Ex Parte Daykin et al

Patent Trials and Appeals Board

Jun 25, 2019

12673971 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/673,971 03/01/2011
28268 7590 06/26/2019
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
FIRST NAMED INVENTOR
Damian Daykin
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.
SW-INF-1022 2919
EXAMINER
THOMAS, BINU
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
06/26/2019 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
Ex parte DAMIAN DAYKIN,
CHRISTO FER RATCLIFFE, and MICHAEL GEORGE
Appeal2018-008978
Application 12/673,971
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 5-18, 20, 23, and 25-39 of
Application 12/673,971 under 35 U.S.C. § 103(a) as obvious. 1 Non-Final
Act. 3-7 (Oct. 24, 2016). Appellants seek reversal of the rejection pursuant
to 35 U.S.C. § 134(a). 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Claims 4, 21, 22, 24, 42, and 43 are withdrawn from consideration by the
Examiner pursuant to 37 C.F.R. § l.142(b) as drawn to a non-elected
invention. Non-Final Act. 2.
2 Pipeline Induction Heat Ltd. is identified as the real party in interest.
Appeal Br. 3.
Appeal2018-008978
Application 12/673,971
For the reasons set forth below, we reverse.
BACKGROUND
The '971 Application describes an apparatus for coating pipes and,
particularly, the joined end sections of pipes. See Spec. 1 :2--4.
Claim 1 is representative of the '971 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief ( emphasis
added):
1. Apparatus for coating a pipe, the apparatus comprising:
a first frame arranged to be mounted on the pipe,
electrical conductors mounted on the first frame arranged to
form an induction heating coil[,] which encircles the pipe
when the first frame is mounted on the pipe;
a second frame rotatably mounted on the first frame;
and a coating applicator mounted on the second frame
and arranged to apply a coating onto a surface of the pipe
when the apparatus is mounted on the pipe,
wherein the first and second frames and the coating
applicator are arranged such that when the apparatus is
mounted on the pipel] the coating applicator is disposed to
one side of the induction heating coil in a direction along
the longitudinal axis of the pipe, and able to apply coating to
a surface of the pipe alongside the surface of the pipe
underlying the induction heating coil; and
wherein the second frame is operable with the first frame
between an open state and a closed state; and
wherein the induction heating coil is radially closer to the
pipe than the coating applicator.
Appeal Br. 11 (Claims App.).
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Appeal2018-008978
Application 12/673,971
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1, 2, 5-18, 20, 25-28, and 30-39 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Denman, 3 Betteridge, 4 and Carlson, Jr. 5 Non-Final Act. 3;
Answer 3. 6
DISCUSSION
With the exception of dependent claim 9, Appellants argue for the
reversal of the obviousness rejection of claims 1, 2, 5-18, 20, 25-28, and
30-39 on the basis of limitations present in independent claim 1. See
generally Appeal Br. at 5-10; Reply Br. 1-5. We select claim 1 as
representative. Accordingly, we limit our discussion to claim 1.
In rejecting claim 1, the Examiner relied on Figure 1 of Denman.
3 US 5,417,786, issued May 23, 1995.
4 US 4,595,607, issued June 17, 1986.
5 US 5,186,755, issued Feb. 16, 1993.
6 The Examiner's statement of Rejection 1 included claims 23 and 29. See
Non-Final Act. 3. Appellants, however, canceled claims 23 and 29 by
Amendment filed July 21, 2014. Accordingly, we view the Examiner's
inclusion of claims 23 and 29 in Rejection 1 as a clerical error.
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Appeal2018-008978
Application 12/673,971
Figure 1 is reproduced below:
FIG..1
Figure 1 depicts front roller frame 16, rear frame 18, and four spray
heads 82 for applying liquid coating material. Denman 3:26; 3:46; 4:48-55.
The Examiner found that Denman describes each limitation of the claim, but
does not teach or suggest, inter alia, the claimed arrangement of the
induction heating coil, the first and second frames, and the coating
applicator. Answer 3--4. According to the Examiner, Denman fails to
particularly disclose that front roller frame 16 includes an induction heating
coil such that it is located to one side of epoxy coating applicators 82, which
are disposed in rear frame 18, when these adjacent frames are mounted on a
pipe. Id. at 4.
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Appeal2018-008978
Application 12/673,971
The Examiner, however, relied on Figure 1 of Betteridge, which is
reproduced below.
Fig;I
Figure 1 depicts coating applicators 100, 102 and heating bank section
104. Betteridge 6:48-56.
The Examiner found that Betteridge teaches a plurality of induction
heating units 116, which are mounted onto a pair of heating bank sections
104, 106. Answer 4 (citing Betteridge Figs. 1, 4; 6:55---65; 7:8-20). The
Examiner determined that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to incorporate
Betteridge' s plurality of induction heating units 116, which are mounted
onto heating banks 104, 106, onto Denman's arms and longitudinally
extending frame member 27 of roller frame 16. Answer 4 (citing Betteridge
1 :7-17); see also Answer 8. According to the Examiner, the ordinarily
skilled artisan would have been motivated to do so "because Betteridge
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Appeal2018-008978
Application 12/673,971
teaches th[at] heating []the pipe allows for proper adhesion of the coating."
Answer 4 ( citing Betteridge 1 :7-17).
Appellants argue that Betteridge's "applicator 100, 102 is
longitudinally in line (i.e., not offset) from the heating induction coil 104."
Appeal Br. 7. In particular, Appellants contend "Denman fails to teach
spray to one side of the induction coil, Betteridge also fails to teach spray to
one side of the induction coil, and there is no reasonable motivation to add
Betteridge's heat to Denman ... in the inventive offset manner required by
claim 1." Reply Br. 4.
The patent examiner bears the initial burden of establishing a prima
facie case that an application's claims would have been obvious based upon
what was known in the prior art. In re Dillon, 919 F.2d 688, 701 (Fed. Cir.
1990). Furthermore, the patent examiner's "[r]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir.
2006)).
For the following reasons, we determine that the Examiner erred by
finding that the applied prior art teaches or suggests the limitation "the first
and second frames and the coating applicator are arranged such that when
the apparatus is mounted on the pipe the coating applicator is disposed to
one side of the induction heating coil" as recited in claim 1 ( emphasis
added).
The Examiner's conclusion that the ordinarily skilled artisan would
have been motivated to modify Denman's roller frame 16 fails to address
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Appeal2018-008978
Application 12/673,971
why rear frame 18 would not have been a suitable frame for modification.
Answer 4. In other words, Betteridge teaches that coating applicators 100,
102, which are not to one side of heating induction coil 104, accomplishes
proper adhesion of the coating. See Betteridge Fig. 1. Thus, the Examiner
has not provided articulated reasoning why Denman, in combination with
Betteridge, would have rendered obvious a coating applicator disposed to
one side of the induction heating coil. In the absence of a reasoned
explanation why the ordinarily skilled artisan would not have modified rear
frame 18 to incorporate Betteridge' s induction heating coil, we agree with
Appellants that the Examiner has engaged in impermissible hindsight in
concluding that the applied prior art renders claim 1 obvious.
In view of the foregoing, we reverse the Examiner's rejection of
independent claim 1. Thus, we also reverse the rejection of claims 2, 5-18,
20, 25-28, and 30-39. 37 C.F.R. § 4I.37(c)(l)(iv).
We express no opinion regarding Appellants' other arguments for
reversal of Rejection 1.
CONCLUSION
For the reasons set forth above, we reverse the§ 103(a) rejection of
claims 1, 2, 5-18, 20, 25-28, and 30-39 of the '971 Application.
REVERSED
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