Ex Parte 6,402,201 et al

Patent Trials and Appeals Board

May 7, 2013

90010812 - (D) (P.T.A.B. May. 7, 2013)

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.
90/010,812 01/06/2010 6,402,201 W004 - Reexam 6402201 1748
35979 7590 05/08/2013
Bracewell & Giuliani LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
LEWIS, AARON J
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/08/2013 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 SUBSEA SERVICES INTERNATIONAL, INC.
Patent Owner and Appellant
________________

Appeal 2013-002802
Reexamination Control 90/010,812
Patent 6,402,201 B1
Technology Center 3900

________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Subsea Services International, Inc. (hereinafter “Appellant”), the real
party in interest (App. Br. 2) of Patent 6,402,201 B1 (hereinafter the “'201
patent), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner‟s
decision to reject claims 1-12. Final Office Action mailed Jun. 13, 2011.
We have jurisdiction under 35 U.S.C. §§ 6(b), 134(b) and 306. We
AFFIRM.

THE CLAIMED SUBJECT MATTER
The '201 patent “relates to pipeline joint protection” and more
specifically to an apparatus “for protecting exposed pipe joints on weight
coated pipelines used in offshore applications.” '201 patent 1:10-13.
Independent claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A cover for attachment at positions protecting exposed
pipeline joint sections on weight coated offshore underwater
pipelines comprising:
a pliable cover material for attachment at positions
overlapping adjacent end portions of the weight coat,
completely enclosing the exposed pipe joint section, and sealed
in place forming an annular space around the pipe;
said cover material comprising a sheet of material
wrapped in a cylindrical shape and having overlapping side
edges sealed together to form said annular space;
said annular space between the exposed pipeline and the
cover material filled with a joint filling material of a high
density open celled polyurethane foam, formed by reacting
polyurethane chemicals inside the cover material; and
said cover material including an opening formed in the
sheet for injecting the joint filling material into the annular
space and allow entry of moisture into the polyurethane foam.

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REFERENCES RELIED ON BY THE EXAMINER
Baker US 4,909,669 Mar. 20, 1990
Isherwood GB 1,065,711 Apr. 19, 1967
Meyer WO 82/003438 Oct. 14, 1982

DRESSEL, D. (FOAM ENTERPRISES INC. USA), Internal and
External Protection of Pipes-Proceedings of the 8th International
Conference, pages 259-267, BHRA 1990

THE REJECTIONS ON APPEAL
1. Claims 1, 3, 5, 6, 8 and 10-12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baker, Isherwood and Dressel. Ans. 4.
2. Claims 2, 4, 7 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baker, Isherwood, Dressel and Meyer. Ans. 5.
3. Claims 11 and 12 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Ans. 5.

ANALYSIS
The Examiner incorporates the Final Rejection mailed June 13, 2011
under the “Grounds of Rejection” portion of the Examiner‟s Answer. Ans.
4-6. We will reference this Final Rejection as “Final Rej.” The Examiner
also incorporates the Advisory Action mailed September 26, 2011 under the
“Response to Argument” portion of the Examiner‟s Answer. Ans. 6. We
will reference this Advisory Action as “Adv. Act.”

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The rejection of claims 1, 3, 5, 6, 8 and 10-12
as being unpatentable over Baker, Isherwood and Dressel

Claims 1 and 11
The Examiner relies primarily on Baker for disclosing the limitations
of independent claims 1 and 11, and more particularly for disclosing the
filling of an annular space around a pipe with a high density foam. Final
Rej. 4, Adv. Act. 3 both referencing Baker 4:21-24. Baker generally
teaches the use of a high impact material 16 as shown in the figures but
Baker also specifically discloses that an alternative “high density foam
material may be injected into the annular space formed by the plastic sheet
around the pipe P and allowed to set-up or form in place.” Baker 4:21-24. It
is this alternate material that the Examiner addresses yet the Examiner
acknowledges that Baker “is silent” as to how such material is to be injected
into the annular space. Final Rej. 5. For this, the Examiner relies on
Isherwood for teaching the use of an aperture 7 “for injecting foam material
into the annular space between the cover and the pipe.” Final Rej. 4
referencing Isherwood 2:48-52. More specifically, Isherwood teaches that
“[t]o facilitate introduction of the foamed synthetic resin into the annular
zone between the inner pipe 1 and the outer cover 3 an aperture 7 is the outer
cover 3 is provided.” Isherwood 2:48-52. The Examiner concludes that
it would have been obvious to modify the cover of Baker to
include an aperture therein as taught by Isherwood because it
would have constituted use of a known technique (the inclusion
of an aperture within the cover of Baker) to improve similar
devices (the covers of Baker and Isherwood) in the same way
(i.e. providing an aperture in the cover through which foam
material can be injection) to yield predictable results.
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Final Rej. 5. Appellant does not dispute that Isherwood teaches an aperture
in an outer cover for facilitating the injection of a synthetic foamed resin into
an annular space between the cover and the pipe.
In addition to the above, the Examiner relies on Dressel for teaching
the use of “open cell polyurethane foam” to protect underwater pipeline
joints. Final Rej. 5. Dressel specifically teaches the use of polyurethane
foam systems “designed for joint fill applications which require a high open
cell content” and further that “the resultant joint not act as a cathodic shield”
so as to permit current to pass (italics added). Dressel pg. 264. The
Examiner concludes that “it would have been obvious to modify Baker to
employ a high density foam material that is open celled and made of
polyurethane because it would have provided non shielded cathodic
protection to the exposed metal pipeline joint.” Final Rej. 5. More
specifically, the Examiner finds that “[m]odification of Baker with Dressel
constitutes mere combining of prior art elements according to known
methods to yield predictable results” and further that one skilled in the art
“would have been motivated to combine these teachings in order to provide
[] enhanced corrosion protection.” Final Rej. 6.
Initially, Appellant presents arguments directed to Baker‟s preferred
high impact material 16 rather than Baker‟s alternative high density foam
material relied on by the Examiner. App. Br. 8-11, Reply Br. 10, 11.
Accordingly, Appellant‟s arguments regarding material 16 are not
persuasive, because material 16 does not relate to the Examiner‟s rejection.
Appellant also addresses the reference to Baker in isolation instead of
in combination with Isherwood and Dressel as relied on by the Examiner
and further asserts that “Baker does not disclose or suggest” such limitations
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as an “opening formed in the plastic sheet” or “components injected through
the opening” or an “open celled polyurethane foam” material. App. Br. 10.
The Examiner points out and we agree that “the grounds of rejection [are]
based upon a combination of prior art references, not Baker alone.” Adv.
Act. 7. As indicated supra, the Examiner relies on the teachings of
Isherwood and Dressel for disclosing an aperture in the outer cover and the
injection of open celled polyurethane foam material through that aperture,
respectively. Final Rej. 4-6. Accordingly, Appellant‟s arguments that Baker
fails to disclose these limitations are not persuasive.
Further, in addressing Baker‟s alternative high density foam material,
Appellant contends that there is “no other reference in Baker to injecting a
foam material” except for the passage of Baker referenced above. App. Br.
11. We note that Appellant does not dispute the existence of this disclosure
in Baker, only that there are not more of them. Therefore, Appellant‟s
