Ex Parte Olinger et al

Patent Trial and Appeal Board

Mar 23, 2018

13409529 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/409,529 03/01/2012 Kathryn Marie Olinger
69713 7590 03/27/2018
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
46401-022002 1982
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHRYN MARIE OLINGER and TIM COTA
Appeal 2016-003 714
Application 13/409,529
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SEAN P. O'HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kathryn Marie Olinger and Tim Cota (Appellants) 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4, 9--14,
18, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing in accordance with 37 C.F.R. § 41.47 was held on March 6, 2018.
We REVERSE.
1 According to the Appeal Brief, the real party in interest is Uponor
Innovation Ab. Appeal Br. 1.
Appeal2016-003714
Application 13/409,529
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A clamping ring to be used on a pipe when making a pipe
connection such that, when establishing the pipe connection, an
end of a pipe and the surrounding clamping ring expand
simultaneously, wherein the clamping ring is made of a plastic
material having memory properties such that, after said
expansion, the clamping ring shrinks or contracts automatically,
the clamping ring further comprising: an inward extending
stop edge for positioning the clamping ring on the end of the
pipe, the inward extending stop edge disposed at an outlet end
of the clamping ring, the inward extending stop edge having a
thickness in a direction along a length of the clamping ring in a
range of 2% - 20% of the length of the clamping ring, and
a clamping-ring wall having a thickness in a direction
transverse to the length of the clamping ring of75%-97% of a
thickness of the clamping ring in an area of the stop edge in the
direction transverse to the length of the clamping ring.
REJECTIONS 2
The Examiner rejected claims 1--4, 9--14, 18, and 20-22 under
35 U.S.C. § 102(b) as anticipated by Ohya (US 2004/0195831 Al, pub. Oct.
7, 2004). Final Act. 7-9.
2 The Examiner withdrew the rejection of claims 1--4, 9, 10, 14, 18, and 20-
22 under 35 U.S.C. § 103(a) as unpatentable over Stuemky (US 4,305,608,
iss. Dec. 15, 1981 ). Ans. 3. The Final Action included a rejection of claims
3 and 4 under 35 U.S.C. § 112, second paragraph. Final Act. 7. Although
the Examiner did not expressly withdraw this rejection, the amendment
submitted April 8, 2015, appears to have overcome the rejection, and the
Examiner did not list the rejection under 35 U.S.C. § 112, second paragraph,
on pages 2-3 of the Answer. Thus, we understand the rejection under
35 U.S.C. § 112, second paragraph, to have been effectively withdrawn, and
not before us for review.
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Appeal2016-003714
Application 13/409,529
The Examiner provisionally rejected claims 1--4, 9--14, 18, and 20-22
on the ground of obviousness-type double patenting over claims of
copending Application 11/994,858. Final Act. 3---6. Application 11/994,858
issued as US Patent 9,822,915 on November 21, 2017. Moreover, prior to
allowance, claims 1-12, 21-25, 30-33, 37, and 38 of that application were
canceled, and many of the remaining claims were amended, subsequent to
the issuance of the Examiner's Answer in the present application, thereby
rendering the provisional obviousness-type double patenting rejections
effectively moot. Accordingly, we do not address these rejections in this
appeal, instead leaving it to the Examiner to determine whether a non-
provisional double patenting rejection based on any of the claims of
US Patent 9,822,915 would be in order.
DISCUSSION
The Examiner's rejection is grounded in pertinent part on the
Examiner's findings that (1) Ohya's inwardly extending stop edge (inner
projections 22) has a thickness in a direction along a length of the clamping
ring (ring member 20) in a range of 2o/o-20% of the length of the clamping
ring and (2) Ohya's clamping ring (ring member 20) wall has a thickness in
a direction transverse to the length of the clamping ring of 7 5o/o-97% of a
thickness of the clamping ring in an area of the stop edge in the direction
transverse to the length of the clamping ring. Final Act. 7. The Examiner
explains the basis for these findings, with reference to annotated
reproductions of Figure l(a) of Ohya. Ans. 10-11. As is evident from the
annotated reproductions of Figure l(a) on pages 10 and 11 of the Answer,
the Examiner's findings are predicated on precise measurements of features
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Appeal2016-003714
Application 13/409,529
of the drawings. We interpret the distance from the left end of Ohya's ring
member 20 to the right end face of projections 22 (as illustrated in Fig. l(a))
as corresponding to the claimed "thickness in a direction along a length of
the clamping ring." Similarly, we interpret the distance from the top of ring
member 20 (outer surface) to the bottom edge of the right end face of
projection 22 (the inner edge of the stop edge) as corresponding to the
claimed "thickness of the clamping ring in an area of the stop edge in the
direction transverse to the length of the clamping ring."
Ohya gives no indication that the drawings are to scale, and is silent
with respect to the dimensions in question. Thus, Ohya does not support the
Examiner's findings by a preponderance of the evidence. Description via
drawings and pictures can be relied upon alone as well as by words to
anticipate claimed subject matter if they clearly show the structure claimed.
In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, patent drawings
not designated as being drawn to scale cannot be relied upon to define
precise proportions of elements if the specification is completely silent on
the issue. Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000); see Appeal Br. 17; Reply Br. 7-9.
For the above reasons, we do not sustain the rejection of claims 1--4,
9-14, 18, and 20-22 under 35 U.S.C. § 102(b) as anticipated by Ohya.
DECISION
The Examiner's decision rejecting claims 1--4, 9-14, 18, and 20-22
under 35 U.S.C. § 102(b) as anticipated by Ohya is reversed.
REVERSED
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