Ex Parte Ciprich et al

Patent Trial and Appeal Board

Jul 27, 2018

12549606 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/549,606 08/28/2009
49458 7590 07/31/2018
DON W. BULSON (PARK)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE/ 19TH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Samuel D. Ciprich
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.
Pl57P0029USA 9335
EXAMINER
DUNWOODY, AARON M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL D. CIPRICH and MATTHEW T. BERNOSKY
Appeal 2017-011310
Application 12/549,606 1
Technology Center 3600
Before LINDA E. HORNER, GEORGE R. HOSKINS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 11, 12, 42--45, 47, 48, and 53. Final
Office Action (November 4, 2015) (hereinafter "Final Act."), modified by
Advisory Action (June 22, 2016) (hereinafter "Adv. Act.") and Examiner's
1 Samuel D. Ciprich and Matthew T. Bernosky ("Appellants") identify
Parker-Hannifin Corporation as the real party in interest. Appeal Brief (June
6, 2016) (hereinafter "Appeal Br."), at 2.
Appeal 2017-011310
Application 12/549,606
Answer (July 3, 2017) (hereinafter "Ans"). 2 We have jurisdiction under
35 U.S.C. § 6(b).
The claimed subject matter relates to "a tube coupling for connecting
a tube to a connection body." Specification (August 28, 2009) (hereinafter
"Spec.") ,r 4. The Examiner rejected claims 48 and 53 as anticipated by the
prior art and rejected the remaining claims 11, 12, 42--45, and 47 as obvious
over the prior art. For the reasons explained below, we do not find error in
the Examiner's anticipation rejection, but we find insufficient reasoning to
support a determination of obviousness. Accordingly, we AFFIRM-IN-
p ART. Because we augment the findings of the Examiner in our affirmance
of the anticipation rejection, we designate our affirmance as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41. 50(b) to provide Appellants with a full and fair opportunity to respond
to the rejection.
CLAIMED SUBJECT MATTER
Claims 42 and 48 are the independent claims on appeal and are
reproduced below with the pertinent claim language shown in italics.
42. A compression and flared tube fitting assembly,
compnsmg:
a thick-walled 300 series stainless steel tube defining a
central axis and including an exterior, an interior passageway,
and a radially outwardly flared end portion; and
2 Claims 1--4, 8-10, 13-24, 26-32, 34, and 40 are canceled, claims 5-7, 25,
35-39, 41, and 52 are allowed, claims 49-51 are withdrawn, and claims 33
and 46 are pending but not rejected. Final Act. 1 (indicating withdrawn
claims); Adv. Act. 1 (entering after-final amendment and indicating allowed
claims); Ans. 2 (withdrawing rejection of claim 46).
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Application 12/549,606
a generally cylindrical sleeve in engagement with said
thick-walled tube, said sleeve including a side proximal the
flared end portion of the tube, a side distal the flared end portion
of the tube, an interior and an exterior, said interior of said sleeve
including an interior surface;
wherein said side proximal the flared end portion of the
tube includes an inner annular concavity and a sharp annular
biting portion radially engaging and radially deforming said
thick-walled tube to form a bulbous portion protruding into the
annular concavity and engaging an axially extending annular
surface of the sleeve thereat;
wherein said annular concavity of said sleeve engages said
thick-walled tube after compression and deformation thereof;
and
wherein said sleeve includes a coating harder than an
interior of the sleeve and harder than the thick-walled 300 series
stainless steel tube.
48. A compression and flared tube fitting assembly,
compnsmg:
a thick-walled tube defining a central axis and including a
radially outwardly flared end portion; and
a generally cylindrical sleeve in engagement with said
thick-walled tube, said sleeve including a side proximal the
flared end portion of the tube, a side distal the flared end portion
of the tube, an interior and an exterior, said interior of said sleeve
including an interior surface;
wherein said side proximal the flared end portion of the
tube includes an inner annular concavity and a sharp annular
biting portion radially engaging and radially deforming said
thick-walled tube to form an extruded bulbous portion protruding
into the annular concavity;
wherein said annular concavity of said sleeve engages said
thick-walled tube after compression and deformation thereof;
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Application 12/549,606
wherein said annular concavity includes a radially
extending annular surface substantially transverse to the interior
surface and forming the sharp annular biting portion therewith,
and an axially extending annular surface extending from the
radially extending surface;
wherein a portion of the thick-walled tube axially
coincident with the sleeve includes a generally uniform main
portion, and a radially-inwardly compressed grip portion axially
between and abutting the main portion and the extruded bulbous
portion, wherein the extruded bulbous portion is axially between
and abutting the compressed grip portion and the radially
outwardly flared end portion.
