Ex Parte PisacretaDownload PDFPatent Trial and Appeal BoardAug 13, 201813492321 (P.T.A.B. Aug. 13, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/492,321 06/08/2012 Pellegrino J. Pisacreta 54549 7590 08/15/2018 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 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. 61807US01; 67097-1873PUS1 CONFIRMATION NO. 1020 EXAMINER PATTERSON, MARC A ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 08/15/2018 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PELLEGRINO J. PISACRET A Appeal2017-009945 Application 13/492,321 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHRISTOPHER L. OGDEN, and AVEL YN M. ROSS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant filed an appeal under 35 U.S.C. § 134(a) from an Examiner's decision finally rejecting claims 1-7, 9-14, and 22-30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is said to be United Technologies Corporation. Appeal Brief dated December 23, 2016 ("App. Br."), at 1. Appeal2017-009945 Application 13/492,321 The subject matter on appeal is directed to insulated tubing comprising an inner metal tube, an inner middle insulation layer, an outer middle securing layer, and an outer shrinkable sleeve. Representative claim 1 is reproduced below. 2 1. A tubing comprising: an inner tube consisting of metal that is an innermost layer; an inner middle insulation layer that contacts the inner tube; an outer middle securing layer, wherein the outer middle securing layer is a ceramic tape layer that secures the inner middle securing layer over the inner tube, and the outer middle securing layer contacts the inner middle insulation layer and is wrapped around a length of the outer middle insulation layer from one end region of the inner middle insulation layer to an opposing end region of the inner middle insulation layer; and an outer shrinkable sleeve located over the outer middle securing layer that shrinks upon exposure to heat. The following grounds of rejection are maintained on appeal: (1) claims 1, 12, and 25 under 35 U.S.C. § 112, second paragraph; 3 2 Claim 1 is reproduced from the Appellant's amendment dated September 14, 2016, which was entered in the Advisory Action dated October 14, 2016 ("Adv. Act."). Claim 1, as it appears in the Claims Appendix of the Appeal Brief, it not an accurate reproduction of pending claim 1, for at least the reason that "the outer middle insulation layer" has been changed to "the inner middle insulation layer." 3 The Examiner states that "[ e ]very ground of rejection set forth in the Office action dated July 14, 2016 from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading 'WITHDRAWN REJECTIONS."' Examiner's Answer dated June 8, 2017 ("Ans."), at 2. The Examiner does not reproduce the section 112, second paragraph, rejection in the Examiner's Answer. The Examiner, however, does not list the section 112, second paragraph, rejection as a withdrawn rejection. In the rejection, the Examiner concludes that the phrase "the outer middle insulation layer" lacks antecedent basis. Final Office Action dated July 14, 2016 ("Final Act."), at 5---6. Although the amendment dated September 14, 2016 was entered in the Advisory Action dated October 14, 2016, the Examiner states that 2 Appeal2017-009945 Application 13/492,321 (2) claims 1, 2, 4, and 22-26 under 35 U.S.C. § I03(a) as unpatentable over Henderson et al. 4 in view ofNooren, 5 Igarashi et al.,6 and Samour, 7 as evidenced by Sugita et al.; 8 (3) claims 4, 29, and 30 under 35 U.S.C. § I03(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view of Collier et al.;9 (4) claim 3 under 35 U.S.C. § I03(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view of Kimura et al.; 10 (5) claim 5 under 35 U.S.C. § I03(a) as unpatentable over Henderson in view ofNooren, Igarashi, Samour, and Collier, as evidenced by Sugita, and further in view of Kordyban et al. 11 and Batallas et al.; 12 (6) claim 6 under 35 U.S.C. § I03(a) as unpatentable over Henderson in view ofNooren, Igarashi, Samour, and Collier, as evidenced by Sugita, and further in view of Hughes; 13 "[c]laims 1, 12 and 25 still recite [the] 'outer middle insulation layer."' Adv. Act. 2 (emphasis added). Therefore, we understand that the section 112, second paragraph, rejection is maintained by the Examiner on appeal. 4 US 4,094,715, issued June 13, 1978 ("Henderson"). 5 US 7,887,925 B2, issued February 15, 2011 ("Nooren"). 6 US 5,849,111, issued December 15, 1998 ("Igarashi"). 