contention is not persuasive.
Appellant also notes that “[t]here is no mention in Baker of making an
opening or hole” and thus Appellant presupposes that the injected foam is
“introduced in the annular space through the gap that is there until the plastic
sheet or film is wrapped completely around the joint.” App. Br. 12, see also
Reply Br. 13. As indicated supra, Appellant does not address the
Examiner‟s stated reason for the reliance on Isherwood, i.e. for teaching
“forming an aperture (7) in a cover (3) for injecting foam material into the
annular space.” Final Rej. 4. Specifically, the Examiner relies on
Isherwood for teaching how the foam is to be injected into the annular space.
Appellant‟s contention that the foam is introduced otherwise such as through
a gap that exists until the outer covering is wrapped completely around the
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joint is not responsive to the Examiner‟s findings and rejection. Similarly,
Appellant‟s argument that a cover or sheet placed only “partially around the
joint connection” or placement of the sheet “after the foam material has
been injected” is ill-fated. App. Br. 12-13, see also Reply Br. 13-14. The
Examiner‟s rejection relies on injection of the foam through an aperture in
the sheet which forms an annular space as taught by Isherwood. Final Rej.
4, 5. Accordingly, Appellant‟s arguments are not directed to the Examiner‟s
specific findings and rejection and are not persuasive.
Appellant further contends that each of Baker, Isherwood, and Dressel
fails to disclose high density open celled polyurethane foam. App. Br. 10,
14, 15. Appellant has again focused on the disclosure of each individual
reference rather than the rejection as a whole. Specifically, the Examiner
relied on Baker for disclosing the injection of “high density foam material”
around the pipe (Final Rej. 4 referencing Baker 4:21-24) and on Dressel for
disclosing the underwater use of polyurethane having “a high percentage of
open cells” for the absorption of moisture therein (Final Rej. 5, Dressel pg.
264). Appellant has not provided persuasive argument or evidence that the
Examiner‟s combination is in error.
Appellant contends that there is no motivation to combine Baker with
Isherwood and Dressel. App. Br. 16. In making this contention, Appellant
again relies on the premise that Baker‟s sheet is only “partially” wrapped
around the pipe and that the wrapping of the sheet around the pipe “occurs
after the foam material has been introduced.” App. Br. 16. As indicated
earlier, this premise is untenable in view of the Examiner‟s rejection over
Baker, Isherwood and Dressel. Further, Appellant does not address the
reason provided by the Examiner for their combination, i.e., combining
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known techniques according to known methods to yield predictable results.
Final Rej. 5-6. The Supreme Court has provided instruction that “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.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Here, Appellant does not persuade us that the use of an aperture to
inject open celled polyurethane into an annular space around a pipe is
beyond the ability of one skilled in the art in view of the teachings of
Isherwood and Dressel. Appellant‟s contention is not persuasive.
Appellant further contends that “the Examiner takes one small
isolated portion of the Isherwood - namely the use of the aperture 7 to inject
the closed cell foam - and ignores the overall teaching of Isherwood which is
directly contrary to the operation and design of Baker.” App. Br. 17.
Appellant does not dispute the teaching of Isherwood which the Examiner
identifies, but instead contends that the Examiner should have considered
other features/factors of Isherwood as well. Appellant‟s argument is not
persuasive. Obviousness does not require that all of the features of the
secondary reference be bodily incorporated into the primary reference. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant also contends that modifying “Baker to incorporate the
teachings of Dressel would render the pipe protection system unsatisfactory
for the intended purpose of impact protection - namely there would be no
high impact material provided beneath the pipe joint 14 thereby inhibiting
impact protection.” App. Br. 17-18. This contention is not persuasive
because the Examiner is relying on an alternative method disclosed by
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Baker, i.e. the injection of high density foam into the annular space around
the pipe. Final Rej. 4, Baker 4:21-24. Baker discloses this alternative as
