coupling segments being supported in spaced apart
relation sufficient to allow said end portions of said pipe elements to be
inserted into said central space.” (App. Br., Claims App’x.) The Examiner
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agrees with the Requesters that “the Lane and Smith combination teaches . .
. a seal assembly that functions in the manner required by claim 2” (RAN
34) because “[w]hen preassembled, the coupling segments 3, 4 are supported
by a tubular sealing member 1, having sealing rings 2, which is enclosed
within the two shells of the enclosure ring 4. See Figs. 1–2; p. 6, ll. 20–25.”
(RAN 27.)
The Patent Owner disagrees and argues that neither Lane nor Smith
discloses a seal supporting the coupling segment as required by the claim
(ABPO 31–32). Specifically, the Patent Owner argues that tubular body 1 of
Lane is not a sealing member, the sealing function instead being performed
by sealing rings 2 received in an annular groove within the tubular body 1,
and that there is no disclosure that the tubular body 1 and the sealing rings
support the coupling segments (ABPO 25–26).
We generally agree with the Examiner. We observe that the
Specification of the ’131 patent utilizes the term “support” in the context of
the function of the seal in describing the embodiment of Figure 1, and states:
In the embodiment shown in FIG. 1, the seal 44 has an outer
diameter 56 sized to hold the coupling segments 12 and 14 in
spaced apart relation sufficient to allow the pipe ends to be
inserted as described above. . . . Other embodiments having
different features for supporting the segments in spaced relation
are described below.
(Col. 5, ll. 21–30.)
Thus, claim 2 requires the seal to sufficiently separate the coupling
segments to allow insertion of the end portions of the pipe elements by
pushing. Lane discloses that:
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Insertion of the pipe ends into the coupling is achieved with a
minimum of resistance because there is a clearance between the
gripper ring gripping edges and the outside of the pipes, and the
sealing rings have a clearance between their inner edges and the
outside of the pipes, or at worst a light interference fit.
(Lane, pg. 7, ll. 27–32.)
Lane further discloses that subsequent to such insertion, the two
enclosure rings are clamped together “and drawn inwardly” (Lane, pg. 7, ll.
17–19) thereby indicating support of the coupling segments by the sealing
rings and the tubular body. While the above disclosure is directed to the
embodiment of Figures 1–3, Lane is also clear that the various embodiments
shown in the other figures operate on the same principle while having
different physical forms (Lane, pg. 9, ll. 15–19) thereby indicating similar
method of installation for the other embodiments disclosed. In this regard,
the Patent Owner’s own declarant Mr. Hayden states that the pipe elements
can be inserted in the annular enclosure rings of embodiments shown in
Figures 4–8 of Lane, and then tightened (1st Decl. Hayden ¶ 21).
Furthermore, while the Patent Owner argues that tubular body 1 is not
a sealing member, we are of the view that it would have been obvious to one
of ordinary skill in the art not to utilize such a tubular body with a groove,
but rather, based on the application of the coupling, to provide a groove
directly within the annular enclosure rings of the embodiment shown in
Figure 4 of Lane. Such construction is demonstrated in Smith itself (see
Smith, Figs. 2–4, 6).
Therefore, in view of the above, we affirm the rejection of claims 1
and 2 based on the combination of Lane and Smith. We recognize that the
above discussed application and analysis of Lane and Smith differ slightly
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from Rejection 2 actually adopted by the Examiner. Correspondingly, we
denominate this affirmance as a New Ground of Rejection.

Rejections 3 and 5: Claims 1–3 Anticipated by Lewis or Obvious
Over Lewis
The Examiner rejects claims 1–3 finding that Lewis discloses each
and every limitation of these claims (RAN 35–39). In agreeing with
Requester 1, the Examiner finds (RAN 39), inter alia, that:
the arcuate surfaces of each coupling segment of the coupling
25 shown in Figs. 6–10 of Lewis subtend an angle less than
180º prior to tightening and deformation of the coupling
segments because each segment has a radius of curvature prior
to deformation that is sized to allow the coupling segments to
slip over the pipe ends past the shoulders formed on the pipe
ends.
(RAN 38.)
The embodiment of Figures 6–10 of Lewis is most clearly shown in
Figure 7. The Patent Owner argues, inter alia, that Lewis does not disclose
coupling segments having arcuate surfaces subtending an angle of less than
180º as recited by independent claim 1 and claims 2 and 3 that ultimately
depend therefrom (ABPO 33–38). Indeed, lower coupling segment 27 of
Lewis clearly includes arcuate surfaces that subtend an angle greater than
180º (Lewis, Fig. 7), whereas the claims require each of the arcuate surfaces
to subtend less than 180º.
Requester 1 responds that Figure 7 of Lewis illustrates a tightened
configuration, and when the coupling of Lewis is in its loose, untightened
configuration, the arcuate surfaces of each of the coupling segments subtend
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less than 180º (Res. Br. R1 24). This assertion is entirely speculative and is
not supported by objective facts. Requester 1 further argues that because
Lewis provides little guidance as to the location of the hinge, a person of
ordinary skill would adjust the arcuate length so that the arcuate surfaces are
equal while maintaining the hinge opposite from the lugs (Res. Br. R1 24).
However, we are in agreement with the Patent Owner that a person of
ordinary skill would desire to position the pivot point of the hinge so that it
is diametrically opposed to the lugs for functional reasons (Reb. Br. PO 21),
which is the position illustrated in Figure 7 of Lewis (Lewis, Fig. 7).
Moreover, even if the suggested adjustment is made so that the arcuate
surfaces are equal on each of the coupling segments of Lewis, that would not
necessarily require, or inform us as to whether the arcuate surface of each of
the coupling segments would subtend less than 180º when the coupling of
Lewis is in its loose, untightened configuration.
Therefore, in view of the above, we reverse Rejections 3 and 5. The
remaining arguments between the parties as to these rejections are moot and
we decline to comment on the same.