7 GB 2 046 865 A, published November 19, 1980 ("Samour"). 8 US 2012/0028107 Al, published February 2, 2012 ("Sugita"). 9 US 2011/0240166 Al, published October 6, 2011 ("Collier"). 10 US 6,371,359 Bl, issued April 16, 2002 ("Kimura"). 11 US 3,367,530, issued February 6, 1968 ("Kordyban"). 12 US 2010/0154917 Al, published June 24, 2010 ("Batallas"). 13 US 4,556,593, issued December 3, 1985 ("Hughes"). 3 Appeal2017-009945 Application 13/492,321 (7) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view of Beck et al.; 14 (8) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view of Gerace· 15 ' (9) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view of Sheahall" 16 ' (10) claims 10, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view ofWashizu et al.; 17 (11) claim 27 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, Samour, and Collier, as evidenced by Sugita, and further in view of Washizu; (12) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, Samour, Collier, and Washizu, as evidenced by Sugita, and further in view of Kordyban and Batallas; and (13) claim 28 under 35 U.S.C. § 103(a) as unpatentable over Henderson in view ofNooren, Igarashi, and Samour, as evidenced by Sugita, and further in view of Kordyban. 14 US 5,582,905, issued December 10, 1996 ("Beck"). 15 US 4,581,281, issued April 8, 1986 ("Gerace"). 16 US 3,581,776, issued June 1, 1971 ("Sheahan"). 17 US 4,800,109, issued January 24, 1989 ("Washizu"). 4 Appeal2017-009945 Application 13/492,321 B. DISCUSSION 1. Rejection (I) On appeal, the Appellant does not address the rejection under section 112, second paragraph. Therefore, rejection (1) is sustained for the reasons provided by the Examiner. See Final Act. 5---6; 18 Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). 2. Rejection (2) a. Claims 1, 2, and 22-26 The Examiner finds Henderson discloses a tubing comprising an insulation layer that contacts an inner tube and an outer middle securing layer that is wrapped over the insulation layer, wherein the outer middle securing layer is a corrosion protective tape. Final Act. 7. The Examiner finds Henderson does not disclose that the tape is ceramic and that an outer shrinkable sleeve is located over the outer middle securing layer as recited in claim 1. 19 Final Act. 7. The Examiner finds Nooren discloses a corrosion protective tape comprising a talc filler20 "for the purpose of providing a tape that is easily applied." Final Act. 7. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the corrosion protective tape disclosed in Henderson with 18 Final Office Action dated July 14, 2016. 19 The Examiner also finds Henderson does not expressly disclose that the inner tube is metal. Final Act. 7. The Examiner, however, concludes that using a metal tube in Henderson's disclosed tubing would have been obvious to one of ordinary skill in the art based on the teachings in Igarashi. Final Act. 7. The Appellant does not direct us to any evidence to the contrary. 20 The Examiner finds, and the Appellant does not dispute, that Sugita discloses that talc is ceramic. Final Act. 8. 5 Appeal2017-009945 Application 13/492,321 Nooren's corrosion protective tape "to obtain a tape that is easily applied." Final Act. 8. As for the "outer shrinkable sleeve" recited in claim 1, the Examiner finds Samour discloses a pipe comprising a heat shrinkable outer layer that functions as a protective or moisture barrier layer. Final Act. 8. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to include a heat shrinkable layer, as disclosed in Samour, over Henderson's outer middle securing layer "to provide for a protective or moisture barrier layer."21 Final Act. 8. The Appellant argues that there is no reason to add an outer shrinkable sleeve for the reason proposed by the Examiner because Henderson's tape provides an outer moisture barrier. 22 App. Br. 3. The outer shrinkable sleeve disclosed in Samour is not merely a moisture barrier. Samour discloses that "the outer foamed insulation layer can be provided with a wrapped or extruded protective or moisture barrier layer of paper or plastic, e.g., ... an envelope or wrapped layer of heat-shrinkable plastic which is shrunk in 21 In an alternative embodiment, Henderson teaches that the tubing may have four layers. [I]f the sheet material [ or tape] is not required to serve as a vapor barrier or is not intended to provide additional corrosion coating, a material such as fiberglass or its equivalent may be employed. In some instances, a material such as fiberglass is used and a corrosion protective coating or vapor barrier coating is sprayed, dipped, extruded, taped or otherwise applied over the sheet material. Henderson, col. 4, 11. 