another way of providing impact protection to the pipe joint and there is no
indication that this alternate method taught by Baker would fail to provide
this protection. Baker 4:15-37.
Appellant further contends that Appellant‟s claims are directed to
improving “‟pipeline joint protectors‟” and that “Baker is directed to a
different problem.” App. Br. 18-20. Baker‟s title is “Pipeline Joint
Protector” and Baker discusses an improved joint protector. Baker Title,
Abstract. Appellant does not persuade us that Baker fails to also address the
problem of improving “pipeline joint protectors” as asserted. We further
note that Appellant‟s base their contention on the presumption that Baker
“only provides for partial filling of the void before the sleeve is closed.”
App. Br. 19. However, Baker discloses that the fill material can be
configured "to substantially fill the area and should not interrupt the flow of
cathodic protection for the pipe." Baker 2:9-12. The Examiner states that
“[t]here is no disclosure in Baker which sets forth a particular sequence of
steps involved in wrapping the cover material 30 around the pipe joint 14.”
Adv. Act. 14. Accordingly, “Patent Owner's arguments that wrapping of
sheet 30 is done after the foam material has been injected is nothing more
than speculation” and are unpersuasive as to the apparatus claims on appeal.
Adv. Act. 14. We agree with the Examiner and do not find Appellant‟s
contention persuasive.
Appellant also contends that Isherwood is not directed to the same
problem and that Isherwood “teaches away” from the claimed invention.
App. Br. 20-21. There is no indication that the Examiner relied on
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Isherwood for resolving such a problem beyond the teaching of the use of an
aperture in a plastic sheet through which a foam can be injected. Final Rej.
4. Both Baker and Isherwood are directed to pipelines and Appellant does
not persuasively show where the Examiner erred in combining the teachings
of Isherwood with Baker‟s teaching or how such a combination fails to yield
a predictable result. See Adv. Act. 17. Furthermore, a teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant fails to persuade us that Isherwood
criticizes, discredits or otherwise discourages investigation into the claimed
invention.
Appellant also argues that Baker likewise teaches away from the
claimed invention because there are disincentives to completely filling the
void with foam, and there is nothing in Baker that “mentions the possibility
of perforating the cover material to allow seawater to fill any voids in the
sleeve to enhance corrosion protection.” App. Br. 21-22. We note that
Baker adequately suggests filling the annular void as discussed above, and
that enhancing corrosion protection is not a claim limitation but
nevertheless, as indicated previously, Dressel discusses providing open
celled polyurethane because “[t]he open cell structure acts as a passageway
for the electron/ion current via a moisture media (similar to electric current
passage in moist sand) to ensure non shielded cathodic protection.” Dressel
pg. 264. The Examiner finds that it would have been obvious to modify
Baker in view of this teaching “because it would have provided non shielded
cathodic protection to the exposed metal pipeline joint.” Final Rej. 5.
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One difference between independent claim 1 and independent claim
11 is that claim 11 includes the limitation of “a joint filling material
consisting essentially of a high density open celled polyurethane foam.”
Appellant contends that none of the prior art of record discloses this
limitation. App. Br. 43. Appellant focuses on Dressel and how Dressel fails
to disclose an opening or an annular void or the injection of filler through
the opening (App. Br. 44), however, Appellant‟s contention is not persuasive
for the reasons already discussed. Appellant also asserts that Dressel does
not disclose or suggest “using only polyurethane foam” as recited in claim
11. App. Br. 44. Appellant‟s argument regarding using “only” polyurethane
foam is not commensurate in scope with claim 11 which employs the
transitional phrase “consisting essentially of” which lacks the need for the
use of “only” polyurethane foam. More significantly, Appellant does not
dispute that Dressel teaches the use of polyurethane foam, such disclosure
being adequate to satisfy the recited claim language. Hence we are not
persuaded that the Examiner improperly employed Dressel when rejecting
claim 11. Appellant‟s contention is not persuasive.