Appeal Br. 14-16 (Claims Appendix).
REJECTIONS
The Final Office Action, as modified by the Advisory Action and the
Examiner's Answer, includes the following rejections:
1. Claims 48 and 53 stand rejected under pre-AIA 35 U.S.C. § 102(b)
as anticipated by Parker (US 2,289,382, issued July 14, 1942).
2. Claims 11, 12, 42--45, and 47 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Parker.
ANALYSIS
First Ground of Rejection: Anticipation of claims 48 and 53 by Parker
Appellants argue that the Examiner erred in rejecting claim 48 as
anticipated by Parker because Parker does not disclose the claimed
"radially-inwardly compressed grip portion axially between and abutting the
main portion and an extruded bulbous portion" and an "extruded bulbous
portion [] axially between and abutting the compressed grip portion and the
radially outwardly flared end portion." Appeal Br. 7. Appellants argue that
any compressed portion of the tube in Parker resides in the flared region of
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Application 12/549,606
the tube and does not abut the main portion of the tube. Id. Appellants
further argue that Parker does not disclose an "extruded bulbous portion"
because Parker relies merely on a crimp in the tube. Id.
These arguments require us to interpret the claim terms "radially
outwardly flared end portion," "generally uniform main portion,"
"radially-inwardly compressed grip portion," and "extruded bulbous portion.
We address each claim term below. To facilitate our discussion, Figures 12
and12A of Appellants' disclosure are depicted below:
FIG. 12
5
---1200
/
,----1201
t
/.,
/
1200A
716 746
FIG. 12A
Appeal 2017-011310
Application 12/549,606
Figure 12 illustrates a cross section of the tube and sleeve when the die is in
a fourth position abutting the cap, and Figure 12A is an enlarged view of a
portion of Figure 12. Spec. ,r,r 81-82. We have highlighted tube 701 in
purple and sleeve 704 in orange.
"radially outwardly flared end portion"
Claim 48 recites that the tube includes "a radially outwardly flared
end portion." Appeal Br. 16 (Claims Appendix). Appellants' Specification
discloses that the tubing 701 includes "end of tubing 701 C" that "is flared
out" and further that the tube includes "an end portion 701C which is
flared." Spec. ,r,r 105, 118 (discussing Figs. 7 and 12). Appellants identify
element 701 C as the claimed "radially outwardly flared end portion."
Appeal Br. 4 (citing Fig. 12). The lead line for element 701C in Figure 12
points to the end face of tube 701. Thus, we find that one having ordinary
skill in the art would understand that "radially outwardly flared end portion"
when read in light of Appellants' Specification refers to the end portion of
the flared portion of tube 701, and that it does not necessarily encompass the
entire flared portion of the tube. In other words, the use of the term "end" in
this claim phrase confines the claimed portion to the part of the flared
portion at the end face of tube 701.
"generally uniform main portion "
Claim 48 recites that a portion of the tube axially coincident with the
sleeve includes "a generally uniform main portion." Appeal Br. 17 (Claims
Appendix). The Specification does not identify in the Figures the claimed
"generally uniform main portion." One having ordinary skill in the art
would understand the claimed "generally uniform main portion" when read
in light of the claim language refers to the portion of the tube axially
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Application 12/549,606
coincident3 with the sleeve having a generally uniform feature. Such an
interpretation encompasses, for example, the portion of the tube axially
coincident with the sleeve having a generally uniform outer diameter.
"radially-inwardly compressed grip portion "
Claim 48 recites that a portion of the tube axially coincident with the
sleeve includes "a radially-inwardly compressed grip portion axially
between and abutting the main portion and the extruded bulbous portion."
Appeal Br. 17 (Claims Appendix). The Specification does not identify in
the Figures the claimed "radially-inwardly compressed grip portion." Based
on the language in the claim that identifies this grip portion as abutting the
extruded bulbous portion, we look to the Specification to discern the
location of the extruded bulbous portion. The Specification describes that in
the final position shown in Figure 12, "metal from the tube has been
extruded into the cavity 780 and space 780A filling same." Spec. ,r 118.
