Ex Parte Becks et al

Patent Trial and Appeal Board

Jul 26, 2017

11922471 (P.T.A.B. Jul. 26, 2017)

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.
11/922,471 12/18/2007 Ralf Becks 4404.79623 7333
24978 7590 07/28/2017
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
ptomail @ gbclaw. net
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF BECKS AND JOACHIM DEHARDE
Appeal 2016-001688
Application 11/922,471
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action
rejecting claims 1—7 and 16—22. Appeal Br. 4. Claims 8—15 and 23—28 are
withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-001688
Application 11/922,471
CLAIMED SUBJECT MATTER
Appellants’ disclosure relates to a double-walled fuel pipeline that is
used in aircraft fuel systems and is easy to manufacture. Spec. 4:12—5:13.
Claims 1 and 16 are independent. Claim 1 is reproduced below.
1. In a fuel system of an aircraft, the improvement
comprising a fuel pipeline having:
an inner pipe for conveying fuel in the fuel system,
and
an outer pipe formed surrounding the inner pipe,
wherein the inner pipe comprises at least one of a
metal material and a synthetic material at least in curved
portions of the pipeline,
wherein the outer pipe comprises a fiber-reinforced
thermosetting synthetic material, and
wherein the outer pipe is spaced from the inner
pipe so that a gap or cavity is formed between the inner pipe
and the outer pipe to provide for ventilation and for drainage of
condensation along the pipeline outside the inner pipe.
REJECTION
Claims 1—7 and 16—22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Obeshaw (US 6,821,638 B2, iss. Nov. 23, 2004).
ANALYSIS
The Examiner found that Obeshaw discloses a pipeline, as claimed, to
include inner pipe 4 of metal or synthetic metal material and outer pipe 8 of
a fiber-reinforced thermosetting synthetic material spaced from inner pipe 4
via spacer 6. Final Act. 2—3. The Examiner determined that it would have
been obvious to use such pipelines in aircraft fuel systems because Obeshaw
discloses their use in aerospace vehicles, and the pipelines would increase
strength and fuel efficiency by providing reduced weight. Id. at 3; Ans. 5.
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Appeal 2016-001688
Application 11/922,471
Appellants argue claims 1—7 and 16—22 as a group. Appeal Br. 9—17.
We select claim 1 as the representative claim, with claims 2—7 and 16—22
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue that the limitation of “an inner pipe for conveying
fuel in the fuel system” defines physical attributes and structure of the inner
pipe and the outer pipe, e.g., that they are impervious to leakage, rather than
a mere intended use as the Examiner interpreted claim 1. Appeal Br. 10—11;
Reply Br. 4—6. Appellants also argue that Obeshaw lacks the structure of a
pipeline that conveys fuel because it includes an initiator 14, which forms
holes or cutouts in walls of the inner pipe and the outer pipe, and Obeshaw
would be unsuited for its intended purpose if the initiators were removed.
Appeal Br. 12; Reply Br. 6—7. Appellants further argue that the holes would
allow fuel to leak from the pipeline of Obeshaw. Appeal Br. 13.
We agree with Appellants that claim one’s recital of “an inner pipe for
conveying fuel in the fuel system” is a structural and functional limitation.
An ordinary meaning of “pipe” includes “a long tube or hollow body for
conducting a liquid, gas, or finely divided solid or for structural purposes.”
Merriam-Webster, http://www.merriam-webster.com/dictionary/pipe (last
visited July 19, 2017). This meaning is consistent with the Specification,
which discloses inner pipe 6 as a long tube or hollow body of substantially
circular cross-sectional shape and made of metal or synthetic material that
transports fuel, preferably without leakage. Spec. 10:25—11:21, Figs. 2, 3.
The materials used to make inner pipe 6 include aluminum, stainless steel, or
titanium to provide high mechanical rigidity and, in the case of titanium, a
lower weight. Id. at 6:7—11. They also include a fire-resistant carbon-fiber-
reinforced epoxy resin. Id. at 6:31—7:7, 10:25—11:9.
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Appeal 2016-001688
Application 11/922,471
We also agree with the Examiner that the limitation of “an inner pipe
for conveying fuel in the fuel system” is a statement of intended use insofar
as the particular liquid conveyed by the inner pipe can be characterized as a
“fuel” or an “aircraft fuel” or the pipeline is part of an “aircraft fuel system.”