Claims 3 and 5
Appellant asserts that these claims, which depend from claim 1, “are
also not obvious over Baker in view of Isherwood and Dressel” and
therefore are allowable “for at least the same reasons.” App. Br. 23. As
indicated supra, we are not persuaded by Appellant‟s contentions with
respect to claim 1.

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Claims 6 and 12
Appellant repeats many of the same rejections as were presented
supra with respect to claims 1 and 11. App. Br. 23-30, 45-46. We do not
find them persuasive for similar reasons.

Claims 8 and 10
Appellant asserts these claims, which depend from claim 6, “are also
not obvious over Baker in view of Isherwood and Dressel” and therefore are
allowable “for at least the same reasons.” App. Br. 31. As indicated supra,
we are not persuaded by Appellant‟s previous contentions with respect to
claim 6.

Experimental Evidence
Appellant asserts that Baker does not “enable the claimed invention”
and as such cannot “be used as a basis for a rejection based upon
anticipation or obviousness.” App. Br. 31, see also Reply Br. 15. The
Examiner argues that as per MPEP 706.02(j), the stated rejection under
Baker, Isherwood and Dressel is “proper and valid.” Adv. Act. 27-28. We
do not find the Appellant's arguments or the evidence persuasive because
our focus here is on the rejections of Appellant‟s claims, not on whether
Baker alone enables the claimed invention.
Appellant presents experimental evidence “that demonstrate that
Baker in view of Isherwood and Dressel does not enable the invention of
claims 1, 3, 5, 6, 8, 10, 11 and 12.” App. Br. 31, see also Reply Br. 15.
Such experimental evidence consists of a series of tests conducted by
Appellant and witnessed by Mr. Paul Laws of Det Norske Veritas (U.S.A.),
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Inc. and such evidence has previously been made of record. App. Br. 31-36.
Such tests compare “the method of the present invention of the patent” with
“the method of Baker involving partial filling of the void space” and a
modification of Baker‟s method “involving complete filling of the void
space.” App. Br. 31.
We note that none of the claims at issue are method claims. The
Examiner finds that “the overall experimental design and protocol is based
upon a flawed premise that Baker is filled with foam and then the
overlapping ends of the sleeve are sealed” and that the experiments “did not
include the placement of an aperture in the plastic sheet (30) of Baker as
modified by Isherwood.”
1
Adv. Act. 29, 30. As a consequence, the
Examiner finds that “the experimental protocol does not address the
combined teachings of the prior art that is being used to reject the claims.”
Adv. Act. 30. Appellant does not dispute that the submitted evidence only
addresses Baker and not Baker as modified by Isherwood and Dressel. Final
Rej. 5. Accordingly, the evidence is not persuasive as to non-enablement of
the suggested combination of Baker, Isherwood and Dressel, and thus, we
agree with the Examiner's conclusion that the experiments fail to provide
“any factual evidence that is persuasive that the prior art rejection of Baker
as modified by Isherwood and Dressel is improper.” Adv. Act. 32.

1
Appellant also contends that the submitted evidence shows that “the
structure of Baker is incapable of retaining a high density foam material
injected therein, even assuming that it was injected through [Isherwood‟s]
aperture 7 in [Baker‟s] sheet 30.” Reply Br. 15. Appellant‟s reliance on an
assumption is not persuasive.
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Commercial Success
Appellant presents a Declaration of William H. Gowan and a separate
Declaration of Dennis Lee (both previously made of record) to the effect that
claims 1, 3, 5, 6, 8, 10, 11 and 12 would not have been obvious due to
commercial success. App. Br. 36. Both Declarations reference Exhibit A
which is a spreadsheet of the various projects over a 14 year period that
employed the claimed product. App. Br. 37. The Gowan Declaration also
identifies Exhibits B-O but only discusses Exhibits A-L. Both declarants
contend that “[t]he reason for the commercial success of the [claimed]
Product is the method of installation and the final end product of the
[claimed] product -which are the same as the claimed invention of U.S.
Patent Nos. 5,900,195 and 6,401,201.” App. Br. 37, Gowan para. 10, Lee
para. 8. The Examiner addresses each Declaration separately.