Based on this disclosure, one having ordinary skill in the art would
understand the extruded bulbous portion refers to the tube material marked
with reference numeral 715B in Figure 12 that fills cavity 780. See Appeal
Br. 5 (identifying reference numeral 715 as the extruded bulbous portion).
One having ordinary skill in the art can also see that Figure 12 shows a
portion of tube 701 directly above the extruded bulbous portion that is
compressed to have a slightly narrower outer diameter than the tube material
further above the compressed region. One having ordinary skill in the art
would understand the claimed "radially-inwardly compressed grip portion"
when read in light of the claim language and the Specification refers to the
3 We interpret "axially coincident" to mean the portion of the tube
surrounded by the sleeve.
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Application 12/549,606
portion of the tube axially coincident with the sleeve having a narrower
outer diameter than the main portion such that this portion of tube material is
compressed in the radial dimension.
"extruded bulbous portion"
Claim 48 recites, "wherein said side [ of generally cylindrical sleeve]
proximal the flared end portion of the tube includes an inner annular
concavity and a sharp annular biting portion radially engaging and radially
deforming said thick-walled tube to form an extruded bulbous portion
protruding into the annular concavity." Appeal Br. 16 (Claims Appendix).
With regard to the formation of this extruded bulbous portion, Appellants'
Specification describes that the invention "deforms ( extrudes[ 4J) the tubing
material into the desired shape." Spec. ,r 33. With reference to Figure 10,
the Specification discloses that "the annular sharp biting edge 749A
engag[es] the tube 701 forming an annular cut 712 beginning to form in the
exterior surface 701D of the thick-walled tubing and which extrudes metal
of the tube into cavity 780 occupying space 780A." Id. ,r 116; see also id.
(disclosing that the die forces the annular biting edge 749A of the sleeve
deeper into the tube 701 "deforming ( extruding) the tube material"). In
other words, as sleeve 704 is moved relative to tube 701, part of the material
of tube 701 is shaped by forcing tube 701 through the opening of sleeve 704
that includes biting edge 749A. One having ordinary skill in the art would
understand "extruded bulbous portion" in light of the claim language and the
4 The ordinary meaning of "extrude" includes "to force, press, or push out"
and "to shape ( a substance, such as metal or plastic) by forcing through a
die." https://www.merriam-webster.com/dictionary/extrude, last accessed
July 18, 2018.
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Appeal 2017-011310
Application 12/549,606
Specification refers to a portion of the tube material that is shaped by
engagement of the biting portion of the sleeve into the thick-walled tube to
deform the material into the annular concavity of the sleeve.
Anticipation
Based on this interpretation of the pertinent language of claim 48, we
now examine the Examiner's determination of anticipation by Parker. To
facilitate discussion, an annotated copy of Figure 3 of Parker is reproduced
below (with the tube highlighted in purple and the claimed portions of the
tube identified with annotations).
PL9.J> ..
1i3~~~ ~- ... ,
. .:q.~~'7'77,U\.'\.\~
:z&.....v,.,~~~~
e.J~~~ID
:J.9
Z.IJ
&
Figure 3 of Parker shows an enlarged fragmentary sectional view of a
tube coupling in the completely clamped, final assembly condition. Parker
1, second col., 11. 4-14.
Parker discloses an object of his invention is to provide means for
imposing highly concentrated forces onto the flared end portion of a tube "to
cause the metal of the tube to be deformed." Parker 1, first col., 11. 16-21.
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Appeal 2017-011310
Application 12/549,606
Parker provides clamp sleeve 15, which surrounds tube 9, and discloses that
annular rib 21 projects inwardly from clamping surface 18 of sleeve 15. Id.
at 2, first col., 11. 1-2, 20-21. Parker describes that when sleeve 15 is moved
toward a tight clamping position, the metal of flared end 8 of tube 9 "is
deformed" by annular rib 21. Id. at 2, first col., 11. 30-45 ( citing Fig. 3). As
shown in Figure 3 of Parker, the deformed material of tube 9 fills in the
annular cavity in sleeve 15 disposed directly below annular rib 21. As such,
the clamping action described in Parker forms this deformed material, which
corresponds to an "extruded bulbous portion" as that term is interpreted
above. Accordingly, we do not find error in the Examiner's finding that
Parker discloses an extruded bulbous portion as recited in claim 48.