Rejection 4: Claims 2 and 3 Over Lane, Dole or Smith, and Vieregge
The Examiner rejects claims 2 and 3 that ultimately depend from
claim 1 based on the rejections already discussed supra, in further view of
Vieregge (RAN 39). Vieregge is relied upon by the Examiner for disclosing
a seal that supports the coupling elements and having a tongue extending
circumferentially and projecting inwardly (RAN 39–40). The Patent Owner
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merely relies on the ultimate dependency of these claims on claim 1 for
patentability (ABPO 46–47).
While we agree with the Patent Owner that the Examiner’s rejection
of claim 1 over the combination of Lane and Dole in Rejection 1 cannot be
sustained, we were not persuaded by the Patent Owner’s arguments with
respect to the Examiner’s rejection of claim 1 (and claim 2) over the
combination of Lane and Smith in Rejection 2, which we affirm supra.
Correspondingly, we also affirm Rejection 4 of claims 2 and 3 based on the
combination of Lane, Smith, and Vieregge, and also denominate the
affirmance as a New Ground of Rejection.

C. Conclusions With Respect to Appeal of the Patent Owner
The rejections of the Examiner appealed by the Patent Owner are
AFFIRMED-IN-PART as follows:
1. Rejections 1, 3, and 5 are REVERSED.
2. Rejection 2 of claims 1 and 2 based on the combination of Lane
and Smith is AFFIRMED, and denominated as a New Ground of Rejection.
3. Rejection 4 of claims 2 and 4 based on the combination of
Lane, Smith and Vieregge is AFFIRMED, and denominated as a New
Ground of Rejection.

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II. CROSS-APPEAL OF REQUESTER 1
A. Proposed Rejections Not Adopted or Withdrawn12
2A. Claims 1, 2, 4, 5, 7, and 8 are rendered obvious by Lane in view
of Reynolds.13
2B. Claims 3, 6, and 9 are rendered obvious by Lane in view of
Reynolds and further in view of Blakeley et al.,14 Thiessen,15 Blakeley,16
Westerlund,17 or Thau.18
3. Claims 2, 4, 5, 7, and 8 are rendered obvious by Lane in view
of Reynolds and further in view of Webb.
4. Claims 1, 2, 4, 5, 7, and 8 are rendered obvious by Lane in view
of Rung.19
5. Claims 4, 5, 7, and 8 are anticipated or rendered obvious by
Lewis.
6. Claims 1–9 are rendered obvious by Lewis in view of Lane,
Reynolds, Webb, Dole, Vieregge, Smith, Rung, Blakeley, Blakeley et al.,
Thiessen, Westerlund, Thau, Engman,20 Kish,21 Krooss,22 and Gibb.23

12 We utilize the numbering corresponding to the enumerated “Issues” in
Requester 1’s Cross-Appeal Brief (CABR 15–16), but for clarity, the
multiple rejections set forth in each of Issues 2 and 7 are enumerated
separately with suffixes “A” and “B.”
13 U.S. Patent No. 1,867,891, issued July 19, 1932.
14 U.S. Patent No. 3,351,352, issued Nov. 7, 1967.
15 U.S. Patent No. 3,977,705, issued Aug. 31, 1976.
16 U.S. Patent No. 3,291,506, issued Dec. 13, 1966.
17 U.S. Patent No. 4,311,248, issued Jan. 19, 1982.
18 U.S. Patent No. 4,643,461, issued Feb. 17, 1987.
19 U.S. Patent No. 4,611,839, issued Sept. 16, 1986.
20 U.S. Patent No. 4,403,378, issued Sept. 13, 1983.
21 U.S. Patent No. 3,213,187, issued Oct. 19, 1965.
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7A. Claims 1 and 2 are anticipated or rendered obvious by Lane.
7B. Claim 3 is rendered obvious by Lane in view of Vieregge.
8. Claims 1–3 are rendered obvious by Lewis in view of
Reynolds, Webb, Lane, Dole, Vieregge, and Smith.
9. Claim 1 is rendered obvious by Webb in view of Kish.
10. Claims 1–9 under 35 U.S.C. § 314 as enlarge the scope of the
claims of the ’131 patent.

B. Analysis
We address Requester 1’s proposed rejections in the cross-appeal in
an order that slightly differs from the order presented in its Cross-Appeal
Brief.

