Ex Parte Carns et al

Board of Patent Appeals and Interferences

Jun 27, 2012

11867557 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES A. CARNS, THERON L. CUTLER,
and MARK A. SHELLY
____________

Appeal 2011-004258
Application 11/867,557
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James A. Carns et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1 and 4-20. Appellants
cancelled claims 2 and 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-004258
Application 11/867,557

2
The Invention
The claims on appeal relate to “shrouded coupling assemblies for
coupling together conduits for transfer of fluids.” Spec., para. [0001].
Claims 1, 8 and 14 are independent claims and claim 1, reproduced
below, with emphasis added, is illustrative of the subject matter on appeal.
1. A shrouded adapter assembly for
coupling together a first conduit and a second
conduit, the first conduit comprising an inner wall
conduit and an outer wall conduit with a conduit
annular space between the inner wall conduit and
the outer wall conduit, the shrouded adapter
assembly comprising:
a first adapter body comprising a first inner
cylindrical portion nested within a first outer
cylindrical portion with a first annular space
between the first inner cylindrical portion and the
first outer cylindrical portion, a first end of the first
inner cylindrical portion configured to receive an
end of the inner wall conduit and a first end of the
first outer cylindrical portion configured to receive
an end of the outer wall conduit of the shrouded
conduit;
a second adapter body comprising a second
inner cylindrical portion nested within a second
outer cylindrical portion with a second annular
space between the second inner cylindrical portion
and the second outer cylindrical portion, a first end
of the second inner cylindrical portion configured
to receive an end of the second conduit, the second
conduit being a single-wall conduit, and wherein
the second inner cylindrical portion is connected
to the second outer cylindrical portion by a wall;
and
a clamp operatively engaging and clamping
a second end of the first adapter body to a second
end of the second adapter body;
Appeal 2011-004258
Application 11/867,557

3
wherein the first adapter body and the
second adapter body are each configured to
provide fluid communication between the second
conduit and the inner wall conduit and to isolate
the conduit annular space from the second conduit
and from the inner wall conduit.

The Rejections
Claims 1, 4-10, and 12-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hoang (US 6,971,682 B2, iss. Dec. 6, 2005) and
Takahashi (US 4,157,194, iss. Jun. 5, 1979).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoang, Takahashi and Nee (US 5,312,137, iss. May 17, 1994).

OPINION
Obviousness based on Hoang and Takahashi
Claims 1, 4-9, and 12-20
Appellants argue claims 1, 4-9 and 12-20 as a group. We select
independent claim 1 as the representative claim and claims 4-9 and 12-20
stand or fall with claim 1. See App. Br. 10-13; see also 37 C.F.R. §
41.37(c)(1)(vii) (2011).
The Examiner finds that Hoang substantially discloses the subject
matter of claim 1, except that “Hoang ‘682 does not disclose the second
inner cylindrical portion is connected to the second outer cylindrical portion
by a wall.” Ans. 6. To remedy the deficiency of Hoang, the Examiner turns
to Takahashi for its teaching of
a wall (abstract, “tubular part having the same
inside diameter as the inner tubular member of the
multi-walled pipe and a flange provided at one end
Appeal 2011-004258
Application 11/867,557

4
of the tubular part concentrically therewith and
having the same outside diameter as the multi-
walled pipe,” Fig. 1 #22a or Fig. 2 #22b) as a
conventional feature in a transition between a
single-wall conduit (e.g., 21a or 21b) and a multi-
wall conduit (e.g., 10a or 10b).
Id.
Appellants contend that Hoang fails to teach “a shrouded adapter
assembly for coupling together a first conduit and a second conduit, the first
conduit comprising an inner wall conduit and an outer wall conduit with a
conduit annular space between the inner wall conduit and the outer wall
conduit.” App. Br. 11.
We disagree with Appellants’ contention. The Examiner finds that
Hoang discloses this limitation in the Grounds of Rejection of the Answer
from page 4, line 18, beginning “Regarding claim 1, Hoang ‘682 discloses a
shrouded adapter assembly . . . ” to page 5, l. 2, ending “ . . . and the outer
wall conduit” and in the Response to Argument section of the Answer from
page 13, line 11-12, beginning “Hoang ‘682 teaches a shrouded adapter
assembly . . . ” and to page 13, line 16, ending “and the outer wall conduit
(Fig. 7).” We adopt the Examiner’s findings as our own.
Appellants contend that Hoang fails to disclose “a shrouded adapter
that facilitates the transition between a double and single wall conduit.”
App. Br. 11.
Although this may be true, this language does not appear in claim 1.
Furthermore, Hoang was not relied upon to meet the claimed limitations
relating to a single wall conduit. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d
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Application 11/867,557

5
1091, 1097 (Fed. Cir. 1986). In the instant case, Takahashi is relied upon to
teach the limitations directed to the single wall conduit.
Appellants argue that Takahashi fails to teach “this feature as well.”
App. Br. 12. We take this to mean Appellants are arguing that Takahashi
fails to teach “[a] shrouded assembly adapter for coupling together a first
conduit and a second conduit, the first conduit comprising an inner wall
conduit and an outer wall conduit with a conduit annular space between the
inner wall conduit and the outer wall conduit.”
We are not persuaded by Appellants’ contention because Takahashi
was not relied upon to meet this limitation of claim 1. As discussed supra,
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d at 1097.
For the foregoing reasons, Appellants do not persuade us of any error
in the Examiner's determination of obviousness of the subject matter of
independent claim 1. Accordingly, we sustain the Examiner's rejection of
independent claim 1, and claims 4-9 and 12-20 which stand or fall therewith,
under 35 U.S.C. § 103(a) as unpatentable over Hoang and Takahashi.

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Appeal 2011-004258
Application 11/867,557

7
Accordingly, we sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Hoang and Takahashi.
Obviousness based on Hoang, Takahashi, and Nee
Claim 11 depends from dependent claim 10.
With respect to claim 11, Appellants only argue that “Nee does not
cure the deficiencies of Hoang and Takahashi.” App. Br. 13.
As we found no deficiency in the combination of Hoang and
Takahashi for the reasons discussed supra, we are not persuaded of error in
the Examiner’s rejection by Appellants’ argument. Accordingly, we sustain
the Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Hoang, Takahashi, and Nee.

DECISION
We affirm the Examiner’s decision to reject claims 1 and 4-20.
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

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