Damian Daykin

Patent Trials and Appeals Board

Jul 24, 2019

14245223 - (D) (P.T.A.B. Jul. 24, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/245,223 04/04/2014 Damian Daykin SW-INF1053 3048
28268 7590 07/24/2019
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
EXAMINER
THOMAS, BINU
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
07/24/2019 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
____________________

Appeal 2018-007592
Application 14/245,223
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, GRACE KARAFFA OBERMANN, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3–17. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Appellant is the Applicant, Pipeline Induction Heat Limited, which,
according to the Appeal Brief, is also the real party in interest. Appeal Br. 3.
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Application 14/245,223

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STATEMENT OF THE CASE2
Appellant describes the invention as relating to “a machine for
applying a coating to a pipeline field joint and has particular . . . relevance to
such pipelines which are used in a sub-sea environment.” Spec. ¶ 2. The
Specification explains that the present invention desires to alleviate
overspray where powder coating a pipe contaminates the pipe-coating
working environment. Id. ¶¶ 8–10. The Specification describes use of a
dust extraction hood to control overspray. Id. ¶ 13; see also Appeal Br. 5–7
(providing invention background). Claim 1, reproduced below with
emphases added to certain key recitations, is illustrative of the claimed
subject matter:
1. A pipeline field joint coating applicator machine
comprising:
a first frame arranged to be mounted on a pipeline and
which first frame carries an induction heating coil encircling the
pipeline for heating field joints of the pipeline on which the first
frame is mounted;
a second frame arranged to be mounted on the pipeline and
rotatable thereabout, which second frame carries a pipeline field
joint coating applicator and which second frame is arranged
axially adjacent the first frame;
a dust extraction hood mounted on the second frame and
arranged to surround the coating applicator, which dust
extraction hood has two lateral sides, in which lateral sides
respective holes are formed through which holes the pipeline
may pass;
the dust extraction hood being coupled to a vacuum
source and a filter such that air may be drawn into the dust
extraction hood where the field joint coating applicators are

2 In this Decision, we refer to the Final Office Action dated December 5,
2016 (“Final Act.”), the Appeal Brief filed May 26, 2017 (“Appeal Br.”),
and the Examiner’s Answer dated May 1, 2018 (“Ans.”).
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located via one or both of the holes in the lateral sides of the dust
extraction hood under action of the vacuum source and air so
drawn into the dust extraction hood which is then contaminated
with coating material from the coating applicator is filtered from
the coating material via the filter, and
wherein the coating applicator machine includes a
variable diameter mechanism capable of varying the
diameter of at least one of the holes to control the rate of air
ingress from the outside atmosphere into the dust extraction
hood.
Appeal Br. 12 (Claims App’x.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Probst et al.
(“Probst”)
Cruickshank
Dyla
Fischli et al.
(“Fischli”)
Hihn et al.
(“Hihn”)
Sela et al.
(“Sela”)
Daykin et al.
(“Daykin”)
US 3,439,649

