Ex Parte DONALDSON

Patent Trial and Appeal Board

Dec 17, 2018

14660678 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/660,678 03/17/2015 PAUL JOHN DONALDSON
24919 7590 12/19/2018
MCAFEE & TAFT
TENTH FLOOR, TWO LEADERSHIP SQUARE
211 NORTH ROBINSON
OKLAHOMA CITY, OK 73102
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.
67130.29 3388
EXAMINER
HONG, HENRY Y
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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@mcafeetaft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL JOHN DONALDSON
Appeal 2018-004911
Application 14/660,678
Technology Center 3700
Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, and4-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2018-004911
Application 14/660,678
CLAIMED SUBJECT MATTER
The claims are directed to a socket fusion jig. Independent claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A socket fusion jig comprising:
a pipe support comprising a left pipe clamp jaw and a right
pipe clamp jaw;
a coupling support;
a pipe clamp screw having a left-hand screw thread and a
right-hand screw thread configured so that rotation of the pipe
clamp screw moves the left pipe clamp jaw and the right pipe
clamp in opposite directions; and
a first input link rotatable about an axis at a first end
thereof, wherein rotation of the first input link moves the
coupling support laterally relative to the pipe support.
REJECTIONS 1
Claims 8-10 are rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Ball et al. (US 4,054,984, issued Oct. 25, 1977).
Claims 1, 2, 4---6, 11-13, 15-19, and 21-23 are rejected under 35
U.S.C. § 103 as being unpatentable over Ball and Lenz (US 5,098,073,
issued Mar. 24, 1992).
Claim 7 and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ball, Lenz, and Coope (US 4,046,364, Sept. 6, 1977).
Claim 14 is rejected under 35 U .S.C. § 103 as being unpatentable
over Ball, Lenz, and Fox (US 5,860,197, issued Jan. 19, 1999).
Claim 20 is rejected under 35 U .S.C. § 103 as being unpatentable
over Ball, Lenz, and Meyer (US 2,407,341, issued Sept. 10, 1946).
1 The Examiner indicated an amendment overcoming the § 112 rejection
would be entered in the October 27, 2017 Advisory Action.
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Application 14/660,678
OPINION
Anticipation
Appellant's arguments in the Appeal Brief pertaining to the
anticipation rejection of claim 8 are focused on the inability of each of Ball's
V-seats 18 to form two jaws. App. Br. 7. In the Answer, the Examiner
clarifies that it was not the V-seats alone that the Examiner relied upon as
satisfying the limitations calling for left and right jaws for each of the pipe
and clamp supports. Rather, it was a respective V-seat and link chain 25.
Ans. 8. The Examiner points out that this was discussed in the interview of
May 1, 2017. Ans. 8. It was also indicated on page two of the Advisory
Action of that same date.
Issues of clarity relating to the Examiner's rejection should be
resolved prior to taking an appeal. Here, as discussed above, it appears they
were. 37 C.F.R. § 4I.39(a)(l) states, "An examiner's answer is deemed to
incorporate all of the grounds of rejection set forth in the Office action from
which the appeal is taken ( as modified by any advisory action and
pre-appeal brief conference decision)." Appellant's brief addresses a
hypothetical ground of rejection not before us for review. Arguments that
could have been timely made but were not are deemed waived for purposes
of this appeal. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) ("The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant. Except as provided for in§§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.")
In the Reply brief, Appellant demonstrates an appreciation of the
Examiner's reliance on link chain 25, but Appellant does not present any
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Application 14/660,678
substantive arguments apprising us of error in the Examiner's reliance on
link chain 25. Instead, Appellant essentially accuses the Examiner's Final
Action of lacking clarity because each of the structures represented by
reference numeral 15 were cited by the Examiner as satisfying the respective
pipe support and coupling support limitations and, according to Appellant,
link chain elements 25 are not subcomponents of each of Ball's two pipe
clamps 15. Reply. Br. 4.
It is unclear why Appellant regards only the first portion of Ball's
paragraph describing pipe clamps 15 as describing those clamps. See Reply.
Br. 4 (quoting Ball col. 1, 11. 56-63). Appellant quotes the portion of that
paragraph describing link chains 25 and argues it indicates that Ball's chains
do not form part of the pipe and coupling supports. Reply. Br. 5 (quoting
Ball col. 2, 11. 6-17). However, Appellant acknowledges clamps 15, which
the Examiner relied on for the pipe and clamp support, are comprised of
blocks 18 and V-seats 18. In addition, welded to blocks 16 are brackets 19,
which accommodate spindles 20, journaled in links 21, and connected to
chain 25 affixing rods 22. We see no reason to exclude spindles 20, links 21,
rods 22 and chain 25 from what Ball describes as components of Ball's
clamp 15. Clamping could not occur without these structures. Claim 3 of
Ball expressly reinforces the understanding that link chains 25 are
components of clamps 15.
More importantly, regardless of the exact relationship Ball attributed
to elements 15 and 25, the Examiner's position was clarified in the May 1,
