Ex Parte Prakash

Patent Trial and Appeal Board

Oct 31, 2017

12235856 (P.T.A.B. Oct. 31, 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.
12/235,856 09/23/2008 Amit Prakash DN0125 6819
51108 7590
DAVID L. KING, SR.
5131 N.E. COUNTY ROAD 340
HIGH SPRINGS, EL 32643
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
11/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT PRAKASH
Appeal 2015-002074
Application 12/235,856
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Amit Prakash (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject claims 1—19 and 21. Claim 20 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant presents additional evidence in Declarations from Appellant, Amit
Prakash (1) “Prakash Declaration I” filed under 37 C.F.R. § 1.132 on May 22,
2012; and (2) “Prakash Declaration II” filed under 37 C.F.R. § 1.132 on
August 21, 2013. See Br. 36-45, Evidence App., Exhibits A and B,
respectively.
Appeal 2015-002074
Application 12/235,856
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to high pressure containers or
vessels for holding liquids or gasses.” Spec.212, Figs. 1, 2. Claims 1, 10,
and 21 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A pressure vessel for the storage of fluid being a type II or
type III CNG, LPG or Hydrogen cylinder meeting ISO 11439
performance guidelines, the cylinder comprising:
a low-alloy high strength steel core having 800 - 1200
MPa strength, with a prior to being wrapped growth in size at
burst up to 10 percent, the steel core having a cylindrical main
body with hemispherical or other shaped ends, the core being of
a wall thickness made of a seamless tube wherein the ends are
closed by a spin form process;
a wrapping of steel wire in a hoop or circumferential
multi-layered wrap around and covering at least the cylindrical
main body, the steel wire being helically wound in one or more
strands, each strand being a wire of 0.35 mm diameter of a
strength in the range of greater than 3000 MPa to 6000 MPa and
where the wire has a plastic ductility of over 20% in reduction in
area (RA) at tensile fracture;
a top wrap for protection against damage and moisture
penetration; and
wherein the finished cylinder forms a light reduced weight
high toughness structure having a required leak before fail mode
to prevent catastrophic failure and meets ISO 11439 performance
guidelines.
2 We refer to the Specification filed Sept. 23, 2008 (“Spec.”); Final Office
Action mailed Apr. 15, 2014 (“Final Act.”); Appeal Brief filed Sept. 11, 2014
(“Br.”); and the Examiner’s Answer mailed Nov. 18, 2014 (“Ans.”). We note
that no Reply Brief was filed.
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REJECTIONS
I. Claims 1, 3, 4, 6—9, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bowen (US 6,843,237 B2, iss. Jan. 18, 2005),
Steiner (US 4,113,132, iss. Sept. 12, 1978), Hauber (US
2003/0037885 Al, pub. Feb. 27, 2003), Sinopoli (US
2005/0051251 Al, pub. Mar. 10, 2005), Appellant’s Admitted
Prior Art at paragraphs 30 and 31 of the Specification (hereinafter
“AAPA”)3 and Fawley (US 5,632,307, iss. May 27, 1997).
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bowen, Steiner, Hauber, Sinopoli, AAPA,4 Fawley, and
DeLay (US 2005/0260373 Al, pub. Nov. 24, 2005).
III. Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley,5 and Prakash (US 2004/0242096 Al, pub. Dec. 2, 2004).
IV. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Bhagwat (US 5,425,830, iss. June 20, 1995).
3 By filing an application containing statements explaining what is
conventional in the art, an applicant concedes what is to be considered as prior
art in determining the patentability of the claimed invention. See Application
ofNomiya, 509 F.2d 566, 571 (CCPA 1975).
4 Presumably, the Examiner intended to include Appellant’s Admitted Prior
Art (i.e., “AAPA”), in the heading of Rejections II, III (for claim 5), V, VI,
and VII.