US 4,800,104
US 5,316,588
US 5,690,995

US 6,800,138 B2

US 7,442,256 B2

US 2011/0159192 A1
Apr. 22, 1969

Jan. 24, 1989
May 31, 1994
Nov. 25, 1997

Oct. 5, 2004

Oct. 28, 2008

June 30, 2011

REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
Rejection 1. Claims 1, 3–8, 11, and 13–16 under 35 U.S.C. § 103 as
unpatentable over Daykin, Probst, Fischli, and Cruickshank. Final Act. 4.
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Rejection 2. Claim 9 under 35 U.S.C. § 103 as unpatentable over
Daykin, Probst, Fischli, Cruickshank, and Hihn. Id. at 8.
Rejection 3. Claim 10 under 35 U.S.C. § 103 as unpatentable over
Daykin, Probst, Fischli, Cruickshank, and Dyla. Id. at 9.
Rejection 4. Claim 12 under 35 U.S.C. § 103 as unpatentable over
Daykin, Probst, Fischli, Cruickshank, and Sela. Id.
Rejection 5. Claim 17 under 35 U.S.C. § 103 as unpatentable over
Daykin, Probst, and Fischli. Id. at 10.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues each rejection and claim in a group with claim 1.
See Appeal Br. 7 (arguing independent claims 1 and 16 as a group), 11
(arguing independent claims 1 and 17 as a group). Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our
discussion to claim 1, and all other claims on appeal stand or fall together
with claim 1.
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The Examiner rejects claim 1 as obvious over Daykin, Probst, Fischli,
and Cruickshank. Final Act. 4. The Examiner finds that Daykin teaches an
apparatus for coating a pipe having a stator and rotor frame. Id. (citing
Daykin). The Examiner finds that Probst teaches a dust extraction hood that
surrounds a pipe. Id. at 4–5 (citing Daykin). The Examiner finds that
Fischli teaches use of a filter system inline between a spray booth and
exhaust blower. Id. at 6 (citing Fischli). The Examiner finds that
Cruickshank teaches an iris type shutter with tips that adjust to provide a
partial seal around a tubular member. Id. at 6–7. The Examiner sets forth
rationales as to why a person of skill in the art would have combined the
teachings of each of these four references. Id. at 4–7.
Appellant quotes a portion of the Examiner’s rejection and then states
“Applicant interprets the Examiner’s definition of Probst’s hood as
housing 44 terminating in end walls 42, but cowlings 50 are part of lateral
sides 42 which means that they are part of housing 44 and therefore
cowlings 50 are part of the claimed hood.” Appeal Br. 7–8. This portion of
the Appeal Brief fails to identify harmful error because the argument does
not identify a distinction between claim 1 and the prior art as applied. To
the extent Appellant argues that the Examiner’s rejection is inaccurate or
confusing, the Examiner clarifies the rejection in the Answer. Ans. 10–11.
Appellant argues that a person of skill in the art would not combine
the iris-type shutter of Cruickshank with the hood of Probst because
Cruickshank’s iris would prevent the through flow desired by Probst.
Appeal Br. 7–10. The Examiner, however, determines that it would have
been obvious to add Cruickshank’s iris-type shutter “to the exterior
wall/hole of the cowlings of Probst.” Ans. 15. Appellant’s arguments
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concerning Probst desiring flow between its main housing and its
cowling 50, therefore, do not squarely address the Examiner’s rejection;
placement of an iris-type shutter at the exterior wall/hole of the cowlings
would not block flow as argued by Appellant. See Probst Fig. 3. Also, to
the extent a person of skill in the art following the teachings of Probst would
have desired air flow through the iris, the Examiner correctly explains that
the Cruickshank iris-type shutter can permit such flow because Cruickshank
provides a partial seal. Ans. 11–15; Cruickshank 5:10:57–60.
Contrary to Appellant’s general arguments regarding the Examiner
combining the teachings of Probst and Cruickshank (Appeal Br. 8–11), the
Examiner’s rationale for combining Probst and Cruickshank is supported by
a preponderance of the evidence. The Examiner finds that Probst teaches
preventing particles from escaping the openings at the ends of the housings
(Ans. 17 (citing Probst 5:56–58) and finds that Cruickshank teaches a shutter
which provides a partial seal for limiting cross contamination between areas
(Ans. 17 (citing Cruickshank 10:44–46)). The Examiner’s findings support
that a person of skill in the art would have recognized that the Cruickshank
iris-type shutter could function to achieve Probst’s goal in preventing
particles from escaping the ends of the housings. Ans. 16–17; see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill”).
Appellant also argues that none of the cited references teach that “air
may be drawn into the dust extraction hood where the field joint coating
applicators are located” as specified in claim 1. Appeal Br. 11 (emphasis
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removed). The Examiner, however, finds that Prost depicts an air tube that
supplies air into the surface of the housing and finds that air enters the
cowling. Ans. 19. The Examiner finds that Probst would, therefore, draw
air into the housing where the field joint coating applicators would have
been located. Id. Appellant does not respond to the Examiner’s findings in
the Answer or otherwise persuasively rebut the Examiner’s reasoning in this
regard.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 1 and 3–17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED