Ex Parte Manasek

Patent Trial and Appeal Board

Jul 28, 2017

12128493 (P.T.A.B. Jul. 28, 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.
12/128,493 05/28/2008 Richard J. Manasek DKR01-40026 1430
43218 7590 08/01/2017
Taft Stettinius & Hollister LLP
ONE INDIANA SQUARE, SUITE 3500
INDIANAPOLIS, IN 46204-2023
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
T aft-IP-Docket @ taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD J. MANASEK
Appeal 2015-006315
Application 12/128,493
Technology Center 3700
Before JILL D. HILL, SUSAN L. C. MITCHELL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006315
Application 12/128,493
STATEMENT OF THE CASE
Appellant Richard J. Manasek1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision, as set forth in the Final Office Action dated
October 10, 2014 (“Final Act.”), rejecting claims 1—6, 9—11, 16, 17, 19—21,
and 24 under 35 U.S.C. § 103(a) as being unpatentable over Jahier (WO
2006/1411315 Al, published on October 26, 2006), Duggan (US 4,658,761,
issued on April 21, 1987), Kwok (US 4,972,903, issued on April 21, 1987),
and Manasek (US 2004/0194940 Al, issued on October 7, 2004).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, and enter a NEW GROUND OF REJECTION.
THE CLAIMED SUBJECT MATTER
The claims are directed to a pipe. Claim 1, the only independent
claim, is reproduced below with disputed limitations italicized for emphasis:
1. A pipe comprising:
an inner tube; and
an outer tube overlaying and contacting the inner tube and
adapted to contact and withstand corrosive gases at
temperatures of4000—5000 °F;
wherein the inner tube and the outer tube are coaxial and
coextensive; and
wherein the inner tube is manufactured from a first
selected material; and
wherein the outer tube is manufactured from a second
selected material, the second selected material being a material
other than carbon steel; wherein the inner tube and the outer tube
are extruded together.
1 Appellant identifies AmeriFab, Inc. as the real party in interest.
Appeal Brief, dated January 1, 2015, at 1 (“Appeal Br.”).
2 Claim 22 is cancelled (Appeal Br. 2), and claims 7, 8, 12—15, 18, 23,
and 25—30 are withdrawn from consideration (Final Act. 2).
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Application 12/128,493
DISCUSSION
The Rejection of Claims 1—6, 9—11, 16, 17, 19—21, and 24
As Unpatentable Over Jahier, Duggan, Kwok, and Manasek
Appellants argue claims 1—6, 9—11, 16, 17, 19—21, and 24 as a group.
Appeal Br. 7. We select claim 1 as the representative claim, and claims 2—6,
9—11, 16, 17, 19—21, and 24 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(l)(iv).
Appellant and the Examiner focus their arguments on several issues,
including, in part: (1) whether Jahier’s boiler tubes are extruded together,
(2) whether rearranging Jahier’s boiler tubes so that the outer layer, instead
of the inner layer, is corrosion resistant would improperly change the
operation of Jahier’s boiler; (3) whether Manasek’s metallurgical heat
exchanger is combinable with Jahier’s boiler, and (4) whether Manasek and
Jahier are in analogous arts. Because claim 1 is directed to a pipe, and does
not include any limitation to a boiler or heat exchanger, resolution of these
issues is unnecessary to determine whether the cited prior art teach or
suggest the specific pipe structure recited in claim 1.
We agree with the Examiner’s finding that co-extruded tubes (or pipes
as recited in claim 1) having a corrosion resistant outer layer and an inner
layer, as recited in claim 1, are well known in the art. Answer, dated January
5, 2015, at 4 (citing Duggan 1:41—46), 6 (“Ans.”). Duggan, for example,
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Application 12/128,493
states that it is known in the art to make tubes wherein “corrosion resistant
metal alloys are co-extruded over mild steel tubes.”3 Duggan 1:42-46.
Duggan, however, does not disclose expressly an outer tube material
that is “adapted to contact and withstand corrosive gases at temperatures of
4,000 to 5,000 °F,” as recited in claim 1. The Examiner correctly finds that
