Ex Parte Porter et al

Patent Trial and Appeal Board

Feb 21, 2018

14029601 (P.T.A.B. Feb. 21, 2018)

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.
14/029,601 09/17/2013 David W. Porter 006386-00085 8392
28827 7590 02/23/2018
GABLE & GOTWALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
EXAMINER
CARLSON, MARC
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID W. PORTER, PAUL JOHN DONALDSON,
JUSTIN W. ESKRIDGE, and KEAN C. CHIN1
Appeal 2017-004231
Application 14/029,601
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1 and 2 as unpatentable over Richter (US 5,814,181,
iss. Sept. 29, 1998) and Berger (US 2011/0305102 Al, pub. Dec. 15,2011).
Appeal Br. 7; Final Act. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 McElroy Manufacturing, Inc. is identified as the real party in interest.
Appeal Br. 3.
Appeal 2017-004231
Application 14/029,601
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A machine for fusing polyolefin pipe comprising a
carriage comprising:
a base;
two screws journaled for rotation on said base in spaced-apart
parallel alignment on a common horizontal plane;
a first lower jaw on said base between said screws;
a first upper jaw pivotally mounted on said first lower jaw and
co-operable with said first lower jaw to grip a first pipe therebetween
in axial alignment with said screws;
a second lower jaw mounted for reciprocal travel on said
screws; and
a second upper jaw pivotally mounted on said second lower jaw
and co-operable with said second lower jaw to grip a pipe
therebetween in axial alignment with the first pipe;
said screws being electrically driven to selectively reciprocate
said second lower jaw toward and away from said first lower jaw to
bring gripped pipes into and out of close proximity, respectively, for
performance of fusion process tasks.
Appeal Br. 14 (Claims Appendix).
ANALYSIS
Appellants argue claims 1 and 2 as a group. Appeal Br. 7—13. We
select claim 1 as representative, with claim 2 standing or falling with claim
1. 37C.F.R. §41.37(c)(l)(iv).
This appeal presents two issues for our consideration. The first issue
is whether it would have been obvious to modify Richter’s screws (threaded
spindles 13, 14) to be aligned “on a common horizontal plane” as recited in
claim 1. The second issue is whether it would have been obvious to mount
the first and second upper jaws of Richter’s clamp using a pivotal mount on
one side instead of threaded bolts on both sides of each clamp.
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Appeal 2017-004231
Application 14/029,601
Aligning Richter’s Screws 13,14 “on a common horizontal plane”
Regarding claim 1, the Examiner finds that Richter teaches a machine
for fusing polyolefin pipe including two screws (threaded spindles 13, 14)
journaled to rotate on a base (support 8) in spaced-apart, parallel horizontal
alignment, but not on a common plane horizontal to the working surface as
shown in Figure 6. Final Act. 3, 4. The Examiner determines it would have
been obvious to modify Richter’s base 8 to locate the common plane of
threaded spindles 13, 14 in such a horizontal plane to allow a user to operate
the device from either side without a positioning bias toward the lower
angled end shown in Figures 1 and 5, and the device would work equally
well in both orientations. Id. at 4. The Examiner finds that Richter does not
teach away from using such a horizontal arrangement and reasons that the
change also would be an obvious design choice to make support 8 of
whatever form or shape is desired or expedient absent any showing of
unexpected results for the claimed arrangement where such a change would
be within the level of ordinary skill in the art to do. Id.
Appellants argue that the Examiner’s finding that the device would
work equally in both orientations is speculation because the Examiner has
not supported this finding from the drawings or the Specification. Appeal
Br. 8. Appellants also argue that the Examiner provides no support for the
motivation to arrange the spindles in a common horizontal plane to allow
operation from either side without positioning bias. Id. at 8—9. Appellants
further argue that Richter requires the spindles to be in a non-horizontal
plane. Id. at 9. Appellants also argue that the change is not a design choice
because significant structural changes would be required such as orientation
of clamps 4—7 and the changes would alter operation of the device. Id. at 9.
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Appeal 2017-004231
Application 14/029,601
Appellants’ arguments are not persuasive for the following reasons.
First, neither Appellants nor Richter teach any criticality for the orientation
of their respective spindles/screws. Appellants disclose their invention as a
pipe fusion machine suitable for fusion of small diameter polyolefin pipes
and capable of providing data to assess and record the quality of fused joints
to provide consistency over prior art manual devices. Spec. 1:13—2:5. The
Specification discloses that “front and rear screws 17 and 19 are journaled in
the upper ends of the side portions 13 and 15 for rotation about spaced-apart,
horizontal, parallel axes 21 and 23.” Spec. 7:7—10. Appellants have not
identified any criticality of the horizontal plane of the two screws for fusing
polyolefin pipes or otherwise. See Appeal Br. 7—9.