5 Presumably, the Examiner intended to include the Fawley reference in the
heading of the Rejection of claim 5. See Final Act. 9-10.
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V. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Paine (US 3,631,382, iss. Dec. 28, 1971).
VI. Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Seal (US 6,401,963 Bl, iss. June 11, 2002).
VII. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bowen, Steiner, Hauber, Sinopoli, AAPA,6 Fawley, Seal,7
and Pechacek (US 3,604,587, iss. Sept. 14, 1971).
VIII. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley,8 and
Prakash.
IX. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bowen, Steiner, Hauber, Sinopoli, AAPA,9 and Fawley.
ANALYSIS
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA, and Fawley
Claims 1, 3, 4, 6—9, and 18
Appellant does not offer arguments in favor of dependent claims 3, 4,
6—9, and 18 separate from those presented for independent claim 1. See Br.
6 The Examiner further cites to paragraph 37 of the Specification. See Final
Act. 14.
7 The Examiner cites to Paine in the Final Rejection. See Final Act. 14. We
consider this a typographical error. See Ans. 9.
8 Presumably, the Examiner intended to include the Fawley reference in the
heading of Rejections VIII and IX. See Final Act. 15, 18, 19, 22.
9 The Examiner further cites to paragraph 6 of the Specification. See Final
Act. 19.
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14—20. We select claim 1 as the representative claim, and claims 3, 4, 6—9,
and 18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that the Examiner “is ignoring the essence and
principle of operation taught in Bowen which requires the core to be made
by plates welded together to achieve a lighter weight structure. The Bowen
device has numerous seams along the welds. Bowen’s invention was to
teach how he could keep at least 90% of the steel strength at these seams.”
Br. 15—16; see also id. at 15 (“[T]he inventive concept of Bowen and it’s
principle of operation was to achieve a high performance strength at the
joints welded seams of at least 90%.”), id. at 18—19.
As an initial matter, the Examiner is not “suggesting] a seamless
core is taught by Bowen.” Br. 16. Rather, the Examiner looks to Steiner
for disclosing “a tightly wrapped core made of a seamless tube.” Final Act.
4. The Examiner proposes modifying “Bowen’s cylinder with [a] tightly
wrapped seamless core ... as taught by Steiner ... to obtain the predictable
results of increasing pressure vessel strength.” Id.', see also Ans. 2
(“Contrary to [AJppellant’s argument primary reference Bowen’s pressure
vessel [10, fig 1 A] for CNG cylinder is modified in view of Steiner
teaching of a tightly wrapped core made of a seamless tube.”). Appellant
does not apprise us of Examiner error.
The Examiner further concludes that it would have been obvious “to
make [a] seamless core, since it has been held that forming in one piece an
article which has formerly been formed in two pieces and put together
involves only routine skill in the art.” Final Act. 4. The Examiner states
that “[t]he use of a one piece construction instead of the structure as
disclosed comprised of several parts rigidly secured together as a single
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unit would be merely a matter of obvious engineering choice.” Final Act.
4. Appellant does not apprise us of error in these findings of the Examiner.
In this case, Bowen discloses that “the primary object of the present
invention is to provide improved fuel storage and delivery systems suitable
for storing CNG fuel and delivering CNG fuel on demand for combustion
in an engine.” Bowen 2:3—6. Stated differently, the inventive
concept/principle of operation of Bowen is to provide improved fuel
storage and delivery systems suitable for storing CNG fuel and delivering
CNG fuel on demand for combustion in an engine. As such, we disagree
with Appellant that “the inventive concept of Bowen and it’s principle of
operation was to achieve a high performance strength at the joints welded
seams of at least 90%.” See Br. 15; see also id. at 18—19.