Jahier discloses that suitable corrosion resistant materials include aluminum,
aluminum alloys4, and stainless steel. Ans. 2—3; see also Jahier 2:26—27,
10:4—5 (claim 23 recites aluminum alloys). Thus, Jahier expressly
recognizes that aluminum alloys, aluminum, and certain steels are known
substitutes for each other.
The Examiner also correctly finds that Kwok discloses that suitable
tube materials include “copper, monel®, admiralty brass, 70-30 copper-
nickel, aluminum bronze, aluminum, and the stainless steels.” Ans. 4 (citing
Kwok 3:65—4:1). Thus, Kwok expressly recognizes that aluminum bronze
(e.g., an aluminum alloy), aluminum, and certain steels are known
substitutes for each other.
We also agree with the Examiner’s finding that Manasek discloses
that aluminum bronze alloys are corrosion resistant materials that can
withstand exhaust gas temperatures of 4,000 to 5,000 °F. Ans. 5 (citing
3 Appellant argues that Duggan “teaches away” from co-extruded tubes
because “Duggan’s statement that extrusion is not a satisfactory solution
discourages a person having ordinary skill in the art from providing tubes
extruded together as recited in the claimed combination.” Reply Br. 2.
Contrary to Appellant’s argument, the portion of Duggan cited by Appellant
in support says that co-extruded tubes are a “success,” but that these tubes
are more expensive than ordinary steel tubes. Duggan 1:42—47. Appellant’s
argument is not persuasive.
4 Aluminum bronze alloys are known aluminum alloys. Manasek
Abstract.
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Appeal 2015-006315
Application 12/128,493
Manasek 120); see also Manasek 122, 26; Final Act. 3. Manasek also
discloses that aluminum bronze piping “is preferably extruded, where the
piping resists corrosion.” Manasek 147. We note that Appellant does not
contest that aluminum bronze inherently is capable of withstanding corrosive
gases at temperatures of 4,000 to 5,000 °F. See, e.g., Reply Br. 4; Appeal
Br. 5—6, 9 (Claims App.) (claim 4, for example, recites that “the second
selected material [i.e., outer layer material] is selected from a list consisting
of... an aluminum-bronze alloy”).
Based on Jahier, Kwok, and Manasek, well known corrosive resistant
materials for use in tubes include aluminum alloys such as aluminum
bronze. Because it is within the general skill of a worker in the art to select
a known material on the basis of its suitability for the intended use as a
matter of obvious design choice, we determine that it would have been
obvious to use aluminum bronze, as expressly taught by Kwok and
Manasek, as the corrosive resistant outer layer in the co-extruded tube taught
by Duggan. See In reLeshin, 277 F.2d 197, 199 (CCPA 1960) (“Mere
selection of known plastics to make a container-dispenser of a type made of
plastics prior to the invention, the selection of the plastics being on the basis
of suitability for the intended use, would be entirely obvious.”). When, as
here, “there are a finite number of identified, predictable solutions [i.e.,
corrosive resistant materials], a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp.” KSR Int’l Co.
v. Teleflex Inc., 550 US 398, 421 (2007).
For the reasons discussed above, the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Jahier, Duggan, Kwok, and
Manasek is sustained. Claims 2—6, 9—11, 16, 17, 19—21, and 24 fall with
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Appeal 2015-006315
Application 12/128,493
claim 1. However, because our reasoning differs from the Examiner’s, and
to ensure that Appellant is provided a fair opportunity to respond, we
designate our affirmance of the rejection of claims 1—6, 9—11, 16, 17, 19—21,
and 24 as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. §
41.50(b).
DECISION
We AFFIRM the Examiner’s rejection of claims 1—6, 9—11, 16, 17,
19—21, and 24 under 35 U.S.C. § 103(a) as obvious over Jahier, Duggan,
Kwok, and Manasek, and we designate our affirmance as a NEW GROUND
OF REJECTION pursuant to 37C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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: 37 C.F.R, $41.501b)
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