As to the remaining features of claim 48, the Examiner pointed to
Figures 1 through 4 of Parker for disclosure of the claimed compression and
flared tube fitting assembly, including, inter alia, the claimed tube. Ans. 2-
3. As identified above, the portion of tube 9 axially coincident with sleeve
15 that has a generally uniform outer diameter is identified as the claimed
"generally uniform main portion." The portion of tube 9 axially coincident
with sleeve 15 that is compressed in the radial dimension to have a narrower
outer diameter than the main portion is identified as the claimed "radially-
inwardly compressed grip portion." The portion of tube 9 that fills in a
corresponding recess in sleeve 15 is identified as the claimed "extruded
bulbous portion." Finally, the portion of tube 9 in the flared section at the
end face of the tube is identified as the "flared end portion."
Based on this reading of the claim language onto the depiction in
Figure 3 of Parker, we find that a preponderance of the evidence supports a
finding of anticipation of claim 48. Specifically, the portion of the tube
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Application 12/549,606
identified above as the radially-inwardly compressed grip portion abuts both
the main portion and the extruded bulbous portion of the tube and lies
axially between these two abutting portions. Further, the portion identified
above as the extruded bulbous portion abuts both the compressed grip
portion and the radially outwardly flared end portion and lies axially
between these two portions. As to claim 53, the identified extruded bulbous
portion is a single bulbous portion.
We recognize that the annotations in the figure reproduced above
augment the findings of the Examiner. See Ans. 4 (Examiner's annotations
of Parker's Figure 1). As such, we designate our affirmance of this ground
as a new ground of rejection to provide Appellants with a full and fair
opportunity to respond to the rejection.
Second Ground of Rejection: Unpatentability of claims 11, 12, 42-45, and
47 over Parker
The Examiner found that Parker discloses the invention of
independent claim 42 "except for 300 series stainless steel and a coating."
Ans. 5. The Examiner determined that it would have been obvious to one
having ordinary skill in the art at the time of the invention to use XADC-
Armoloy® coating as a matter of obvious design choice because "this
material is known for its durability, lubricity, adhesion and resistance to
abrasion." Id. The Examiner's determination was based on the finding that
Appellants' Specification "conced[es] that [it] is well-known in the art to
utilize XADC-Armoloy® for couplings of the instant invention." Id. at 9.
Appellants' Specification describes that XADC-Armoloy® is a
trademark of Armoloy Corporation. Spec. ,r 36. The Specification describes
the use of XADC-Armoloy® coating on the sleeve of the invention to create
a hardened surface while maintaining sufficient lubricity in the section of the
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Application 12/549,606
Specification that provides a summary of the present invention. Id. We
agree with Appellants that the paragraph in the Specification does not
concede that it was well-known to use the XADC-Armoloy® coating for the
claimed couplings. Reply Brief (September 5, 2017) (hereinafter "Reply
Br.") at 4. At most, the Specification supports a finding that the XADC-
Armoloy® coating existed prior to Appellants' invention. The Examiner,
however, failed to provide adequate reasoning to explain why one having
ordinary skill in the art would have been led to apply such a commercially
available coating to the sleeve of Parker's coupling. See id. (Appellants
arguing that Parker does not disclose a coating on the sleeve or a need for a
coating); see also Appeal Br. 10-11 ( arguing same). Thus, the Examiner
does not support the determination of obviousness with adequately
articulated reasoning based on rational underpinnings. For this reason, we
do not sustain the rejection of independent claim 42, and its dependent
claims 11, 12, 43--45, and 47, as unpatentable over Parker.
DECISION
The decision of the Examiner rejecting claims 11, 12, 42-45, and 47
is reversed.
The decision of the Examiner rejecting claims 48 and 53 is affirmed.
We designate our affirmance of the adverse decision as to claims 48 and 53
as a new ground of rejection, pursuant to our authority under 37 C.F.R.
§ 4I.50(b).
Section 4I.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
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Appeal 2017-011310
Application 12/549,606
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
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)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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