Ex Parte Warren

Patent Trials and Appeals Board

Mar 22, 2019

14689642 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/689,642 04/17/2015
3017 7590 03/26/2019
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI 02903
FIRST NAMED INVENTOR
Daniel Warren
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.
W016 P02820-US1 2344
EXAMINER
LAWSON,STACYN
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
patent@barjos.com
drj@barjos.com
sjh@barjos.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL WARREN
Appeal2018-005997 1
Application 14/689,6422
Technology Center 3600
Before: BRADLEYB. BAYAT, TARAL. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED INVENTION
Appellant's claimed invention relates to a process wherein a dry liner
is placed into a pipeline, the liner is wetted out with epoxy resin in the
1 Our decision references Appellant's Appeal Brief ("Br.," filed May 30,
2017), and the Examiner's Final Office Action ("Final Act.," mailed Feb.
14, 2017) and Answer ("Ans.," mailed July 12, 2017).
2 Appellant identifies Warren Environmental, Inc. as the real party in
interest. Br. 1.
Appeal2018-005997
Application 14/689,642
pipeline, and then a bladder slowly pressurizes the liner to bed it against the
pipeline wall for curing. Spec. ,r 2.
Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for installing a liner in an underground
pipeline, having an interior surface, comprising the steps of:
placing a repair composite, in a dry, collapsed state into
the pipeline;
wetting out said repair composite by spray applying a resin
to repair composite in said collapsed state within said pipeline;
introducing pressurized fluid into a calibration hose
positioned within said repair composite after said repair
composite has been fully wetted out;
pressing the repair composite against the interior surface
of the pipeline so that the repair composite bonds to the interior
surface of the pipeline; and
removing the calibration hose from the repair composite.
REJECTIONS
Claim 4 is rejected under 35 U.S.C. § 112(d) as of improper
dependent form for failing to further limit the subject matter of the claim
upon which it depends.
Claims 1-17 are rejected under 35 U.S.C. § 103 as unpatentable over
Warren (US 2006/0278290, pub. Dec. 14, 2006), Penza (US 6,311,730 B2,
iss. Nov. 6, 2001), and Cohee (US 5,874,151, iss. Feb. 23, 1999).
Claims 1-17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Warren, Yokoshima (US 5,225,121, pub. July 6, 1993), and Cohee.
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Appeal2018-005997
Application 14/689,642
ANALYSIS
Improper Dependent Form
Appellant does not address the Examiner's rejection of claim 4 under
35 U.S.C. § 112(d). Therefore, we summarily sustain the Examiner's
rejection.
Obviousness over Warren, Penza, and Cohee
In rejecting claims 1 and 14 under 35 U.S.C. § 103 as obvious over
Warren, Penza, and Cohee, the Examiner finds that Warren teaches wetting
out a repair composite in a collapsed state with resin before the repair
composite is placed in the pipeline. Final Act. 6 (citing Warren ,r 27), 9.
The Examiner acknowledges that Warren does not explicitly disclose that
the repair composite is in a dry state when placed into the pipeline and that
the wetting out occurs within the pipeline. Id. at 6, 9. However, the
Examiner finds that Penza teaches a method for installing a liner in an
underground pipeline that involves wetting out the repair composite by
applying a resin to a repair composite where the wetting out may be done at
the time of manufacture, just prior to insertion into the pipe, or following
insertion. Id. at 6-7 (citing Penza, col. 2, 11. 14--18), 9--10.
Warren teaches a method for installing a liner to repair a pipeline.
Warren ,r 1. After preparing a pipeline for repair, a quick setting resin is
sprayed onto the inside wall surface of the pipeline. Id. ,r 24. A flexible
lining hose is prepared and inserted into the pipeline in a collapsed state.
Id. ,r 25. The lining hose includes an outer layer that surrounds an inner
layer. Id. ,r 26. The outer layer is made from a rugged material that will
adhere to the quick setting polymer resin. Id. Typically, the outer layer is
made from a plastic material, such as polyvinyl chloride (PVC),
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Appeal2018-005997
Application 14/689,642
polyurethane, polyethylene (PET), polypropylene, polyester, polyamide, i.e.,
materials relatively impervious to resin. Id. In contrast, the inner layer is a
non-woven fibrous, resin-absorbing material, such as felt. Id. ,r 27. The
resin is applied to the inner layer prior to placing the lining hose in the
pipeline. Id. ,r 28.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art "to perform the step of wetting out the dry repair
composite in the collapsed state as disclosed by Warren following insertion
within said pipeline as taught by Penza because both the outside and the
inside of the pipeline are known wetting out locations that can be used
interchangeably with expected results. Final Act. 7.
However, because Warren's liner includes an inner layer made of a
resin-absorbing material, such as felt, and an outer layer made of a non-
resin-absorbing material, such as plastic, it is unclear why one of ordinary
skill in the art with knowledge of Penza's teachings would be motivated to
modify Warren's repair method by wetting out the liner by spray applying a
resin to the repair composite in a collapsed state within the pipeline. In
particular, the structure of Warren's liner layers suggests that the interior of
the liner would not wet out if resin were sprayed onto the exterior.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103 of independent claims 1 and 14, and their dependent claims.
Obviousness over Warren, Yokoshima, and Cohee
The Examiner's rejection of claims 1-17 under 35 U.S.C. § 103 as
obvious over Warren, Yokoshima, and Cohee suffers the same deficiencies
set forth above with respect to the rejection of the claims as obvious over
Warren, Penza, and Cohee. Therefore, we do not sustain the Examiner's
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Appeal2018-005997
Application 14/689,642
rejection of claims 1-17 under 35 U.S.C. § 103 for the same reasons set
forth above.
DECISION
The Examiner's rejection of claim 4 under 35 U.S.C. § 112(d) is
affirmed.
The Examiner's rejections of claims 1-17 under 35 U.S.C. § 103 are
reversed.
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)(iv).
AFFIRMED-IN-PART
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