Proposed Rejection 3
Requester 1 seeks reversal of the Examiner’s refusal to reject claims
2, 4, 5, 7, and 8 based on the combination of Lane, Reynolds and Webb.
The Examiner refuses to adopt this rejection finding that grooved-end pipe
couplings are distinct and structurally diverse from plain-end pipe couplings,
and do not address the problems associated with plain-end pipe couplings so
that a person of ordinary skill would not combine these references together
(RAN 15–16; see also RAN 13–15). In referring to the rationale set forth in
the Non-Final Office Action mailed October 1, 2014 (RAN 15), the position
of the Examiner is that:

22 U.S. Patent No. 2,752,173, issued June 26, 1956.
23 U.S. Patent No. 4,471,979, issued Sept. 18, 1984.
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the coupling segments in the Figs. 13-14 embodiment of
Reynolds deform upon tightening such that they conform to the
gasket or seal and do not conform to the outer surfaces of the
pipe elements. Similarly, Reynolds does not disclose that the
arcuate surfaces of the coupling segments in the Fig. 7
embodiment or any other embodiment are adapted to contact
the outer surfaces of the pipe elements and does not disclose
that these arcuate surfaces are deformed upon tightening such
that their curvature substantially conforms to the outer surfaces
of the pipe elements within the grooves. Rather, the arcuate
surfaces of Reynolds are shown in spaced relation away from
the outer surfaces of the pipe elements because the couplings
are designed for improved sealing and axial flexibility.
Reynolds provides gaps between the arcuate surfaces of the
coupling segments and the outer surfaces of the pipe elements
so as not to limit the gasket/seal compression and so as to
provide the desired axial flexibility. The Fig. 13 embodiment is
specifically designed to apply uniform pressure to the
gasket/seal, requiring that the coupling segments must only
engage and compress the gasket/seal while remaining spaced a
small distance from the outer surfaces of the pipe elements.
Accordingly, modifying Reynolds such that the arcuate surfaces
are brought into contact with the outer surfaces of the pipe
elements and conform substantially to those outer surfaces
would render the Reynolds coupling unsatisfactory for its
intended purpose and change the principle of operation of the
coupling.
(Non-Final Office Action mailed October 1, 2014, pg. 18.)
We agree with Requester 1 that the Examiner erred in refusing to
reject claims 2, 4, 5, 7, and 8 based on the combination of Lane, Reynolds
and Webb, although as evident from our discussion infra, our application of
these references differs from that proposed by Requester 1. We initially find
correct, and adopt as our own, the findings set forth relative to Reynolds in
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Request for Inter Partes Reexamination, pages 19–22, filed January 27,
2012 by Requester 1. Further findings with respect to Lane, Reynolds and
Webb are also set forth infra. The findings and conclusions of the Examiner
in refusing to adopt the proposed rejection, and arguments of the Patent
Owner in support thereof, are addressed as required to resolve the issues in
dispute with respect to this proposed rejection. Furthermore, as noted
previously with respect to the Patent Owner’s appeal, the Patent Owner does
not contest the Examiner’s weighing and conclusions with respect to the
proffered evidence of secondary considerations (RAN 42–43), thereby
conceding to the Examiner’s weighing and conclusions. Thus, we do not
discuss such evidence in addressing Requester’s cross-appeal.