Appellant identifies no structure or function that is imparted to the claims by
this use other than being leakage free. Thus, a device that otherwise meets
the requirements of claim 1, e.g., an inner pipe surrounded by an outer pipe
of the claimed materials, satisfies this limitation if it can convey a liquid
such as a fuel. Claim 1 requires no more. Therefore, even if we give some
patentable weight to the limitation “for conveying fuel in the fuel system,”
as Appellants urge us to do, we agree with the Examiner that Obeshaw
discloses structure that is capable of satisfying this limitation.
It is well-settled that a patent applicant may recite features of a device
either structurally or functionally. See In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). However, if the PTO has a reason to believe that a claimed
functional feature is an inherent characteristic of the prior art, it can make
the applicant prove that the subject matter disclosed in the prior art does not
possess the claimed functional characteristic. Id. (quoting In re Swinehart,
439 F.2d 210, 2112 (CCPA 1971).
We find that the Examiner had a sound basis for finding that Obeshaw
discloses structure (inner section 4 in Figure 1) that is capable of conveying
fuel in an aircraft fuel system, as claimed. Ans. 4. Obeshaw discloses that
inner pipe 4 may comprises a metal such as aluminum and titanium, or a
reinforced thermoset or thermoplastic resin matrix material or prepeg with
various reinforcements. Obeshaw, 4:6—6:53. The Specification discloses
similar materials for use in Appellant’s inner pipe 6. See Spec. 7:25—8:22.
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Appeal 2016-001688
Application 11/922,471
Obeshaw discloses that inner section 4 may be formed by wrapping
continuous sheets around mandrel 20 in a tube rolling process known as roll
wrapping and illustrated as forming continuous rolls or tubes in Figures 5,7,
8, and 20-24. See id. at 12:17—25. Only if optional initiators are used is the
continuous layer of an inner portion disrupted by gaps or discontinuity. Id.
at 11:28-42, Fig. 15. In this regard, Obeshaw discloses that the structural
members may be made as tubes, beams, columns, cylinders for use in many
industries and applications including bikes, sail masts, golf club shafts, and
racquets. We find that skilled artisans would understand these elements to
be continuous tubes that are impervious to liquids and therefore are capable
of conveying liquids such as fuels without leakage. Id. at 18:26—39.
We are not persuaded by Appellants’ arguments that Obeshaw is not
capable of such claimed uses. Appellants’ principal argument in this regard
is that Obeshaw’s structural members are designed to crush or rupture and
include a rupture “initiator” that would prevent Obeshaw’s structure from
being able to convey fuel or withstand aircraft crashes. Appeal Br. 10—12.
Appellants also argue that removing these holes would defeat the purpose of
Obeshaw and render it unsatisfactory of its intended purpose. Id. at 12.
First, Obeshaw discloses that inclusion of initiators in the structural
elements is optional. Obeshaw, 15:45—46 (“At least one initiator 14 may be
included in the present invention by any suitable method”); 10:4—8 (same).
If an initiator is included in a structural element, it may be included in inner
portion 4, intermediate portion 6, and/or outer portion 8. Id. at 15:47—48.
Furthermore, the initiator may comprise a gap or discontinuity; however, it
also may comprise a fold or irregularity that concentrates stresses and use
rubber bands, release films, and backing papers. Id. at 11:4-42.
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Appeal 2016-001688
Application 11/922,471
If initiators are used, they are not necessarily placed in inner tube 4.
Initiators can be placed in any of the inner portion 4, intermediate portion 6
and/or outer portion 8 when they are used. Id. at 10:5—8, 15:53—55. Even if
an initiator is added to inner tube 4, it would not necessarily create a gap that
leaks because Obeshaw teaches that initiators may take many forms and may
include folds, rubber bands, release films, backing papers, and other means
to concentrate stresses in a structural member. Id. at 11:4—32. We find that
these initiators would not impact negatively on the fuel-conveying ability of
the structural member. Applications such as bike tubes, sail masts, golf club
shafts, and racquets include tubular structures that do not include holes or
gaps that disrupt the continuous surface of the tube or its ability to repel or
contain liquid even if they include initiators. Even if holes 14 are used, they
may be incorporated only in outer portion 8, and they do not pass through
outer portion 8 or inner portion 4. Id. at 10:4—12, 11:27-42, Figs. 12—15.
