Ex Parte Drost et al

Patent Trial and Appeal Board

Jul 26, 2017

12893959 (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.
12/893,959 09/29/2010 Jason Drost 106389-2710 5133
116387 7590
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON DROST and ROBERT SCHELLIN
Appeal 2015-006378
Application 12/893,959
Technology Center 3600
Before ANNETTE R. REIMERS, FRANCES L. IPPOLITO, and
NATHAN A. ENGELS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006378
Application 12/893,959
STATEMENT OF THE CASE1
Jason Drost and Robert Schellin (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject claims 1—7, 9—16, and 19—
22. Claim 17 and 18 have been withdrawn from consideration.2 Claim 8
has been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates “to spherical-type flange joints for
joining together two components while accommodating for angular
misalignment between the two components.” Spec. 12, Figs. 1, 2. Claims
1,13, and 20 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A flange joint, comprising:
an adapter capable of being coupled to a first pipe, the adapter
comprising a convex surface, the adapter having an upstream end
supported on a periphery of the first pipe, a downstream end supported
on the periphery of the first pipe, with a hollow portion separating the
upstream end and the downstream end, wherein the first pipe includes
a ledge extending outwardly from the downstream end of the adapter;
a gasket comprising a first surface and an opposite second
surface, the first surface of the gasket being matingly engageable with
1 Appellants submitted an Amendment After Final Action proposing
amendments to claims 1, 20, and 21 and cancelation of claims 17 and 18. See
Response After Final Act. 2 and 5—8 (filed Apr. 15, 2014). In the Advisory
Action, the Examiner stated that “the proposed amendment(s)” “will not be
entered.” Adv. Act. Summary Sheet (mailed Apr. 17, 2014).
2 As discussed above in note 1, the Examiner did not enter the “proposed
amendment(s)” canceling claims 17 and 18. See n. 1 above; see also Adv.
Act. Summary Sheet; Final Act. Office Action Summary Sheet and p. 2
(mailed Feb. 19, 2014). .
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the convex surface of the adapter, and the second surface being
matingly engageable with a second pipe, wherein the gasket is
supported on the first pipe; and
a clamp comprising an inner surface matingly engageable with
the second pipe to secure the gasket to the adapter.
REJECTIONS3
I. Claims 1—7 and 9-12 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1, 2, 6, 9, 11—13, 15, 16, 19, and 22 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Buller (US 3,432,189; iss.
Mar. 11, 1969) andMatthis (US 8,328,243 B2; iss. Dec. 11, 2012).
III. Claims 3—5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Buller, Matthis, and Stade (US 3,964,773; iss.
June 22, 1976).
IV. Claims 1, 2, 6, 9, 11—13, 15, 16, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mizusawa (US 3,865,413;
iss. Feb 11, 1975), Buller, and Matthis.
V. Claims 7, 10, 14, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mizusawa, Buller, Matthis, and
Hartig (US 7,393,020 B2; iss. July 1, 2008).
VI. Claims 3—5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mizusawa, Buller, Matthis, and Stade.
3 The Examiner’s objections to claims 20 and 21 (see Final Act. 2) are not
appealable matters, but rather are petitionable matters, and thus are not within
the jurisdiction of the Board. See 37 CFR 1.181; see also In re Berger, 279
F.3d 975, 984 (Fed. Cir. 2002); In re Mindick, 371 F.2d 892, 894 (CCPA
1967); see also n. 1 above.
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ANALYSIS
Rejection I
Claims 1—7 and 9—12
Claim 1 recites an “adapter capable of being coupled to a first pipe,”
“the adapter having an upstream end supported on a periphery of the first
pipe, a downstream end supported on the periphery of the first pipe, . . .
wherein the first pipe includes a ledge extending outwardly from the
downstream end of the adapter.” Appeal Br. 20, Claims App. The
Examiner determines that it is unclear whether “the first pipe” is “being
claimed or not” in claim 1. Final Act. 3. The essence of the requirement
under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is
that the language of the claims must provide clarity to those skilled in the art
regarding the scope of the subject matter which the claims encompass. See
In re Hammack, 427 F.2d 1379 (CCPA 1970). Upon review of claim 1, the
skilled artisan would understand that the positively recited “first pipe” is
being claimed and is not indefinite, and that claim 1, as written, provides
clarity “regarding the scope of the subject matter” encompassed in the
claim.4
Accordingly, we do not sustain the Examiner’s rejection of claims 1—7
and 9—12 for indefmiteness.
4 We note that “[f]or examination purposes,” the Examiner interprets claim 1
“as if the first pipe is being claimed.” See Final Act. 3.
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Rejection II
Claims 1, 6, 9, 11—13, 15, 16, 19, and 22
Appellants do not offer arguments in favor of independent claim 13 or
dependent claims 6, 9, 11, 12, 15, 16, 19, and 22 separate from those
presented for independent claim 1. Appeal Br. 7—10, 19. We select claim 1
as the representative claim, and claims 6, 9, 11—13, 15, 16, 19, and 22 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants present
additional arguments for claim 2. Appeal Br. 10-16. We address claim 2
separately below.
Appellants contend “that Buller cannot be properly combined with
Matthis as asserted by the Examiner, because such a combination would
frustrate the operating principle of Buller.” Appeal Br. 8; see also Reply Br.
2—5. In particular, Appellants contend that
the sleeve 12 of Buller operates generally to align the two
segments of the conduit 10. The conical engagement surfaces of
the sleeve 12 constrain the gasket 16 against the sleeve 12 to
retain a fluid-tight seal, and the gasket 16 allows for limited
misalignment between the two segments. In contrast, Matthis
explicitly teaches the use of curved engagement surfaces that
operate to allow greater degrees of misalignment between
conduit segments. Therefore, combining the curved engagement
surfaces of Matthis, which encourages greater degrees of
misalignment, with the conical engagement surfaces of Buller,
which only allow for very limited misalignment, would frustrate
the very operating principle of Buller. Specifically, instead of
the sleeve 12 of Buller operating to align the conduit segments
and the gasket 16 operating to allow for limited misalignment,
including curved engagement surfaces would cause the sleeve 12
to allow for greater degrees of misalignment between the conduit
segments.
Appeal Br. 10 (italics added); see also id. at 7—9; Reply Br. 2—5; Ans. 4.
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In response to Appellants’ argument, the Examiner cites to Buller
column 1, lines 32-40, 53—59 and column 3, lines 60-67. Ans. 4—5. The
Examiner finds that
[t]hese passages make clear that during operation, Buller’s
coupling, mainly due to the gaskets being elastomeric, can
accommodate some (albeit limited) misalignment and flexing of
the conduits without effecting sealing. Buller is acknowledging
that during operation, misalignment and flexing occurs, and that
it is important to maintain sealing during this misalignment (that
occurs via flexing, vibration, or in general). It is shortsighted to
conclude that Buller is beyond modification so as to
accommodate a greater misalignment, as surely certain operating
conditions inevitably will occur wherein the ability for the Buller
coupling to compensate for more than minimal misalignment
would be beneficial, if not necessary, in order to maintain proper
function and avoid failure of the system in which the Buller
coupling is employed.
Id. at 5.
The Examiner further finds that
[sjimilar to the Buller coupling, [Matthis] discloses a
clamped flange joint that uses an adapter, and like Buller,
[Matthis] is also concerned with sealing during misalignment.
By using complementary spherical engagement surfaces,
[Matthis] teaches us that greater degrees of misalignment
between the pipe and coupling can be accommodated while still
maintaining a tightly sealed joint.
Id. at 5—6 (citing Matthis 1:24—26, 3:36—55).
The Examiner concludes that Matthis “offers a solution to situations
that would cause greater misalignment and thus cures this deficiency in
Buller” and that “[ejmploying spherical surfaces in Buller thus would be an
improvement to Buller and also alleviates Buller’s concern with
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bending/stressing of the conduit during misalignment.” Id. at 6 (citing
Buller 1:32-40).
As an initial matter, Appellants’ contention that “employing curved
surfaces between the engaging surfaces of the sleeve member 12 and the
conduits 10 of Buller may permit increased misalignment between a first
side of the sleeve member 12 and first one of the conduits 10” and that “such
misalignment would cause the opposite second side of the sleeve member 12
to move away from the gasket of the second one of the conduits 10, thereby
degrading the seal therebetween” (see Reply Br. 4—5 (italics added)),
amounts to unsupported attorney argument, and thus, is entitled to little, if
any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(arguments and conclusions unsupported by factual evidence carry no
evidentiary weight). Further, Appellants’ contention appears to be premised
on a misapprehension of the Examiner’s proposed rejection. Specifically,
the Examiner is not proposing “[to] combin[e] the curved engagement
surfaces of Matthis” “with the conical engagement surfaces of Buller,” as
Appellants contend. Appeal Br. 10; see also id. Reply Br. 2. Rather, the
Examiner is proposing “to modify Buller such that the engagement surfaces
are spherical (concave/convex) [as taught by Matthis] instead of conical as
[disclosed in Buller]” to improve Buller’s device. See Final Act. 4; see also
Ans. 5—6.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). In this case, even assuming arguendo that the
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Examiner’s proposed modification involves “a different coupling
configuration” and/or “different engagement surfaces/surface locations,” the
Examiner is proposing that the complementary spherical (concave/convex)
engagement surfaces of Matthis would improve Buller’s device by allowing
Buller’s device “to accommodate a greater misalignment,” “wherein the
ability for the Buller coupling to compensate for more than minimal
misalignment would be beneficial, if not necessary, in order to maintain
proper function [i.e., maintain proper sealing during misalignment] and [to]
avoid failure of the system in which the Buller coupling is employed.” See
Ans. 5—6; see also Reply Br. 4.
The Examiner’s findings are sound and supported by a preponderance
of the evidence, and the Examiner’s conclusions therefrom are based on
rational underpinnings. Further, there is no indication that the Examiner’s
proposed modification is beyond the ability of one skilled in the art. See
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). Based on the foregoing, Appellants
do not provide persuasive evidence or argument apprising us how the
Examiner’s proposed modification of Buller with Matthis frustrates the
operating principle of Buller.
In addition, the proposed modification of the conical engagement
surfaces of Buller with the complementary spherical (concave/convex)
engagement surfaces of Matthis does not appear to be uniquely challenging.
Appellants do not apprise us why the Examiner’s proposed modification
would not be considered a simple substitution that yields predictable results.
See Final Act. 4. A prima facie conclusion of obviousness may be supported
by a showing that the claims are directed to a process, machine,
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manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See KSR, 550 U.S.
at 416. Appellants further do not provide persuasive evidence or argument
explaining why a person of ordinary skill in the art would not have had an
expectation of success in making the combination. Final Act. 4; See In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (noting that all that is required
is a reasonable expectation of success, not absolute predictability of
success).
Moreover, to the extent Appellants are arguing the references must be
capable of bodily incorporation in order to combine their teachings, the test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Id. (citations omitted). As discussed above, the Examiner
articulates adequate reasoning based on rational underpinnings to explain
why one of ordinary skill in the art would have been led to make the
proposed modification. Appellants do not provide persuasive evidence or
argument apprising us of error in the Examiner’s reasoning for modifying
the teachings of Buller with Matthis.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Buller and Matthis. Accordingly, we sustain the Examiner’s rejection of
claim 1 as unpatentable over Buller and Matthis. We further sustain the
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Examiner’s rejection of claims 6, 9, 11—13, 15, 16, 19, and 22, which fall
with claim 1.
Claim 2
Claim 2 recites “the first radius of curvature [of the convex surface of
the adapter] is equal to the second radius of curvature [of the concave first
surface of gasket],” “the first and second radii of curvature each are less than
the third radius of curvature [of the convex second surface of the gasket],
and the third radius of curvature is less than the fourth radius of curvature
[of the concave inner surface of the clamp].” Appeal Br. 20, Claims App.