Rejection Based on Lane, Reynolds and Webb
Lane discloses a method of securing pipe elements comprising the
step of “providing a pipe coupling having a plurality of coupling segments
attached to one another end-to-end surrounding a central space, each of said
coupling segments having a pair of arcuate surfaces” that are adapted to
interface with the pipe elements, and teaches the installation method
including “inserting said end portions of said pipe elements into said central
space” as recited in independent claims 4 and 8 (Lane, pg. 7, ll. 22–32).
Lane does not disclose pipe elements with grooves.
Reynolds discloses a method of securing pipe elements comprising
providing a pipe coupling with attached coupling segments having arcuate
surfaces, but further discloses providing pipe elements with grooves that are
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engaged by the arcuate end surfaces of the coupling segments (Reynolds, pg.
3, ll. 63–73; Figs. 7 and 13). In this regard, Reynolds discloses:
To prevent longitudinal displacement of the pipes relative
to one another, said pipes may be provided with raised portions
as illustrated in Figures 2, 3 and 5, or grooves as illustrated in
Figure 7 with which parts of the housing k engage.
(Reynolds, pg. 3, ll. 63–68; see also Figs. 7 and 13.)
As discussed in detail infra, contrary to the findings of the Examiner
and the arguments of the Patent Owner, we further find that Reynolds
discloses in Figure 13, that the arcuate end surfaces of the coupling segments
are “adapted to interface with the outer surfaces of said pipe elements within
said grooves,” and to conform to the outer surfaces of the pipe elements
within the grooves, as recited in independent claims 4 and 7.
Moreover, even if Reynolds fails to disclose such an interface of the
coupling segments within the grooves of the pipe, we conclude that such an
interface would have been obvious to a person of ordinary skill in the art
based on Reynolds alone, or in further combination with Webb. A person of
ordinary skill in the art would have found it obvious to control the extent to
which the seal is compressed, and to limit such compression so as to avoid
over-compression of the seal or seal crush by having the arcuate end
surfaces of the coupling segments contact the bottom of the grooves in the
pipe elements.
In the above regard, we further find that Webb discloses that it was
well known in the art to provide such an interface between the arcuate end
surfaces of the coupling segments and the grooves in the pipe elements
(Webb, Figs. 3, 12; col. 7, ll. 1–5). In addition to Figures 3 and 12, Webb
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states “[i]t may further be desirable that each key be formed for it to be of
maximum permissible radial extent, and may, at least under certain
conditions, be in close juxtaposition or even in axial face contact with the
axial bottom surface of the associated groove.” (Webb, col. 7, ll. 1–5.)
Webb further teaches that the pressure handling capability of a segmented
coupling utilizing a key and groove is increased by increasing the area of
surface contact between the key and the groove (Webb, col. 6, ll. 38–42).
Such surface contact is maximized by having the key extend and protrude to
the bottom of the groove (i.e., the full depth of the groove). In such a
configuration, the key contacts the bottom of the groove.
Thus, it would have been obvious to one of ordinary skill in the art to
provide a method of securing pipe elements in the manner recited in
independent claims 4 and 7, including the steps of “providing a pipe
coupling having a plurality of coupling segments attached to one another
end-to-end surrounding a central space, each of said coupling segments
having a pair of arcuate surfaces,” “inserting said end portions of said pipe
elements into said central space,” providing grooves on the pipe elements so
that the coupling segments that are adapted to interface with the grooves of
the pipe elements in the manner claimed to ensure proper seal compression
and avoiding over-compression of the seal/seal crush while deforming the
coupling segments to conform to the pipe segments. We further reject
claims 2, 5, and 8 for reasons additionally discussed below subsequent to the
discussion of claims 4 and 7.
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We address the Examiner’s reasons for not adopting the rejection, and
the Patent Owner’s arguments in support thereof, infra as they may be
applicable to the rejection articulated above.

Types of Pipe Couplings
In addressing the suggested combination of Lane, Reynolds, and
Webb, the Examiner also relies on analysis with respect to a proposed
rejection based on the combination of Lane and Reynolds (RAN 15). In this
respect, the Examiner finds:
One of ordinary skill in the pipe coupling industry would
not have combined Lane and Reynolds for the following
reasons. Lane discloses a coupling that is very structurally
diverse from the Reynolds coupling because the Lane coupling
utilizes gripping surfaces to engage the outer surfaces of plain
end pipes rather than using keys to engage grooves or flanges in
grooved-end or flanged-end pipes. Therefore, one of ordinary
skill would not look to the very different coupling of Reynolds
to improve upon or modify the coupling of Lane. Also,
Reynolds does not address the problems associated with
gripping engagement inherent in couplings as disclosed in Lane
and thus does not provide any guidance or motivation for
modifications to couplings that grip the outer surfaces of plain
end pipes. Likewise, Lane does not address the problems
associated with key and groove/flange engagement inherent in
couplings as disclosed in Reynolds and thus does not provide
any guidance or motivation for modifications to key and
groove/flange couplings. Still further, modifying Lane in view
of Reynolds would render the coupling disclosed in Lane
unsatisfactory for its intended purpose because it would no
longer utilize gripping surfaces to engage the outer surfaces of
plain end pipes.
(RAN 13.)
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The Examiner’s reason for refusing to adopt the proposed rejection
based on the combination of Lane, Reynolds, and Webb is substantively
identical (RAN 15–16).
The Patent Owner agrees with the Examiner, noting that the prior art
does not state that all features of grooved-end couplings and plain-end
couplings are interchangeable (Res. Br. PO 11), and a person of ordinary
skill would not freely interchange couplings as that ignores known
differences (Res. Br. PO 12). The Patent Owner argues, for example, that
the teeth for plain-end couplings would have to be harder than the pipes to
function, and the coupling segments and the bolts must be robust to generate
enough force to embed the teeth, whereas the keys of groove-end couplings
do not have such requirements (Res. Br. PO 7–8). The Patent Owner further
argues that expert statements in the declaration evidence relied upon by
Requester 1 are qualified, for example, stating “pipe coupling arrangements
are often interchangeable with each other depending on the situation.”
(Res. Br. PO 9–10, quoting Decl. of Rung ¶ 64.)
We disagree with the Examiner’s finding that these references teach
two types of pipe couplings that are so distinct and structurally diverse that a
person of ordinary skill would not combine the teachings of the references
(see CABR 16–17). We agree with Requester 1 that “[b]oth types of
couplings provide solutions for connecting pipes end to end and were well-
known in the art” (CABR 23), and that “at the relevant time, (i) there were a
finite number of mechanisms for coupling pipes together and (ii) those
mechanisms are well-known and routinely interchangeable by one of skill in
the art.” (CABR 19; Rung Decl. ¶¶ 64, 66; see also CABR 22.) While the
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mechanism for connecting the pipes may differ (i.e., teeth verses
key/groove), their functional purpose of coupling adjacent pipe ends is the
same. In this regard, as the Requester 1 points out, the ’131 patent itself
acknowledges that pipe coupling segments with arcuate surfaces that project
radially and engage circumferential grooves of pipe elements were known in
the art (CABR 21, quoting col. 1, ll. 21–25).
The contentions of the Examiner (RAN 13, 17) that “Reynolds does
not address the problems associated with gripping engagement inherent in
couplings as disclosed in Lane,” and vice versa, as well as rendering the
coupling of Lane unsatisfactory because it would no longer utilize teeth, are
not persuasive considering each type of coupling would be used in
substitution for the other by one of ordinary skill. There is no reasonable
basis to conclude that a person of ordinary skill in the art would piecemeal
features of the coupling without corresponding consideration of features
provided on the pipes. As argued by Requester 1, “[o]ne of ordinary skill
would not modify a plain-end pipe coupling to include keys for engaging in
grooves and then use the pipe coupling for plain-end pipe.” (CABR 25.)
In addition, the Patent Owner’s arguments in support of the
Examiner’s refusal to reject the claims are also unpersuasive. The fact that
the prior art does not explicitly disclose interchangeability of coupling
features does not establish that a person of ordinary skill in the art would not
know or recognize such interchangeability, or find such interchangeability
unobvious. Moreover, we do not dispute that a person of ordinary skill
would not freely interchange couplings in view of known differences.
Indeed, we understand the declaration statements objected to by the Patent
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Owner as being qualified as attesting that a person of ordinary skill in the art
would have understood that different couplings are more suitable than others
depending on the particular piping application needs. Thus, a skilled person
in the art would have found it obvious to apply the teachings of Lane and
Reynolds to result in the claimed method of securing pipe elements that have
a circumferential grooves, the method comprising, inter alia, the steps of
providing a pipe coupling having a plurality of coupling segments with
“arcuate surfaces adapted to interface with the outer surfaces of said pipe
elements within said grooves,” and “inserting said end portions of said pipe
elements” into the coupling. The Patent Owner’s arguments do not take into
account the broad teachings of the prior art or the skill of a person of
ordinary skill in the art.

