Ex Parte Andersson et al

Patent Trial and Appeal Board

Jun 13, 2018

13140434 (P.T.A.B. Jun. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,434 07/08/2011
20792 7590
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
06/13/2018
FIRST NAMED INVENTOR
Thomas Andersson
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.
9868-5 7840
EXAMINER
ORME, PATRICK JAMES
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
06/13/2018 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 THOMAS ANDERSSON
and JOHAN ABRAHAMSSON
Appeal2017-008204
Application 13/140,434 1
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREYR. SNAY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7 and 10-20. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is EPFF ELECTRICAL
PIPE FOR FLUID TRANSPORT AB. Appeal Br. 1.
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Application 13/140,434
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a pipe for liquid with a
design for reducing occurrence of bacteria, microbes, and other cell growth.
Appeal Br. 1. Claim 1, reproduced below with emphases added to certain
key recitations, is illustrative of the claimed subject matter:
1. A thermoplastic pipe for transferring liquids comprising:
a thermoplastic pipe body defining a longitudinal
direction and having an inner surface; and
first and second parts of electrically conducting material
in the form of electrodes, said parts extending in the longitudinal
direction of said thermoplastic pipe body and being arranged on
the inner surface of the thermoplastic pipe body, and said parts
are stripes of electrically conducting plastic material and said
parts are electrically insulated from each other, wherein said
parts of electrically conducting material are configured to be
isolated from a liquid to be transferred in the pipe body.
Appeal Br. 15 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Herbst et al.
("Herbst")
Ibbott
Andersson
Zimmerer
Katayama
us 4,872,959
us 5,234,555
US 6,394,502 B 1
GB471,318
JP 11-114570A
Oct. 10, 1989
Aug. 10, 1993
May 28, 2002
Sept. 1, 1937
Apr. 27, 1999
2 In this Decision, we refer to the Final Office Action dated September 26,
2016 ("Final Act."), the Appeal Brief filed December 15, 2016 ("Appeal
Br."), the Examiner's Answer dated March 13, 2017 ("Ans."), and the Reply
Brief filed May 11, 2017 ("Reply Br.").
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Application 13/140,434
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-7, 11, 13, and 15-17 under 35 U.S.C. § 103 as
unpatentable over Katayama. Final Act. 6.
Rejection 2. Claim 10 under 35 U.S.C. § 103 as unpatentable over
Katayama in view of Herbst. Id. at 10.
Rejection 3. Claims 12 and 14 under 35 U.S.C. § 103 as unpatentable
over Katayama in view of Zimmerer. Id. at 11.
Rejection 4. Claim 16 under 35 U.S.C. § 103 as unpatentable over
Katayama in view of Ibbott. Id. at 12.
Rejection 5. Claims 18-20 under 35 U.S.C. § 103 as unpatentable
over Katayama in view of Andersson. Id. at 13.
The Examiner withdrew the prior rejection under 35 U.S.C. § 112.
Ans. 2.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
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Application 13/140,434
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need only address independent claims 1, 13, and 17 to resolve the
appeal before us. Each of these claims recites the "thermoplastic pipe
body," the "conducting plastic material," and the "[parts/electrodes]
configured to be isolated from a liquid to be transferred in the pipe body"
discussed below.
The Examiner finds that Katayama teaches the "thermoplastic pipe
body" recited in Appellants' claims. Final Act. 6. Appellants argue that the
Katayama pipe is a fume pipe (i.e., a concrete pipe) rather than a
thermoplastic pipe and argue that Katayama lacks a thermoplastic pipe body.
Appeal Br. 4--5. The Examiner first responds by stating that Katayama
teaches the continuous vinyl chloride type thermoplastic that coats the
concrete. Ans. 3. This determination, however, construes "thermoplastic
pipe body" too broadly. We do not agree that a relatively thin thermoplastic
coating on a concrete pipe, as taught by Katayama, would constitute a
"thermoplastic pipe body" as recited by the claims given the context of
Appellants' claims and Specification. See Appeal Br. 3; see also Katayama
,r 8 (the thickness of electrically insulating resin adhered to "is, for example,
0.1 to 1 mm").
The Examiner also finds that Katayama teaches a separately
constructed PVC or resin pipe which is inserted into the concrete pipe.
Ans. 3; see also Katayama ,r 15 ( explaining that such a configuration could
allow for easy installation of Katayama's invention). We consider the
Examiner's positions concerning other recitations below based upon this
embodiment of Katayama.
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Application 13/140,434
The Examiner finds that the claims' recited first part/ electrode is the
resin-covered electrically conductive metal screen and the second
part/electrode is the resin-covered electrically conductive belt. Final Act. 6.
Appellants persuasively argue, however, that given the language of the
claims at issue, the recited parts/electrodes must be (i.e., "are") "electrically
conducting plastic material." Appeal Br. 7 ("Claim 1 clearly recites that said
parts are stripes of electrically conducting plastic material.") The resin
covering the screen and belt are electrically conductive and could therefore
qualify as an "electrically conducting plastic material" as recited by the
claims (Katayama ,r 7), but the interior metal portions of the Katayama
electrodes cannot be (at least independently) the recited parts/electrode
because they are not plastic.
Appellants argue that Katayama does not teach that the
parts/electrodes identified by the Examiner are configured to be isolated
from a liquid to be transferred in the pipe body as recited by the claims.
Appeal Br. 6-9. The Examiner responds by stating that "the first and second
parts have been identified in Katayama as resin-covered metal screen 2 that
does not include the resin layer 3 (Pg5/Pr7) and electrically conductive resin
covered belt 4 does not include the purely resin layer 7 (Pg8/Prl 1)." Ans. 5.
This reading of Katayama, however, does not support the Examiner's
obviousness determination because if the resin is not included as a portion of
the recited "part," the parts no longer "are stripes of electrically conducting
plastic material" as required by the claims. Reply Br. 3 ("the resin layer 3 of
Katayama must be combined with the electrically conductive (metal) plate
or screen 2 to read on the claimed first part of electrically conducting
material").
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Application 13/140,434
The Examiner also states, potentially as an alternative theory, that
Katayama teaches that its electrically conductive belt could be provided on
the outside of the water collecting pipe. Ans. 5 (citing Katayama ,r 12).
This alternative, however, (1) is expressly not relied on by the Examiner (it
is "not relied upon in the rejection" (id.)), (2) would only explain one of the
two necessary electrode configurations required by the claims, and (3) runs
contrary to the Katayama embodiment relied on by the Examiner to reach
the claims' recited "thermoplastic pipe body." With respect to point (3), the
Examiner cannot rely on insertion of a thermoplastic pipe into the concrete
pipe of Katayama to reach a "thermoplastic pipe body" while simultaneously
relying on a different embodiment that puts electrodes outside of the
concrete pipe because the two embodiments reach contrary configurations.
Compare Katayama ,r 15 ( explaining that electrodes can easily be installed if
part of a thermoplastic pipe put within fume pipe) with ,r 12 ( stating it is
possible for electrically conductive belt to be provided on the outside of
pipe).
Because the Examiner has not persuasively explained why it would
have been obvious to follow the teachings of Katayama to reach one
configuration that includes each recitation of independent claim 1, 13, or 17,
we do not sustain the Examiner's rejection of those claims. All remaining
claims depend from claim 1, 13, or 17, and the Examiner's use of secondary
references with regard to some of the dependent claims do not cure the error
addressed above (Final Act. 10-14). Therefore, we also do not sustain
rejection of the dependent claims.
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DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-7 and 10-20.
REVERSED
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