54---62. 22 The Appellant also argues that if the Examiner interprets Henderson's tape as being the outer layer, Henderson still fails to disclose a ceramic tape and there would have been no rational reason to add a ceramic tape to Henderson's tubing. App. Br. 4. The Examiner does not interpret Henderson's tape as corresponding to the claimed outer layer or sleeve. Therefore, it is not necessary to address the Appellant's argument. 6 Appeal2017-009945 Application 13/492,321 place to conform to the foamed insulation." Samour 3, 11. 39--45 (emphasis added). Samour discloses that a protective layer provides a barrier against puncture and moisture penetration. Samour 3, 11. 52-55. One of ordinary skill in the art would have considered puncture resistance to be a useful property in Henderson's tubing which is said to be used in oil recovery and oil transportation, as well as natural gas recovery and water, steam, and sewer pipes. Henderson, col. 1, 11. 39--48; see Ans. 1623 ( concluding that it would have been obvious to provide Henderson with a layer of protective material). The Appellant also argues that "the numerous references [i.e., five] included in the rejection[] indicate that the claims are not obvious." App. Br. 4. As explained by the Court in In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991 ), the criterion for combining a large number of references is not the number of references, but what the references "would have meant to a person of ordinary skill in the field of the invention." Thus, the mere fact that the Examiner relied on five references in the rejection of claim 1 does not, by itself, weigh against a conclusion of obviousness. Based on the foregoing, a preponderance of the evidence supports the Examiner's conclusion of obviousness. Therefore, the obviousness rejection of claim 1 is sustained. The Appellant does not present arguments in support of the separate patentability of any of claims 2 and 22-26. Therefore, the obviousness rejection of claims 2 and 22-26 also is sustained. 23 Examiner's Answer dated June 8, 2017. 7 Appeal2017-009945 Application 13/492,321 b. Claim 4 Claim 4 depends from claim 1 and recites "wherein the inner middle insulation layer includes two outer layers and an insulation filler located therebetween." App. Br. 12. The Appellant argues that the limitation recited in claim 4 would have not been obvious to one of ordinary skill in the art based on the teachings in Henderson. App. Br. 4. The Examiner does not address the limitations of claim 4 in rejection (2). See Final Act. 7-8. Therefore, the obviousness rejection of claim 4 based on the combination of Henderson, Nooren, Igarashi, Samour, and Sugita is not sustained. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a prima facie case ofunpatentability). 3. Rejection (10) As for independent claim 12, the Appellant relies on the same arguments presented in support of the patentability of claim 1 to establish that claim 12 is patentable. App. Br. 8-9. The Appellant also argues that claims 10 and 13 are patentable for the reasons that claims 1 and 12 are patentable. App. Br. 9. For the reasons discussed above, the Appellant's arguments in support of the patentability of claim 1 do not demonstrate reversible error. Therefore, the obviousness rejection of claims 10, 12, and 13 is sustained. 4. Rejection (3) a. Claim 4 The Examiner finds that Henderson, N ooren, Igarashi, and Samour do not disclose the limitation recited in claim 4 (i.e., "the inner middle insulation layer 8 Appeal2017-009945 Application 13/492,321 includes two outer layers and an insulation filler located therebetween"24). Final Act. 9. The Examiner, however, finds Collier discloses an insulation layer as claimed. Final Act. 9. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Henderson's insulation layer with the insulation layer disclosed in Collier "to prevent freezing during low temperature use as taught by Collier." Final Act. 9. In other words, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to substitute Henderson's insulation layer with the insulation layer disclosed in Collier. The Appellant argues: In Henderson, the insulation layer is a foamed insulation 58. The foamed insulation 58 is applied to the tube as a liquid, is allowed to rise, and then tape 61 [ corresponding to the claimed outer middle securing layer] is wrapped around the foamed insulation 58 to apply pressure to the risen foam 58. The tape 61 compacts the foamed insulation 58 and increases its density. App. Br. 5. The Appellant argues that "[m]odifying Henderson to include the claimed feature would not allow these method steps of creating the pipe with the ideal insulation layer to be performed." App. Br. 5. Significantly, the Appellant does not direct us to any evidence establishing that Henderson's tubing, modified with the insulation layer disclosed in Collier, would not be suitable for its intended use, i.e., oil recovery and oil transportation, as well as natural gas recovery and water, steam, and sewer pipes. See Henderson, col. 1, 11. 39--48. In that regard, we note that Collier, like Henderson, teaches that the disclosed insulation is added to pipelines that transport fluids, such as oil, water, and sewage. Collier ,r,r 2, 4. 24 App. Br. 12. 9 Appeal2017-009945 Application 13/492,321 Based on the foregoing, a preponderance of the evidence supports the Examiner's conclusion of obviousness. Therefore, the obviousness rejection of claim 4 based on the combination of Henderson, Nooren, Igarashi, Samour, Sugita, and Collier is sustained. b. Claim 29 Claim 29 depends from claim 1 and recites "wherein the inner middle insulation layer is wrapped around the inner tube such that edges of the inner middle insulation layer contact or overlap." App. Br. 15. The Appellant argues that "[ t ]he insulation layer is applied in a liquid foam form. Therefore, it is not possible for the edges of the insulation layer to overlap or contact as it is applied in a liquid form. Instead, a continuous layer of foam would be formed that has no edges." App. Br. 5. The Appellant is apparently referring to the insulation layer disclosed in Henderson. In the rejection on appeal, however, the Examiner finds Collier discloses the limitation recited in claim 29. 25 See Final Act. 1 O; see also Collier ,r 48 ( disclosing that third and fourth sides 226, 22 8 of insulation panel 200 may be secured together and/or to the pipeline directly); Collier Fig. 2B. The Appellant does not direct us to any error in the Examiner's finding. Therefore, the obviousness rejection of claim 29 is sustained. 25 As in rejection (3), the Examiner is substituting Henderson's insulation layer with the insulation layer disclosed in Collier. In the Reply Brief, the Appellant argues that "there is no reason to believe that the proposed modification based on Collier would improve freezing prevention in Henderson." Reply Brief dated July 17, 2017 ("Reply Br."), at 4 (emphasis added). Notably, there is no requirement under 35 U.S.C. § 103(a) that a modification improve a prior art invention. Rather, a modification to a prior art invention may simply involve the substitution of one known equivalent for another and yield the same, predictable results. 10 Appeal2017-009945 Application 13/492,321 c. Claim 30 Claim 30 depends from claim 29 and recites "wherein the edges of the inner middle insulation layer contacts or overlaps at a seam that extends along a longitudinal axis of the tubing." App. Br. 15. Similar to the argument presented in response to the rejection of claim 29, the Appellant argues that because "the insulation layer is applied in a liquid foam form, it is not possible for the edges of the foam to overlap or contact at a seam that extends along a longitudinal axis of the tubing." App. Br. 6. Again, the Appellant is apparently referring to the insulation layer disclosed in Henderson. In the rejection on appeal, however, the Examiner finds that Collier discloses the limitation recited in claim 30. See Final Act. 1 O; see also Collier Fig. 2B. The Appellant does not direct us to any error in the Examiner's finding. Therefore, the obviousness rejection of claim 30 is sustained. 5. Rejections (4), (7}--{9), (11) The Appellant argues that claims 3, 7, 9, 11, and 27 are patentable for the reasons presented in support of the patentability of claim 1. App. Br. 6, 7-8, 9. For the reasons discussed above, the Appellant's arguments do not demonstrate reversible error in the obviousness rejection of claim 1. Therefore, the obviousness rejections of claims 3, 7, 9, 11, and 27 are sustained. 