Reynolds Interface
The Examiner further finds that, in Reynolds, the arcuate surfaces of
the coupling segments are spaced from the outer surfaces of the pipe
elements so that they conform to the gasket or seal so as to provide sealing
axial flexibility, and do not conform to the outer surface of the pipe elements
(RAN 13–14). In this regard, the Examiner finds that in the embodiment
shown in Figure 13:
the coupling segments must only engage and compress the
gasket/seal while remaining spaced a small distance from the
outer surfaces of the pipe elements. Accordingly, modifying
Reynolds such that the arcuate surfaces are brought into contact
with the outer surfaces of the pipe elements and conform
substantially to those outer surfaces would render the Reynolds
coupling unsatisfactory for its intended purpose and change the
principle of operation of the coupling.
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(RAN 14.)
The Patent Owner agrees with the Examiner and further asserts that
“Reynolds discloses that, in all of its embodiments, the arcuate surfaces must
not contact the pipes for the couplings to achieve their objective,” and that a
person of ordinary skill in the art would understand that, in Reynolds, the
coupling segments do not contact the bottoms of the grooves (Res. Br. PO
17–19). The Patent Owner asserts that the coupling segments shown in
Figure 13 of Reynolds do not have arcuate surfaces that interface with outer
surfaces of pipes, or deform to conform to the outer surfaces of pipes, either
within or outside of the grooves (Res. Br. PO 16–22).
Figure 13 of Reynolds is reproduced below.