The Examiner finds that
[Matthis] teaches that the first radius of curvature is equal to the
second radius of curvature. As to the first and second radii of
curvature being less than the third radius of curvature, and the
third radius of curvature is less than the fourth radius of
curvature, [Matthis] does state the spherical engagement surfaces
have substantially the same radii of curvature, thus allowing for
small differences. Given this, [Matthis] is considered to teach
the first and second radii of curvature being less than the third
radius of curvature, and the third radius of curvature is less than
the fourth radius of curvature.
Final Act. 4—5.
Matthis discloses
In accordance with this disclosure, engagement surfaces
32, 44, 46 and 60 are desirably spherical with the radius of
curvature of the surfaces 44 and 32 being the same (for example,
the radius ri shown in FIG. 2) and the radius of curvature of
surfaces 46 and 60 being the same (for example, the radius r2
shown in FIG. 2). In addition, the radii of curvature of the
engagement surfaces 32, 44, 46 and 60 desirably have the same
center (i.e., the surfaces have the same center of curvature), with
the curved portion of such surfaces thereby being concentric with
one another.
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Matthis 3:15—24 (italics added); see also Appeal Br. 12.
We agree with Appellants that the Examiner does “not point to
anything in Matthis to support the assertion that Matthis intended for its
engagement surfaces to be anything but the same or equal.” Appeal Br. 11;
see also Final Act. 4—5. Even assuming arguendo that “substantially the
same” radii of curvature “allow[s] for small differences” in the radii of
curvature, as the Examiner proposes (see Final Act. 5), this does not mean
that such differences in the radii of curvature necessarily result in one radius
of curvature being less than another radius of curvature. See Appeal Br. 12—
13. As such, we agree with Appellants that the Examiner’s findings are
speculative. See id.
In the final rejection, the Examiner presents an alternate approach.
Specifically, the Examiner states:
In the instance [Matthis] does not teach that the first and
second radii of curvature being less than the third radius of
curvature, and the third radius of curvature is less than the fourth
radius of curvature, it would have been obvious to one having
ordinary skill in the art at the time the invention was made to
modify [Matthis] such that the first and second radii of curvature
are less than the third radius of curvature, and the third radius of
curvature is less than the fourth radius of curvature, since it has
been held that discovering an optimum value of a result effective
variable involves only routine skill in the art and since it has been
held that where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.
Final Act. 5.
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We are not persuaded that achieving the claimed radii of curvature
would have been an obvious matter of optimizing ranges, as the Examiner
proposes. A particular parameter must be recognized as a result-effective
variable, i.e., a variable that achieves a recognized result, to characterize that
variable’s optimization as routine experimentation. In re Antonie, 559 F.2d
618, 620 (CCPA 1977). The Examiner does not provide evidence that the
first, second, third, and fourth radii of curvature are so recognized. See Final
Act. 5; see also Appeal Br. 13—15.
In the Answer, the Examiner finds that
[i]n Buller, the convex (outer) surface of the adapter (33)
is that outer surface that contacts the inner (concave) surface of
the gasket (16). The convex surface of the adapter defines a first
radius of curvature and the concave surface of the gasket defines
a second radius of curvature. The outer surface of the adapter is
in intimate contact with the inner surface of the gasket, just like
in Appellants’] flange joint, and thus, just as in Appellants’],
the first radius of curvature and the second radius of curvature
are the same. The distance (or radius) from a center is the same
for the outer surface of the adapter and the inner surface of the
gasket. Again, this is just like Appellants’] flange joint, and how
Appellants] defines or uses the term “radius of curvature.” The
convex (outer) surface of the gasket (33) has a third radius of
curvature which defines a distance (radius from the center) that
is greater than the first radius of curvature (and second radius of
curvature) by the thickness of the gasket. The inner surface (22)
of the flange portion of sleeve (12) is concave matching the outer
convex surface of the gasket. The outer surface (24) of the flange
portion of the sleeve is convex and matches the inner (concave)
surface of the clamp (18). The inner (concave) surface of the
clamp defines a fourth radius of curvature, or a fourth distance.
This fourth distance is greater than the third distance (third radius
of curvature) by the thickness of the flange portion of the sleeve.