Gowan Declaration
The Examiner finds that the Gowan Declaration is insufficient to rebut
the stated obvious rejection because of Gowan‟s reference to the reason of
the success being the “method of installation” and also its reference to U.S.
5,900,195. Adv. Act. 32-33. Paragraphs 9 and 10 of this Declaration
identify Exhibit A as being a summary of projects awarded Appellant and
provides the date, owner, contractor, scope of work, region and pipeline
assembly of each project. Exhibit A provides only general information
regarding each project awarded Appellant such as the product being “foam”
and the pipeline assembly being “S-LAY”. There is also no itemization of
any monies attributable solely to Appellant‟s invention as claimed versus
monies attributable to other factors that go into winning a construction bid.
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Thus, we agree with the Examiner's finding that “no nexus has been drawn
between the claimed invention and the allegations of commercial success.”
Adv. Act. 33. With respect to Exhibits B-K, the Examiner finds that they
“were found to contain statements from customers who were expressing
satisfaction with the manner in which a particular job was handled.” Adv.
Act. 34. We agree with the Examiner's assessment of these exhibits. These
Exhibits also lack any showing of a nexus to the claimed invention. With
respect to Exhibit L, the Examiner finds that “there is no evidence that the
product that has been sold corresponds to the claimed invention” and more
specifically that this Exhibit is silent as to the particular type of polyurethane
foam required (i.e. high density, open celled). Adv. Act. 34-36. With
respect to each Exhibit above, Appellant does not dispute the Examiner‟s
findings or show where the Examiner‟s findings are incorrect. Indeed, as
noted above, we agree with the Examiner that Appellant has failed to
establish a nexus between the claimed invention and the allegations of
commercial success.

Lee Declaration
The Examiner again refers to that part of Lee‟s Declaration explaining
that the reason for the commercial success was the method of installation
and also U.S. Patent No. 5,900,195. Adv. Act. 48. The Examiner reiterates
that the claims presently at issue “are apparatus claims” and that the
Appellant “bears the burden of proof of establishing a nexus between the
claimed invention and evidence of commercial success.” Adv. Act. 49.
The Examiner also specifically addresses the spreadsheet depicted in Exhibit
A stating that the “Declarant provided no explanation of the specific
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relevance of these revenue figures to specific aspects of the claimed
invention of the '201 patent that contributed to the alleged commercial
success.” Adv. Act. 50. Appellant does not dispute the Examiners findings
or show where they are incorrect. We agree with the Examiner that
Appellant has failed to establish a nexus between the claimed invention and
the allegations of commercial success.
In view of the record presented, we are not persuaded by Appellant‟s
contentions and we sustain the Examiner‟s rejection of claims 1, 3, 5, 6, 8
and 10-12 as being obvious over Baker, Isherwood and Dressel.

The rejection of claims 2, 4, 7 and 9
as being unpatentable over Baker, Isherwood, Dressel and Meyer
Dependent claims 2 and 7 recite that the cover is formed from
polyethylene while claims 4 and 9 that depend from claims 2 and 7
respectively, further recite that the cover material is about 0.02 to 0.5 inches
in thickness. The Examiner further relies on the teachings of Meyer for
disclosing a subsea pipe line section with “a plastic cover material made of
polyethylene” that can withstand “severe mechanical stresses caused by
impact, shock, tension and compression.” Final Rej. 9-10 referencing Meyer
3:12-16. Appellant reiterates arguments previously discussed regarding
independent claims 1 and 6 (App. Br. 39-46) but Appellant does not dispute
that Meyer discloses a cover made of polyethylene.
Appellant also contends that Meyer fails to teach the thickness of the
cover material as recited in Claims 4 and 9 (App. Br. 41) but Appellant does
not address the Examiner‟s findings on this point (Final Act. 10, Adv. Act.
37, Meyer 3:29-31). Specifically, Meyer discloses a “thickness of the outer
plastic tube 4 will depend on the site conditions, 3-20 mm being a typical
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range.” Meyer 3:29-31. This disclosed range is converted by the Examiner
as equating to “about 0.1181 inches and 0.7874 inches” and that this
“includes thicknesses that fall within the claimed range of 0.02 inches to
about 0.5 inches in thickness.” Final Rej. 10. We agree. Appellant also
contends that incorporating Meyer‟s system into Baker “would essentially
require replacing the pipe protection system of Meyer for the pipe protection
system of Baker” and that the two “are completely different in design and
operation.” App. Br. 42. We note that the Examiner is not substituting or
replacing one for the other but instead the Examiner finds that it would have
been obvious “to make [Baker‟s] protective barrier (30) from polyethylene”
for the physical protection reasons expressed in Meyer. Final Rej. 10.
In view of the record presented, we sustain the Examiner‟s rejection
of claims 2, 4, 7 and 9 as being obvious over Baker, Isherwood, Dressel and
Meyer.