Figure 13 of Reynolds reproduced above shows a front elevation
view of an especially arranged housing adapted to apply pressure to the pipe
jointing element in a graduated manner (Reynolds, pg. 1, ll. 90–96).
Contrary to the findings of the Examiner and the assertions of the
Patent Owner, we find that Figure 13 of Reynolds discloses that the end
edge of the coupling segments contact the bottom surface of the groove of
the pipe elements (Reynolds, Fig. 13). While the Patent Owner asserts that
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the depiction of two dashed lines representing the bottom of the groove on
the pipe and the end of the coupling segment indicates a space therebetween
(Res. Br. PO 20), Figure 13 illustrates these two dashed lines are in contact
with each other thereby indicating the corresponding components are in
contact. Moreover, as Requester 1 points out, Figure 13 of Reynolds
illustrates the pipe coupling in its untightened state so that to any extent that
the contacting dashed lines do not mean that the represented components are
in actual contact:
the arcuate surfaces are, at best, only spaced from the groove
bottoms by a small gap before any tightening of the coupling.
Because the seal is rubber, tightening would certainly cause the
arcuate surfaces to contact the pipe within the grooves and the
pipes would thereafter serve as a mandrel around which the
coupling segments must deform to conform the arcuate surfaces
of the pipes.
(Reb. Br. R 16–17.)
A person of ordinary skill in the art would reasonably infer such
contact based on the disclosure of Reynolds. See In re Preda, 401 F.2d 825,
826 (CCPA 1968)(in considering the scope and content of the prior art, “it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”).
In addition, in view of the above, we find that Reynolds discloses
conforming arcuate surfaces of the two flexible parts of the housing shown
in Figure 13, to the outer surfaces of the pipe elements within the groove.
Specifically, in discussing Figure 13, Reynolds discloses that:
the housing k may comprise two flexible parts qq which are
non-circular in shape as illustrated in Figure[] 13 and initially
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only engage with very small areas of the element a. Upon
screwing up the nuts on the bolts pp of such a housing k the
parts qq are gradually deformed into circular shape and
enwrap the element a until it is fully enclosed within the
housing k the pressure of the housing k being then evenly
distributed over the whole of the element a.
(Reynolds, pg. 3, l. 129–pg. 4, l. 8, bold formatting added for emphasis.)
In the above regard, we find no persuasive basis to conclude that, in
Reynolds, “the coupling segments must only engage and compress the
gasket/seal while remaining spaced a small distance from the outer surfaces
of the pipe elements” as found by the Examiner (RAN 14) and as asserted by
the Patent Owner (Res. Br. PO 18) based on the fact that the gasket or seal
provides sealing axial flexibility. While Reynolds does teach this added
functionality of sealing around slightly, axially misaligned pipe elements
through its seal construction, nowhere does Reynolds disclose that such
misalignment of the pipe elements is desirable or necessary for the disclosed
pipe coupling to function or be used (see Reb. Br. R. 15). The disclosure of
Reynolds makes clear that the disclosed pipe coupling with its seal can be
used in broader situations than can conventional pipe couplings because it
can accommodate slight misalignment of the pipe elements, but not that it
cannot be used with properly aligned pipe elements. Reynolds also does not
disclose that a space or gap between the bottom of the groove and end of the
coupling segments is necessary for the disclosed pipe coupling to function.
A person of ordinary skill in the art would appreciate that the
disclosed pipe coupling of Reynolds and its seal can be used with properly
aligned pipe elements, and when used with aligned pipe elements, there
would be no space or gap between the bottom of the groove and end of the
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coupling segments. The space or gap in the illustrations of Reynolds appear
to be an artifact of applying the pipe coupling of Reynolds to axially
misaligned pipe elements, thereby highlighting the capability of the pipe
coupling disclosed therein. Thus, the fact that the seal of Reynolds is
designed to accommodate such slight misalignment that results in the
illustrated space or gap does not mean that it is teaching that such space or
gap is necessary or even desirable.
Even if the above finding regarding contact interface between the
arcuate surface of the coupling segment and the bottom of the groove on the
pipe elements is not correct, as articulated in the rejection set forth above,
such an interface would have been obvious to a person of ordinary skill in
the art based on Reynolds alone to ensure proper seal compression and to
avoid seal over-compression/seal crush, or in further combination with
Webb in view of its teachings discussed above.
In contrast to the Patent Owner’s assertions, we find persuasive and
agree with Requester 1’s declarant, Mr. Rung, who attests that “contact
between the arcuate surfaces of the housing and the outer surface of the
pipes would actually help ensure uniform gasket compression around the
pipes and would not hinder gasket compression.” (Decl. Rung ¶ 25; see also
Reb. Br. R 15.) In this regard, we further find persuasive and agree that:
FIG. 13 teaches that the arcuate surfaces of the upper coupling
segment contact the outer surface of the pipe at the segment’s
mid-point. Also, contact between the arcuate surfaces of the
housing and the outer surface of the pipes is necessary to
prevent over-compression of the gasket at the mid-points of the
flexible parts qq of the housing.
(Decl. Rung ¶ 26; see also Reb. Br. R 15.)
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Furthermore, the Patent Owner argues that if the embodiment shown
in Figure 13 of Reynolds is utilized on grooved-end pipes, the coupling
“would not be slideable over pipe ends” because the coupling’s inner
diameter would be “too small to fit over the outer diameter of the pipes.”
(Res. Br. PO 20.) However, this argument ignores the fact that the rejection
articulated relies on Lane that discloses the step of inserting the pipe ends,
and the disclosure of Reynolds, which includes providing bolts p that attach
the coupling segments (i.e., housing k) to each other, which can be slightly
loosened to provide clearance for insertion of the pipe ends (see Reynolds,
Fig. 13).

Reynolds Embodiments
The Patent Owner further asserts that Figure 13 embodiment of
Reynolds is separate and distinct from the embodiments of Figures 1–10 and
12, noting that Reynolds states that the housing k may comprise two flexible
parts qq, which is not provided in any other embodiment (Res. Br. PO 15–
16).
A fair reading of Reynolds indicates the contrary. Figure 7 of
Reynolds is reproduced below.