Richter teaches at least two different planes for spindles 13, 14. The
first common plane is shown in Figure 1 where each spindle 13, 14 is driven
by different individual motors 11, 12, respectively. A second common plane
is illustrated in Figures 5 and 6 where spindles 13, 14 are driven by a single
motor via pulleys 32, 33 and toothed belt. Richter, 5:15—50 (Fig. 1); 6:27—
58 (Figs, 5 and 6); see Final Act. 3^4 (citing alignments of Figs. 1, 5, and 6).
The Examiner illustrates how to orient spindles 13, 14 in a common
horizontal plane. Ans. 9. A person of ordinary skill is a person of ordinary
creativity. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). In view
of Richter’s disclosure of different planar orientations of spindles 13, 14, we
are not persuaded that the Examiner’s proposed horizontal orientation would
require significant structural changes beyond the level of ordinary skill or
alter operation of the device. Appellants’ attorney arguments in this regard
(Appeal Br. 9) are not persuasive evidence. Indeed, orienting support 8 to
place spindles 13, 14, in any horizontal plane appears to be feasible as well.
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Appeal 2017-004231
Application 14/029,601
Figures 7a—7c of Richter illustrate support element 8 and clamps 4—7
in a different planar orientation than in Figure 1. Richter teaches that “it is
of no principal significance whether the support structure 8, on which the
motor 27 is supported, is axially supported on the bottom or on the end 3 of
the pipeline” because the device is applied to a fixed position pipe end 3 of
an already-laid pipeline. Richter, 7:35—43. Similarly, threaded spindles 13,
14 are part of the support structure and can be supported on the bottom or on
an end of the fixed train of pipes 3. Id. at 7:44—52.
Accordingly, we are not persuaded by Appellants’ attorney argument
that Richter requires spindles 13, 14 to be in a non-horizontal plane. Appeal
Br. 9. Nor are we persuaded that rotating support 8 from a position shown in
Figure 1 to orient spindles 13, 14 in a common “horizontal” plane alters the
operation of the device or clamps 4—7. See id. Richter operates support 8,
spindles 13, 14, and clamps 4—7 in many different planes. Richter, 7:35—43,
8:27-40, see Figs. 1, 2c, 6, 7a, 7b. The fact that Richter may not disclose a
horizontal orientation2 in any drawings not teach away from the Examiner’s
proposed modification in view of these teachings of Richter. A reference’s
“mere disclosure of alternative designs does not teach away” absent a
disclosure that criticizes, discredits, or otherwise discourages the claimed
invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Richter’s
silence regarding a “horizontal plane” also is not a teaching away. DyStar
Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed.
Cir. 2006).
2 Claim 1 does not define “a common horizontal plane” of the two screws in
relation to the base or any other claimed element. If the horizontal plane of
the two screws 17, 19 is intended to be common to a horizontal plane of the
base 11 (see Spec. 7:7—10, Fig. 1), that relationship should be clarified.
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Appeal 2017-004231
Application 14/029,601
In view of these teachings and the lack of any criticality or disclosed
unique function of the claimed “common horizontal plane,” the Examiner’s
determination that changes to the orientation of Richter’s threaded spindles
would have been an obvious design choice within the level of ordinary skill
in the art is reasonable and supported by the evidence of record. Richter
teaches to operate the device in many orientations as discussed above. The
Examiner’s finding that a horizontal plane allows user operation from either
side without positioning bias is reasonable in view of Richter’s teaching to
operate device support 8 in different positions as needed. Richter, 7:35—52.
Eliminating position bias from Richter’s device by moving spindles 13,14
to a common “horizontal” plane as claimed would improve the accessibility
of support 8 depending on usage and allow the device to be clamped onto
pipes from different positions with equal facility as the Examiner illustrates.
See Ans. 9; Richter, 6:27—7:52, Figs. 1, 2a—c, 5, 6, 7a—c. Implicit motivation
exists when an improvement makes a device more efficient, faster, stronger,
more durable, and the like. DyStar, 464 F.3d at 1368.
Substituting Pivotally-Mounted Jaws for Dual Threaded Bolts in Richter
For similar reasons, the Examiner’s determination it would have been
obvious to use pivotally-mounted jaws taught by Berger and McMaster Carr
instead of threaded bolts on both sides of the clamping jaws as in Richter is
supported by a rational underpinning. Implicit motivation exists to make a
device more efficient and faster. DyStar, 464 F.3d at 1368. Richter teaches
that connection of clamping units 6, 7 to fixed pipe end 3 is designed to be
quick and simple to carry out. Richter, 7:40-43. The Examiner proposes to
improve efficiency further by substituting pivotal clamps to permit quicker-
acting clamping action over Richter’s dual bolts. Final Act. 5.