6. Rejections (5) and (6) Claim 5 depends from claim 4 and recites "wherein the two outer layers include ceramic fibers and the insulation filler has a chalky consistency." App. Br. 12. The Appellant argues that because "the foam is applied in Henderson in a liquid foam form, it is not possible for the foam to have a chalky consistency as 11 Appeal2017-009945 Application 13/492,321 claimed." App. Br. 6; see also App. Br. 7 (arguing that claim 6 is not obvious because Henderson's foam does not have a chalky consistency as claimed). The Examiner finds that Collier in combination with Batallas, not Henderson alone, teaches a loose fill insulation having a chalky consistency. 26 Final Act. 11. The Appellant does not direct us to any error in the Examiner's finding. Therefore, the obviousness rejections of claims 5 and 6 are sustained. 7. Rejection (12) Claim 14 depends from claim 12 and recites "wherein the inner middle insulation layer includes two outer layers and an insulation filler located therebetween, and the two outer layers include ceramic fibers and the insulation filler has a chalky consistency." App. Br. 14. The Appellant argues that "a foam application cannot create chambers that contain an insulation filler." App. Br. 10. The Appellant is apparently referring to the insulation layer disclosed in Henderson. In the rejection on appeal, however, the Examiner finds Collier discloses an insulation layer comprising a membrane that forms pockets filled with insulation. Final Act. 9, 17; see also Collier ,r 31 ( disclosing an insulation panel including a cover or jacket encasing an insulation material). The Appellant does not direct us to any error in the Examiner's finding. Therefore, the obviousness rejection of claim 14 is sustained. 26 Contrary to the Appellant's argument, the Examiner is not proposing to add loose fill insulation to Henderson's insulation layer. See Reply Br. 3. Rather, in the obviousness rejection on appeal, the Examiner is substituting Henderson's insulation layer with the insulation layer disclosed in Collier and relying on Batallas to show that Collier's loose fill insulation has a chalky consistency. Final Act. 11. 12 Appeal2017-009945 Application 13/492,321 8. Rejection (13) Claim 28 depends from claim 1 and recites "wherein the inner middle insulation layer includes ceramic fibers." App. Br. 15. The Examiner finds Kordyban discloses an insulating material for a pipeline. The Examiner finds the insulating material provides a radiant heat barrier and includes ceramic fibers as recited in claim 28. Final Act. 18. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Henderson's tubing with the ceramic fibers disclosed in Kordyban "to obtain a radiant heat barrier." Final Act. 18. In other words, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to substitute Henderson's insulating material with the insulating material disclosed in Kordyban. The Appellant does not direct us to any error in the Examiner's factual findings. Rather, the Appellant argues that "[i]f the insulation layer was applied as a layer including two outer layers with an insulation filler there before [ as disclosed in Kordyban], it would not be possible to apply a liquid foam layer [as disclosed in Henderson]." App. Br. 10. Therefore, the Appellant argues that "a very dense foam layer could not be created as required" and a pipe or tubing "with the ideal insulation layer" would not be produced. App. Br. 10. Significantly, the Appellant does not direct us to any evidence establishing that Henderson's tubing, modified with the insulating material disclosed in Kordyban, would not be suitable for its intended use, i.e., oil recovery and oil transportation, as well as natural gas recovery and water, steam, and sewer pipes. Henderson, col. 1, 11. 39-48. In that regard, we note that the insulating material disclosed in Kordyban is said to be suitable for insulating cryogenic liquid containers. Kordyban, col. 4, 11. 34--40. 13 Appeal2017-009945 Application 13/492,321 Based on the foregoing, a preponderance of the evidence supports the Examiner's conclusion of obviousness. Therefore, the obviousness rejection of claim 2 8 is sustained. C. DECISION The Examiner's decision is affirmed. 27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). AFFIRMED 27 The Examiner's decision rejecting claim 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Henderson, Nooren, Igarashi, Samour, and Sugita is reversed. However, the Examiner's decision rejecting claim 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Henderson, Nooren, Igarashi, Samour, Sugita, and Collier is affirmed. 14 Copy with citationCopy as parenthetical citation