The rejection of claims 11 and 12
as failing to comply with the written description requirement
Independent claims 11 and 12 were added by amendment. App. Br. 2.
The Examiner identifies the “consisting essentially of” transitional phrase in
each of these claims and finds that these claims contain “subject matter
which was not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor(s), at the time the
application was filed, had possession of the claimed invention.” Final Rej.
10-11. The Examiner‟s basis for this finding “is because the specification as
originally filed contains an alternate filling material (not high density open
celled polyurethane foam) as set forth in col. 4, lines 52-57” of Appellant‟s
'201 patent. Final Rej. 11. In essence, because Appellant‟s '201 patent
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discloses the use of an alternate filling material, “the claims of the '201
patent cannot be limited (using closed ended claim terminology) to a high
density open celled polyurethane foam as recited in each of new claims 11
and 12.” Final Rej. 11.
To clarify, the phrase “consisting of” is a “closed” transition phrase
that is “understood to exclude any elements, steps, or ingredients not
specified in the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239,
1244–45 (Fed. Cir. 2001). In contrast, the phrase “consisting essentially of”
indicates that “the invention necessarily includes the listed ingredients,” but
also that the claim is “open to unlisted ingredients that do not materially
affect the basic and novel properties of the invention.” PPG Indus. v.
Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998). “Thus, a
„consisting essentially of‟ claim is generally broader than a „consisting of‟
claim.” Yoon Ja Kim v. The Earthgrains Company, 451 Fed. Appx. 922, 925
(Fed. Cir. 2011).
There is no dispute that the '201 patent discusses the use of high
density open celled polyurethane foam among other materials. '201 patent
4:52-54. What we are not persuaded of, however, is the Examiner‟s
underlying assertion that just because alternate materials are disclosed by
Appellant, Appellant is now precluded from selecting one such disclosed
material and making a claim that consists essentially of this one material.
See App. Br. 47. To bolster Appellant‟s assertion that the Applicant was in
possession of this limitation, Appellant identifies where the '201 patent
clearly discloses the claimed foam material and further indicates where it is
taught that “[n]o additional filler materials are needed to be used in
conjunction with the polyurethane foam.” App. Br. 47 referencing '201
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patent 5:18-26. Accordingly, we agree with Appellant that “there is no
doubt that the specification of the patent indicates that the Applicant
possessed the invention recited in claims 11 and 12.” App. Br. 47.
We reverse the Examiner‟s rejection of claims 11 and 12 as failing to
comply with the written description requirement.

DECISION
The Examiner‟s rejections of claims 1-12 as being obvious over the
cited art are affirmed.
The Examiner‟s rejection of claims 11 and 12 as failing to comply
with the written description requirement is reversed.

No time period for taking action in connection with this appeal may
be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2010).

AFFIRMED
Patent Owner
Bracewell & Giuliani LLP
P.O. Box 61389
Houston TX 77208-1389

Third Party Requester

Barlow, Josephs & Holmes, LTD.
101 Dyer Street
5
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Floor
Providence, RI 02903