13866261 (P.T.A.B. Oct. 10, 2017)

Ex Parte Dohmann et al

Patent Trial and Appeal BoardOct 10, 2017

13866261 (P.T.A.B. Oct. 10, 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. 13/866,261 04/19/2013 Heinrich Dohmann 813203 3584 95683 7590 10/12/2017 Leydig, Voit & Mayer, Ltd. (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 EXAMINER WEDDLE, ALEXANDER MARION ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 10/12/2017 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): chgpatent @ ley dig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEINRICH DOHMANN and THOMAS GESPER Appeal 2016-003586 Application 13/866,261 Technology Center 1700 Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 1, 4, 5, 7, and 8. An oral hearing was held on September 26, 2017.1 We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. 1 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2016-003586 Application 13/866,261 Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A device for at least one of guiding and forming a plastic pipe, the device comprising: a region of alterable cross-section formed by a wound flat element, the wound flat element overlapping in a region and being in close mutual contact in the overlapping region, the wound flat element including a flexible and resiliently deformable coating layer thereon that reduces friction in the overlapping region, wherein the coating layer has a hardness exceeding 1500 Vickers; and a device for altering the region of alterable cross-section. Appellant2 requests review of the Examinerâ€™s rejection of claims 1, 4, 5, 7, and 8 under 35 U.S.C. Â§ 103(a) as unpatentable over Dohmann (EP 1 652 651 A2, published May 3, 2006, and relying on an English machine translation dated November 21, 2013), Pontarolo (EP 1 254 757 Al, published November 6, 2002), and Sekmakas (US 3,990,921, issued November 9, 1976). Appeal Br. 5; Final Act. 3. OPINION The Prior Art Rejection3 After review of the respective positions provided by Appellant and the Examiner, we REVERSE the Examinerâ€™s prior art rejection of claims 1, 4, 5, 2 BATTENFELD-CfNCrNNATl GERMANY GMBH is the Applicant, who is also identified as the real party in interest on page 2 of the Appeal Brief. 3 We limit our discussion to independent claim 1. 2 Appeal 2016-003586 Application 13/866,261 7, and 8 for the reasons presented by Appellant. We add the following for emphasis. Claim 1 is directed to a device for forming a plastic pipe that comprises a tubular mandrel made from a wound flat sheet. Spec., Fig. 6 (item 3), 124. The cross-section of the wound sheet can be adjusted as needed for a desired size of a tubular product through manipulation of alteration means 2. Id. at Fig. 3,120. The claimed invention provides a flexible and resiliently deformable coating layer on the flat sheet 2 that reduces friction in the overlapping region of a wound flat sheet and that facilitates adjustment of the cross-section as desired. Id. 121. The coating layer also has a hardness exceeding 1500 Vickers. Id. (original claim 6). We refer to the Examinerâ€™s Final Office Action for a complete statement of the rejection. Final Act. 3â€”5. Appellant does not dispute the Examinerâ€™s findings with respect to the teachings of Dohmann. See generally Appeal Br. The only issue argued by Appellant is whether the teachings of Pontarolo and Sekmakas would have led one skilled in the art to employ the claimed flexible and resiliently deformable coating layer that reduces friction in the overlapping region on the wound flat sheet. Id. at. 4. In this regard, Appellant contends the interchangeable sleeve described in Pontarolo operates to increase friction, rather than to decrease it as suggested by the Examiner. Appeal Br. 8. According to Appellant, the problem addressed by Pontarolo is the failure of rollers mounted on the levers of an extrusion calibrator to rotate along a surface of the film that is being extruded without damaging the product. Appeal Br. 8; Pontarolo 14. Thus, Appellant asserts Pontaroloâ€™s express goal is to increase friction by using materials, such as polyurethane or 3 Appeal 2016-003586 Application 13/866,261 polyester, so that the rollers of the extrusion calibrator could consistently make contact with the thin film being extruded such that the rollers would properly roll over the surface of the film. App. Br. 8. Appellant also contends that Sekmakas fails to teach its disclosed material as a material that reduces friction as claimed. App. Br. 10. Therefore, Appellant contends it would not have been obvious to a person of ordinary skill in the art to modify the disclosure of Dohmann based on the disclosures of Pontarolo and Sekmakas to provide a coating material on Dohmannâ€™s flat sheet that decreases friction at the overlapping region, as suggested by the Examiner. Id. at 8, 10. We agree with Appellant. The Examiner relies on Pontarolo as suggesting the use of polyurethane and polyester on a calibration element for extrusion calibrators to reduce frictional contact with an extruded tubular product. Final Act. 4; Pontarolo 13, 22. The Examiner further relies on Sekmakas as teaching the determination of the hardness of a polyurethane film or coating is a result-effective variable. Final Act. 4â€”5; Sekmakas Abstract, col. 2,11. 11â€”15. However, as noted by Appellant, neither Pontarolo nor Sekmakas disclose their respective materials as useful for reducing friction as recited in the subject matter of claim 1. App. Br. 8. Therefore, even if the teachings of the cited art can be properly combined, the Examiner does not demonstrate that one skilled in the art would have arrived at the claimed invention. Accordingly, we reverse the Examinerâ€™s prior art rejection of claims 1, 4, 5, 7, and 8 under 35 U.S.C. Â§ 103 (a) for the reasons presented by Appellant and given above. 4 Appeal 2016-003586 Application 13/866,261 ORDER The Examinerâ€™s prior art rejection of claims 1, 4, 5, 7, and 8 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 5