Ans. 7.
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As an initial matter, merely because “[t]he outer surface of the adapter
[of Buller] is in intimate contact with the inner surface of the gasket,” does
not necessarily mean that the first radius of curvature of the convex surface
of the adapter is the same as (i.e., equal to) the second radius of curvature of
the concave first surface of gasket. See id.', see also Appeal Br. 20, Claims
App. When a reference does not disclose that the drawings are to scale and
is silent as to dimensions, the drawing features are of little value in
establishing measurements. See MPEP § 2125; Hockerson-Halberstadt, Inc.
v. Avia Group Inti, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.”).
Here, Buller is silent regarding the dimensions (e.g., thickness) of the
adapter, gasket, and clamp and such dimensions are unclear from the
drawings. Consequently, the Examiner’s findings that Buller discloses (1)
the first radius of curvature of the convex surface of the adapter is equal to
the second radius of curvature of the concave first surface of gasket, (2) the
first and second radii of curvature each are less than the third radius of
curvature of the convex second surface of the gasket, and (3) the third radius
of curvature is less than the fourth radius of curvature of the concave inner
surface of the clamp are based on speculation and not supported by a
preponderance of the evidence.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 2 as unpatentable over Buller and Matthis.
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Rejection III
Claims 3—5
Appellants do not offer arguments in favor of dependent claims 3—5
separate from those presented for independent claim 1. Appeal Br. 7—10, 19.
As discussed above in Rejection II, Appellants’ arguments regarding claim 1
are not persuasive.
Accordingly, for the same reasons discussed above for claim 1, we
sustain the Examiner’s rejection of claims 3—5 as unpatentable over Buller,
Matthis, and Stade.
Rejection IV
Claims 1, 6, 9, 11—13, 15, 16, and 19
Appellants do not offer arguments in favor of independent claim 13 or
dependent claims 6, 9, 11, 12, 15, 16, and 19 separate from those presented
for independent claim 1. Appeal Br. 7—10, 19; id. at 8, n.l. We select claim
1 as the representative claim, and claims 6, 9, 11—13, 15, 16, and 19 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants present additional
arguments for claim 2. Appeal Br. 10-16. We address claim 2 separately
below.
Appellants state that
on page 7 of the Office Action dated February 19, 2014, the
Examiner applied the same rationale in an alternative rejection
of Claims 1 and 13 [i.e., the Examiner’s rejection of claims 1, 6,
9, 11—13, 15, 16, and 19 as unpatentable over Mizusawa, Buller,
and Matthis] in which the Examiner similarly asserted that it
would have been obvious to modify the conical engagement
surfaces of Buller with the curved engagement surfaces of
Matthis. Therefore, the above argument applies equally to both
rejections [i.e., the Examiner’s rejection of claims 1, 6, 9, 11—13,
15, 16, 19, and 22 as unpatentable over Buller and Matthis and
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the Examiner’s rejection of claims 1, 6, 9, 11—13, 15, 16, and 19
as unpatentable over Mizusawa, Buller, and Matthis].
Appeal Br. 8, n.l; see also id. at 7—10, 19; Final Act. 6—7.
As discussed above in Rejection II, Appellants’ arguments regarding
claim 1 are not persuasive. Accordingly, for the same reasons discussed
above in Rejection II, we sustain the Examiner’s rejection of claim 1 as
unpatentable over Mizusawa, Buller, and Matthis. We further sustain the
Examiner’s rejection of claims 6, 9, 11—13, 15, 16, and 19, which fall with
claim 1.
Claim 2
The Examiner’s obviousness rejection of claim 2 in view of
Mizusawa, Buller, and Matthis is based on the same unsupported findings
and conclusions discussed above with respect to claim 2 in view of Buller
and Matthis. See Final Act. 7—8; see also Ans.6—7. The Examiner does not
rely on Mizusawa to remedy the deficiencies of Buller and Matthis.
Accordingly, for the same reasons discussed above for claim 2 in view of
Buller and Matthis, we do not sustain the Examiner’s rejection of claim 2 as
unpatentable over Mizusawa, Buller, and Matthis.