2017 Advisory Action. We do not see any persuasive reason why the merits
of that position are not addressed at all in the appeal presently before us.
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Again, arguments not made are deemed waived and the substance of the
Examiner's anticipation rejection of claim 8 stands uncontroverted.
Appellant's arguments concerning the plurality of locations or four
locations of claims 9 and 10 (App. Br. 8-19), respectively, again overlook
the Examiner's reliance on Ball's link chain 25. No further arguments are
presented in the Reply Brief concerning these claims.
For the foregoing reasons, we sustain the Examiner's anticipation
rejection
Obviousness
The obviousness rejection of claims 1, 2 and 4--6 are argued as a
group, for which claim 1 is representative under 37 C.F.R. § 4I.37(c)(l)(iv).
Ball is similar to Appellant's first embodiment (Spec. paras. 34--58,
Figs. 1-14) and the Examiner's proposed modification of Ball with the
screw and movable clamps of Lenz would yield a structure like Appellant's
second embodiment (Spec. paras. 59-94, Figs. 15-26) to which claim 1 is
directed. Regarding the obviousness rejection, Appellant again perceives a
lack of clarity in the Examiner's position and posits two hypothetical
rejections that the Examiner may be making. App. Br. 14--16. Both of these
hypothetical rejections involve the bodily incorporation of some components
of Lenz into Ball and neither hypothetical rejection actually reflects the
position taken by the Examiner. Although we recognize the Examiner could
have been more specific in the Final Action and Advisory Actions, the
Examiner clarifies in the Answer that it is just the movable jaws and left-
hand-right-hand screw of Lenz that the Examiner proposes to substitute into
Ball. Ans. 9.
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Application 14/660,678
Appellant's second hypothetical rejection is closer to the Examiner's
position, but Appellant has not apprised us of any reason Lenz's central
fixed jaw 21 must be incorporated into Ball. See Reply. Br. 13. "It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements." In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). By
requiring the presence of fixed jaw 21, Appellant is essentially arguing that
one skilled in the art could not differentiate between clamping two items at
the same time against a central jaw, as Lenz does, and clamping one item
between the movable jaws alone. This argument fails to attribute the
requisite level of skill to the hypothetical artisan of§ 103. See In re Sovish,
769 F.2d 738, 743 (CCPA 1985). The same is true for Appellant's assertion
that replacing a simple chain and lever with simple screw-driven jaws
requires "substantial reconstruction and redesign." App. Br. 18-19; Reply.
Br 10-11. All of these are very basic mechanical components. Appellant
also does not apprise us of any unpredictable technical advancements
associated with clamping an item between two moving jaws as compared to
one fixed and one moving jaw. In each case, the principle of operation
remains clamping. See App. Br. 17-18. Appellant's accusation that the
Examiner did not articulate a reason for the proposed substitution is also
unfounded. See App. Br. 21-23; Reply. Br 11-12. The Examiner stated that
the proposed modification would "enhance[] rapid and reliable operation
while providing high clamping forces" (Final Act. 4; see Ans. 9) and in the
May 1, 2017 Advisory Action cited Sakamoto as further supporting that
position by demonstrating chain-style and vice-style clamping were known
alternatives for pipe fixation. Cf Sakamoto Fig. 1 with 5; col. 1 11. 36-48
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( discussing the inefficiency associated with chain clamping); col.3, 11. 21-33
( discussing the advantage of firm engagement associated with saw-toothed
jaws). Regarding Sakamoto, Appellant argues only that Sakamoto fails to
disclose two movable jaws. Reply. Br. 9. However, Sakamoto was not relied
upon by the Examiner for such a teaching, which is already present in Lenz.
The substance of the Examiner's reasons for combining the reference
teachings stands uncontroverted.
For the foregoing reasons, we are not apprised of error in the
Examiner's rejection of claim 1.
Regarding claims 11-13 Appellant begins by arguing that Ball does
not disclose the movable jaws Lenz was cited for. App. Br. 23-25. "Non-
obviousness cannot be shown by attacking references individually when the
rejection is predicated upon the teachings of a combination of
references." See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986)( citation omitted). Appellant then relies on the arguments previously
set forth in the Brief and addressed above concerning the Examiner's
proposed combination of Ball with Lenz. App. Br. 26. These arguments do
not distinguish any specific language present in claims 11-13 and remain
unpersuasive for the reasons discussed above. Regarding independent claims
15 and 21 and respective dependent claims 16-19, and 22 and 23, Appellant
summarily reiterates the arguments addressed above without distinguishing
any specific language in claim 15 warranting a different disposition. App.
Br. 26-29. Appellant relies on arguments previously set forth and addressed
above concerning the remaining rejections. App. Br. 29-31.
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DECISION
The Examiner's rejections are affirmed.
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
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