Appellants also argue that Obeshaw is non-analogous art. Appellants
argue that Obeshaw is in a different field of endeavor (structural members)
than pipelines for aircraft fuel systems of the invention. Appeal Br. 14—15;
Reply Br. 8—9. Appellants further argue that Obeshaw is not reasonably
pertinent to the problem that the inventors confronted of providing for safe
transportation of fuel in a fuel system. Appeal Br. 15; Reply Br. 9.
First, we are not persuaded by Appellants’ arguments that Obeshaw is
in a different or unrelated field of endeavor, which Appellants disclose as a
pipeline generally, and a pipeline for aircraft fuel systems in particular.
Spec. 1:8—10. Obeshaw discloses tubes, beams, columns, and cylinders for
use in aerospace industries and airplane components as we discussed, in part,
above. See Obeshaw, 18:26—39.
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Appeal 2016-001688
Application 11/922,471
Second, we agree with the Examiner that Obeshaw’s teachings are
reasonably pertinent to the problem that Appellants confronted and tried to
solve. Appellants describe how constraints in aircraft assembly and layout
require fuel pipelines to be curved, which is difficult to perform with prior
art titanium or aluminum double-walled pipes. Spec. 3:6—32. This problem
results in shorter, curved pipeline portions that must be joined with flange
joints, which add cost, weight, and leak potential. Id. at 4:1—10. Appellants
sought to develop pipelines that are easier to manufacture and maintain, and
that have fewer flange joints and less weight. Id. at 4:12—5:13.
We agree with the Examiner that a skilled artisan would consider the
teachings of Obeshaw reasonably pertinent to resolve Appellants’ problems.
First, Obeshaw recommends itself to persons desiring to manufacture tubes,
beams, columns, cylinders, and the like that are both lightweight and strong.
Obeshaw, 18:26—32. The tubes/pipes replace structural metals and provide
increased strength. Id. at 1:35—67. Obeshaw discloses that the applications
include aerospace industries and airplane components as discussed above.
Id. at 18:32—39. Obeshaw further discloses the ease of manufacturing such
tubes in many forms and manners of synthetic materials, and of forming the
double-walled tubes in many curved shapes, sizes, and lengths, as desired.
They even include additional structures like brackets, fasteners, couplers,
and the like added thereto. Id. at 16:15—17:50, Figs. 18—23. Obeshaw thus
provides numerous teachings, examples, and configurations of structural
elements in the form of pipes that address the problems faced by Appellants.
We also determine that Obeshaw’s teachings provide motivation for
using the structural members as strong, lightweight, readily-configurable
double-walled pipelines in aircraft fuel systems. See Ans. 4—5; Final Act. 3.
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Appeal 2016-001688
Application 11/922,471
Moreover, even were we persuaded that a skilled artisan would not
have been motivated to use Obeshaw’s double-walled, spaced, synthetic
pipelines in aerospace applications such as fuel systems, which we are not,
nonetheless, we would find the claimed fuel pipeline unpatentable for yet
another reason. It is well-settled that the discovery of a new use for a prior
art or known apparatus or composition does not make claims to that known
device or composition patentable. E.g., Schreiber, 128 F.3d at 1477; In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).
Finally, Appellants argue that a skilled artisan would not have been
motivated to use a crushable tubular member perforated with holes to ensure
rupture in a pipeline of an aircraft fuel system. Appeal Br. 15. Appellants
also argue that a skilled artisan would not have installed a structural member
of Obeshaw in aircraft fuel systems because the structural member is fragile
and designed to break easily or be crushed under the force of an external
load and therefore is unsuited to an aircraft fuel system. Reply Br. 10. Such
arguments are not persuasive for the reasons discussed above including
Obeshaw’s disclosure that its double-walled tubes provide good strength and
light weight without perforations for aerospace applications.
Thus, we sustain the rejection of claims 1—7 and 16—22.
DECISION
We affirm the rejection of claims 1—7 and 16—22.
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
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