Rejection V
Claims 7, 10, and 14
Appellants do not offer arguments in favor of dependent claims 7, 10,
and 14 separate from those presented for independent claims 1 and 13.
Appeal Br. 7—10, 19; id. at 8, n.l. As discussed above in Rejection IV,
Appellants’ arguments regarding claims 1 and 13 are not persuasive.
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Accordingly, for the same reasons discussed above for claims 1 and
13, we sustain the Examiner’s rejection of claims 7, 10, and 14 as
unpatentable over Mizusawa, Buller, Matthis, and Hartig.
Claims 20 and 21
Independent claim 20 is directed to a spherical joint assembly
including an adapter, wherein “the adapter compris[es] a first curved surface
having a third radius of curvature and a second curved surface having a
fourth radius of curvature different than the third radius of curvature.” See
Appeal Br. 20, Claims App. The Examiner finds that
the outer, now curved, surface (i.e. that which contacts gasket 30)
of the adapter (23) in Misuzawa has a given radius of curvature.
The inner curved surface (i.e. that surface of the adapter 23
opposite said outer curved surface) of the adapter also has a
radius of curvature. The radius of curvature of the inner curved
surface is different than the radius to the outer curved surface by
a distance equal to the thickness of the adapter (or tube 20). In
other words, the difference between the radius of curvature of the
outer curved surface and the radius of curvature of the inner
curved surface is equal to the distance between the inner surface
and the outer surface (i.e. the thickness).
Ans. 8—9.
Similar to that discussed above for claim 2, when a reference does not
disclose that the drawings are to scale and is silent as to dimensions, the
drawing features are of little value in establishing measurements. See MPEP
§ 2125; Hockerson-Halberstadt, Inc., 222 F.3d 951 at 956. In this case,
Misuzawa is silent regarding the dimensions (e.g., thickness) of the adapter
and such dimensions are unclear from the drawings. Although we
acknowledge that each of the outer and inner curved surfaces of adapter 23
of Misuzawa has “a radius of curvature,” the Examiner’s finding that the
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radius of curvature of the outer curved surface of the adapter is different than
the radius of curvature of the inner curved surface of the adapter is based on
speculation and not supported by a preponderance of the evidence.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 20 and 21 as unpatentable over Mizusawa,
Buller, Matthis, and Hartig.
Rejection VI
Claims 3—5
Appellants do not offer arguments in favor of dependent claims 3—5
separate from those presented for independent claim 1. Appeal Br. 7—10, 19;
id. at 8, n. 1. As discussed above in Rejection IV, Appellants’ arguments
regarding claim 1 are not persuasive.
Accordingly, for the same reasons discussed above for claim 1, we
sustain the Examiner’s rejection of claims 3—5 as unpatentable over
Mizusawa, Buller, Matthis, and Stade.
DECISION
We REVERSE the Examiner’s decision to reject claims 1—7 and 9—12
for indefiniteness.
We AFFIRM the Examiner’s decision to reject claims 1, 6, 9, 11—13,
15, 16, 19, and 22 as unpatentable over Buller and Matthis.
We REVERSE the Examiner’s decision to reject claim 2 as
unpatentable over Buller and Matthis.
We AFFIRM the Examiner’s decision to reject claims 3—5 as
unpatentable over Buller, Matthis, and Stade.
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We AFFIRM the Examiner’s decision to reject claims 1, 6, 9, 11—13,
15, 16, and 19 as unpatentable over Mizusawa, Buller, and Matthis.
We REVERSE the Examiner’s decision to reject claim 2 as
unpatentable over Mizusawa, Buller, and Matthis.
We AFFIRM the Examiner’s decision to reject claims 7, 10, and 14 as
unpatentable over Mizusawa, Buller, Matthis, and Hartig.
We REVERSE the Examiner’s decision to reject claims 20 and 21 as
unpatentable over Mizusawa, Buller, Matthis, and Hartig.
We AFFIRM the Examiner’s decision to reject claims 3—5 as
unpatentable over Mizusawa, Buller, Matthis, and Stade.
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-IN-PART
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