10889116 (B.P.A.I. Sep. 28, 2010)

Ex Parte Dabouineau

Board of Patent Appeals and InterferencesSep 28, 2010

10889116 (B.P.A.I. Sep. 28, 2010)

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. 10/889,116 07/13/2004 Johann Dabouineau 0513-1117 6633 7590 09/28/2010 William F. Kolalowski, lll Dykema Gossett PPLC Suite 300 39577 Woodward Ave. Bloomfield Hills, MI 48304 EXAMINER O HERN, BRENT T ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 09/28/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JOHANN DABOUINEAU ________________ Appeal 2009-012552 Application 10/889,116 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-012552 Application 10/889,116 The Invention Appellant’s invention is directed to a multilayer pipe, usable in particular in a cooling circuit of a motor vehicle engine. (Spec. 1). Claim 1 is illustrative: 1. A multilayer pipe, comprising an inner layer comprising a polymer based on a 4-methylpentene-1 monomer, and an outer layer comprising a polyamide. The Examiner relies on the following references in rejecting the appealed subject matter: Kojima 4,656,094 Apr. 07, 1987 Aoyama 5,342,662 Aug. 30, 1994 Shiota 5,488,974 Feb. 06, 1996 Kerschbaumer 5,850,855 Dec. 22, 1998 Claims 1-4, 9 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kerschbaumer in view of Kojima. Claims 5-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kerschbaumer, Kojima in view of Aoyama and Shiota. OPINION2 The dispositive issue for the rejection on appeal is the following: Did the Examiner err in determining that Kerschbaumer and Kojima describe or suggest a multilayer pipe, comprising an inner layer comprising a polymer based on a 4-methylpentene-1 monomer, as required by independent claim 1? 2 Appellant has not presented separate arguments for all of the rejected claims. Rather, Appellant’s arguments are principally directed to independent claim 1. Any claim not separately argued will stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2009). 2 Appeal 2009-012552 Application 10/889,116 During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]he analysis that ‘should be made explicit’ refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.” Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). The Examiner found that Kerschbaumer describes a multilayer pipe, comprising an outer layer comprising a polyamide and an inner layer comprising a polyolefin. The Examiner recognized that Kerschbaumer did not describe a polymer based on a 4-methylpentene-1 monomer as the inner layer. However, the Examiner cited column 2, lines 1 through 5 of Kerschbaumer as disclosing any polyolefin would have been suitable for the inner layer. (Ans. 3). The Examiner cited Kojima as evidence that it was known to persons of ordinary skill in the art “that [sic. polymers based on] 4- methylpentene-1 and HDPE are both polyolefins and can be used alternatively in multilayer structures (See col. 3, ll. 60-65 and col. 1, ll. 7-9 of Kojima (' 094)).” (Ans. 4, emphasis in original). The Examiner reasoned that it would have been obvious to a person of ordinary skill in the art to utilize a polymer based on a 4-methylpentene-1 monomer as the polyolefin for the inner layer in the structure of Kerschbaumer because it was a polyolefin. (Ans. 4). 3 Appeal 2009-012552 Application 10/889,116 Appellant argues that the Examiner's rejection is improper because “Kojima et al. merely suggests that HDPE and 4-methylpentene-1 monomer may be used for similar functions in a certain field, but provides no evidentiary support for the equivalency and/or interchangeability of HDPE and 4-methylpentene-1 monomer in the environment of Appellant's invention.” (App. Br. 6). Appellant further argues that Kojima’s purported equivalency of HDPE and 4-methylpentene-1 is limited to a very specific application for laminating articles that include a polyester layer and does not teach or suggest the interchangeability of the HDPE and 4-methylpentene-1 monomer for use with articles comprising different materials and/or made by different manufacturing processes. (App. Br. 6). We agree with Appellant’s arguments set forth above and in the Briefs. First, the Examiner has failed to provide any credible explanation or evidence that establishes that the polymer based on 4-methylpentene-1 monomer of Kojima necessarily has the non-swelling characteristics required by Kerschbaumer. (See Kerschbaumer, col. 2, ll. 2-5). In order 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. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). We also agree with Appellant that the Examiner has failed to provide any credible explanation and/or evidence as to why Kojima’s identification of HDPE and 4-methylpentene-1 is not limited to the formation of laminated articles that include a polyester layer. The Examiner has not directed us to any credible evidence to support his position that a person of ordinary skill in the art would have selected any known polyolefin for use as the inner 4 Appeal 2009-012552 Application 10/889,116 layer in the structure of Kerschbaumer. For the foregoing reasons and those presented in the Brief we reverse the Examiner's stated rejections.3 DECISION The 35 U.S.C. §103 rejections of claims 1-10 is reversed. REVERSED Ssl WILLIAM F. KOLALOWSKI, LLL DYKEMA GOSSETT PPLC SUITE 300 39577 WOODWARD AVE. BLOOMFIELD, HILLS MI 48304 3 The Examiner did not rely upon Aoyama and Shiota as evidence of obviousness for utilizing a polymer based on 4-methylpentene-1 monomer as the inner layer in the structure of Kerschbaumer. 5