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Appeal 2017-004231
Application 14/029,601
Berger teaches that such a clamping mechanism 36 comprising two
jaws pivotally-mounted at one end and secured at the other end by a bolt
provides access for maintenance and replacement of parts. Id. 1 54, 69,
Figs. 9, 22. Clamping mechanism 36 is used to lock pipe ends together as
shown in Berger. Id. Berger teaches more generally that the overall system
is designed to increase production capacity and efficiency. Berger 14.
The Examiner proposes to connect Richter’s clamping elements 4—7
pivotally at one end for similar effect. Final Act. 5—6; Ans. 12. Use of a
technique used in one device effectively to improve a similar device in the
same way is obvious unless its application is beyond the level of ordinary
skill in the art. KSR, 550 U.S. at 417; see Final Act. 5—6; Ans. 11—12.
Appellants’ argument that Berger’s clamp 36 is used to connect tubes
of different diameters that carry mixtures rather than polyolefin tubes to be
fused end-to-end (Appeal Br. 11) is not persuasive in view of the foregoing.
Richter already teaches clamping elements 4—7 designed to clamp the ends
of tubes whose ends are to be butt-welded. The Examiner merely proposes
to improve the way the jaws are secured together. Richter secures each end
of the upper and lower jaw together with a separate threaded bolt 20, 21.
Richter, 5:43—50, Fig. 1. The Examiner reasons that providing a pivotal
connection between Richter’s jaws will improve the ability to clamp pipe
ends more quickly to increase throughput. Final Act. 5—6. The Examiner
also introduces evidence from McMaster Carr that the prior art recognizes
pivotal and non-pivotal connections as suitable for clamping jaws. Id. at 5.
The Examiner reasonably concludes that pivotally-connected jaws taught by
Berger can be opened and closed more quickly than Richter’s jaws that must
be connected at each end by bolts that are hand adjusted. Richter, 5:43—50.
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Appeal 2017-004231
Application 14/029,601
Appellants have not disclosed or claimed any innovative design for
the claimed pivotal jaws. Nor have Appellants disclosed any criticality for
the claimed pivotal jaws. Spec. 7:11—8:6, Fig. 1. The Examiner finds that
either configuration — two threaded bolts or a pivotal connection — would
secure the pipe ends equally well, but a pivotal connection would be quick­
acting and thus increase the throughput of Richter’s fusing device. Ans. 12.
We also agree with the Examiner that Berger and McMaster Carr are
directed to the same problem addressed by Appellants’ device and Richter.
Like Appellants’ fusion device, Berger and McMaster Carr teach the use of
clamps to lock the respective butt ends of two pipes fixedly in relation to one
another. Berger || 54, 69, Figs. 9, 22; Final Act. 5 (McMaster Carr clamps).
The fact that Appellants’ machine fixes the butt ends of two pipes together
“for performance of fusion process tasks” does not alter the fact that in all
cases clamps (pivotal and dual bolt) are used to secure the ends of two pipes
together in fixed relationship. Berger and McMaster Carr teach that such
clamps can be connected with a pivotal mount as claimed. Appellants have
not apprised us of error in the Examiner’s findings or reasoning.
Instead, Appellants contend “Richter insists that hand operated bolts
and nuts on opposite sides of the clamp be used for the purpose of creating a
firm grip on the pipe” and “If this is a slow process, Richter was teaching
against ‘quick acting clamps.’” Appeal Br. 13. This argument is not
persuasive because Richter does not teach any advantage or criticality to
using clamps 4—7 secured by two bolts other than noting that pipe ends 2, 3
“can be firmly clamped by means of threaded bolts and nuts 20, 21 which
can be adjusted by hand.” Richter, 5:43—48. Richter does not criticize,
disparage, or discourage use of pivoted clamps of Berger or McMaster Carr.
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Appeal 2017-004231
Application 14/029,601
McMaster Carr provides evidence of an industry understanding that
pivoted clamping jaws secure pipe ends fixedly in relation to one another
with equal facility as two-bolt jaws. Appellants’ argument that Richter’s
design teaches away from using any other (Appeal Br. 9, 13) is not the law
of obviousness. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017)
(“normal desire of artisans to improve upon what is already generally known
can provide the motivation to optimize variables”) (citations omitted).
Appellants’ remaining attorney arguments are not evidence and do not
undermine the Examiner’s findings and determination of obviousness. Even
if the modifications involve engineering tradeoffs of alleged disadvantages
in addition to the advantages cited by the Examiner, as Appellants assert
(Reply Br. 4—5; Appeal Br. 9, 12—13), ‘“[a] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.’” Allied Erecting and Dismantling Co., Inc.
v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). In
this case, any alleged disadvantages are speculative and outweighed by the
advantages asserted by the Examiner for the change. Skilled artisans could
determine that the improvements in speed and efficiency from using pivotal
jaws outweigh any potential disadvantage of not using two-bolt jaws.
Thus, we sustain the rejection of claims 1 and 2.
DECISION
We affirm the rejection of claims 1 and 2.
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
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