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Figure 7 of Reynolds reproduced above shows a cross section through
a pipe joint in accordance with one embodiment in which edges of the
coupling segments (i.e., casing k) are received within grooves at ends of pipe
segments g (Reynolds, pg. 1, ll. 67–71; pg. 3, ll. 63–68; Fig. 7).
Reynolds discloses that the embodiment shown in Figure 12 “is a
front elevation of a two part housing suitable for use with any of the pipe
jointing elements illustrated in the preceding figures [Figs. 1–10].”
(Reynolds, pg. 1, ll. 85–89; see also Reynolds, Fig. 12.) With respect to
Figure 13, Reynolds explains that:
In actual practice it has been found that although a
housing k such as is illustrated in Figure 12 gives moderately
satisfactory results, difficulties are introduced in many of the
varied conditions which exist owing to the engagement by parts
of the housing k with the element a before the bolts pp are fully
tightened with the result that upon continued tightening of the
bolts pp defective jointing is apt to arise.
To overcome this, the housing k may comprise two
flexible parts qq which are non-circular in shape as illustrated in
Figure[] 13 and initially only engage with very small areas of
the element a. Upon screwing up the nuts on the bolts pp of
such a housing k the parts qq are gradually deformed into
circular shape and enwrap the element a until it is fully
enclosed within the housing k the pressure of the housing k
being then evenly distributed over the whole of the element a.
(Reynolds, pg. 3, l. 118–pg. 4, l. 8.)
Correspondingly, Reynolds teaches that housing k with flexible parts
q as shown in Figure 13 is a substitute for, or an alternative to, the two part
housing shown in Figure 12, which better addresses the difficulties
introduced by varied conditions than the two part housing of Figure 12. A
person of ordinary skill in the art would have understood the above
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disclosure in Reynolds as teaching the applicability of the embodiment of
Figure 13 to the various seal configurations shown in Figures 1–10, just like
the housing shown in Figure 12 (see also Decl. Sanders24 ¶ 26). There is
nothing in the subsequent remaining specification of Reynolds, which
establishes incompatibility of the housing k shown in Figure 13 with the pipe
jointing elements shown in the prior figures, or otherwise restricts its
applicability.
Therefore, in view of the above, we reverse the Examiner’s refusal to
reject independent claims 4 and 7 that are substantively the same based on
the combination of Lane, Reynolds, and Webb, and denominate the same as
a New Ground of Rejection.
Claims 5 and 8 depend from claims 4 and 7, respectively, and recite
the step of “supporting said coupling segments on a seal positioned between
said coupling segments, said coupling segments being supported in spaced
apart relation sufficient to allow said end portions of said pipe elements to be
inserted into said central space.” (ABPO, Claims App’x.) In that regard, the
Specification of the ’131 patent teaches that “[i]n the embodiment shown in
FIG. 1, the seal 44 has an outer diameter 56 sized to hold the coupling
segments 12 and 14 in spaced apart relation sufficient to allow the pipe ends
to be inserted as described above.” (Col. 5, ll. 21–25.) Thus, the recited
supporting step of claims 5 and 8 stem from the outer dimension of the seal
being large enough to hold the coupling segments apart while allowing
inserting of the pie ends. Such dimensioning of the seal such as in the pipe
coupling of Reynolds would have been obvious to one of ordinary skill in

24 Declaration of Dr. Thomas Sanders, dated May 11 2012.
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the art in view of Lane’s disclosure as to the desirability of inserting the pipe
ends into the pipe coupling. Correspondingly, the Examiner’s refusal to
reject dependent claims 5 and 8 based on the combination of Lane,
Reynolds, and Webb is also reversed and denominated as a New Ground of
Rejection.
As to claim 2, we observe that it depends from independent claim 1,
and not from independent claims 4 or 7. As reproduced above, the method
recited in claim 1 is substantively broader than independent claims 4 or 7 in
that claim 1 does not recite a circumferential groove. Like claims 5 and 8,
dependent claim 2 further recites that the seal supports the coupling
segments (ABPO, Claims App’x). Thus, dependent claim 2 would also have
been obvious to one of ordinary skill in the art for the reasons already
discussed supra. The existence of the step of providing circumferential
grooves on the pipe elements in Reynolds is not pertinent to claim 2 because
claims 1 and 2 utilize the open ended transitional term “comprises,” which
allows for additional steps to be included. Therefore, the Examiner’s refusal
to reject dependent claims 5 and 8 based on the combination of Lane,
Reynolds, and Webb is also reversed and denominated a New Ground of
Rejection.

Claim 1
As to Requester 1’s cross-appeal, claims 1, 3, 6, and 9 have not been
addressed supra. As noted above, the method recited in independent claim 1
is substantively broader than independent claims 4 or 7 that have been
rejected above based on the combination of Lane, Reynolds, and Webb. In
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addition, claim 2 that depends from claim 1 has also been rejected based on
the same combination of prior art. Correspondingly, we also reject
independent claim 1 based on the combination of Lane, Reynolds, and Webb
for reasons substantially the same as those set forth above.

Claims 3, 6, and 9
Claims 3, 6, and 9 ultimately depend from claims 1, 4, and 7,
respectively. Each of claims 3, 6, and 9 recite:
said seal comprises a tongue extending circumferentially
around said seal and projecting inwardly into said central space,
said method further comprising inserting said end portions of
said pipe elements into said seal and engaging said end portions
with said tongue and thereby aligning said arcuate surfaces with
said grooves.
(ABPO, Claims App’x.)
However, the Examiner found that such a seal comprising a tongue is
well-known in the art of pipe couplings with respect to applied rejections in
the Patent Owner’s appeal (see RAN 39–40, citing Vieregge, Figs. 5, 7, 8;
pg. 2, l. 29–pg. 3, l. 14; pg. 13, ll. 27–30; pg. 14, l. 29–pg. 16, l. 4; pg. 18, ll.
15–24). We adopt as our own, the findings of the Examiner with respect to
Vieregge as to its disclosure of a seal comprising a tongue. In addition, we
also adopt the articulated rationale of the Examiner, substituting Reynolds
for Lane, as applied to claims 1, 2, 4, 5, 7, and 8 above in the articulated
combination of Lane, Reynolds, and Webb. In other words, we conclude
that:
From this teaching of Vieregge, it would have been obvious to
one of ordinary skill in the art at the time the invention was
made to further modify [Reynolds] by providing a seal having a
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tongue extending circumferentially around the seal and
projecting inwardly into the central space such that the ends of
the pipe elements engage the tongue because such a seal
provides for double sealing of the pipe elements and also
facilitates proper alignment of the seal and coupling relative to
the facing ends of the pipe elements. See Vieregge at p. 3, l. 1-
14; p. 18, ll. 15-24. One of ordinary skill in the art would
appreciate that such a modification could be made by either (a)
modifying [Reynolds’s] sealing member 1 to include a tongue
extending circumferentially around the seal member 1 and
projecting inwardly between the pipe ends, or (b) replacing
[Reynolds’s] sealing member 1 and sealing rings 2 with a seal
like the one taught by Vieregge having a tongue extending
circumferentially around the seal and projecting inwardly
between the pipe ends.
(See RAN 40.)
Thus, we reject claims 3, 6, and 9 as unpatentable over the
combination of Lane, Reynolds, Webb, and Vieregge, and denominate the
same as a New Ground of Rejection.

Proposed Rejections 2A, 2B, 4–9
Each of the claims at issue in Proposed Rejections 2A, 2B, and 4–9
stand rejected supra. Therefore, Proposed Rejections 2A, 2B, 4, 5, and 7A–
9 are moot and we decline to reach the same.

Proposed Rejection 10
Finally, Requester 1 argues that the Examiner erred in refusing to
reject claims 1–9 under 35 U.S.C. § 314 as enlarging the scope of the claims
of the ’131 patent (CABR 50). Because this proposed rejection is not based
on prior art, we address Requester 1’s arguments.
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According to Requester 1, claims 1–9 enlarge the scope of the claims
because the Patent Owner added the clause “of said coupling segments” (so
as to recite “said arcuate surfaces of said coupling segments”) only to the
last paragraph of the newly added independent claims 4 and 7 instead of to
five earlier instances of “said arcuate surfaces” in claims 4 and 7, and in
other dependent claims (CABR 50–51).
Requester 1’s argument is without merit. We observe that the original
issued claim 1 of the ’131 patent recites “said arcuate surfaces of said
coupling segments” only in its last paragraph. Furthermore, prior to the last
paragraph, the originally issued claim 1 recites “said coupling segments
having arcuate surfaces.” The added language reciting “said arcuate
surfaces” follow this recitation that provides a proper antecedent basis so
that it is entirely clear that the same arcuate surface is being referred to in the
subsequent recitations of “said arcuate surfaces.” Requester 1 fails to
establish, nor do we find, a reasonable basis that the added limitations
referring to a prior recitation of the arcuate surface somehow broadens the
claim based on a subsequent recitation, which was included in the originally
issued claim, and which refers to the same structure. Correspondingly,
Examiner’s refusal to adopt Proposed Rejection 10 (RAN 25–26) is
affirmed.

C. Conclusions With Respect to the Cross-Appeal of the Requester
Proposed Rejections cross-appealed by the Requester are
AFFIRMED-IN-PART as follows:
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1. The Examiner’s refusal to adopt Proposed Rejection 3 based on
the combination of Lane, Reynolds, and Webb is REVERSED
and is modified to further include the rejection of claim 1, and
further denominated as a NEW GROUND OF REJECTION.
2. Claims 3, 6, and 9 are rejected based on the combination of
Lane, Reynolds, and Webb, further in view of Vieregge, and
denominated as a NEW GROUND OF REJECTION.
3. Proposed Rejections 2A, 2B, and 4–9 are moot and we decline
to reach the same.
3. The Examiner’s refusal to adopt Proposed Rejection 10 is
AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

This decision also contains new grounds of rejection pursuant to
37 C.F.R. § 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. …
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(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .

Should the Patent Owner elect to prosecute further before the
Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right
to seek review under 35 U.S.C. § 141 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If the Patent Owner elects prosecution before the Examiner and this
does not result in patentable claims, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b)

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PATENT OWNER:
OLIFF PLC
P.O. Box 320850
Alexandria, VA 22320

THIRD PARTY REQUESTOR:
David J. Baltazar
TYCO FIRE PROTECTION PRODUCTS
PERKINS COIE LLP
700 Thirteenth Street, NW Suite 600
Washington, DC 20005

Jeffrey R. Kuester
TAYLOR ENGLISH DUMA LLP
1600 Parkwood Circle, Suite 400
Atlanta, GA 30339