Further in response to Appellant’s argument, the Examiner notes that
“modifying Bowen’s multi-plates pressure vessel in view of Steiner[’s]
seamless one piece pressure vessel will not change the principle of
operation. In fact[,] it will be great improvement in reducing weight and
cost of manufacturing.” Ans. 2. Appellant does not apprise us of Examiner
error. In particular, Appellant does not apprise us how modifying Bowen’s
multi-plates pressure vessel in view of Steiner’s seamless one piece
pressure vessel would fail to provide an improved fuel storage and delivery
system suitable for storing CNG fuel and delivering CNG fuel on demand
for combustion in an engine.
Appellant contends that “Bowen does not mention wire wraps and it
is evident the Bowen vessel could not use such a reinforcement. Bowen is
capable of performing as a Type I storage vessel without any wrap.” Br.
16. According to Appellant, Type II, III and IV composite over wrapped
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storage vessels as claimed “cannot use a welded liner or core structure.”
Br. 16. Appellant further contends that “Bowen claims to be lightweight,
but when scaled to match the size/volume of the cylinder of the present
invention, Bowen would weigh about 507 pounds and the claimed
invention weighs only 370 pounds for a 200 liter container.” Id. at 17.
In this case, the Examiner correctly characterizes these arguments as
“attacking references individually where the rejections are based on the
combinations of references.” See Ans. 2 (citing In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)). The
Examiner relies on the combined teachings of Bowen, Steiner, Hauber,
Sinopoli, AAPA, and Fawley to disclose the pressure vessel of claim 1. See
Final Act. 2—6. Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.
Appellant contends that “at the time of filing such [a reduction in
area] (RA) of over 20% was not found in the prior art. It was not an
inherent property.” Br. 18; see also id. at 19.
The Examiner is not taking the position that an RA of over 20% is
found in the prior art or “an inherent property.” See Final Act. 5; see also
Ans. 3^4. The Examiner correctly notes that Appellant’s Specification
describes (1) “[cjommercial passenger and light truck tires have been made
using 4000 MPa wire called ‘ultra tensile wire,’” and (2) “this invention
prefers wire of strength between 2000 to 5000 MPa with over 20% RA
ductility. . . . The 4000 MPa steel wire exceeds this ductility requirement.
The wires are available in the 0.1 mm to 2 mm diameters.” See Spec.
1130, 31, respectively; see also Final Act. 5; Ans. 3. The Examiner further
notes that “Sinopoli teaches use of steel wire of one or more strands, each
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strand being monofilament wire of 0.35 mm [0.3 mm/0.35 mm, para 0045]
diameter of strength in the range of greater than 3000 MPa to 6000 MPa
[4000 MPa, para 0055] in pressure vessel.” Ans. 3^4; see also Final Act. 5.
Sinopoli discloses (1) ‘“Ultra Tensile Steel (UT)’ means a carbon
steel with a tensile strength of at least 4000 Mpa” (Sinopoli, 133), (2) “[t]he
cords 36 used in the working example, as shown in FIG. 3, have a structure
of four filaments 38, 40, 42 and 44 typically of 0.30 mm or 0.35 mm
diameter ultra tensile steel wire” (Id. at 157), and (3) “[t]he 0.30 and 0.35
designates the filament diameter in millimeters and the UT designates the
material being ultra tensile steel” (Id.). Given that Sinopoli discloses
filaments of 0.35 mm diameter with ultra tensile strength of at least 4000
Mpa and the Specification discloses that (1) ‘ultra tensile wire’ constitutes
wire having a tensile strength of 4000 MPa, (2) a tensile strength of 4000
MPa exceeds an RA ductility over 20%, and (3) the wires are available in
0.1 mm to 2 mm diameters, we agree with the Examiner that the combined
teachings of Sinopoli and AAPA disclose the wire diameter, strength, and
ductility recited in claim 1. See Final Act. 5; see also Ans. 3^4. Appellant
does not provide persuasive evidence or argument apprising us of Examiner
error.
In addition, we disagree with Appellant’s contention that the
Examiner “discounts/ignores” the recited ISO performance guidelines. Br.
18—19; see also id. at 14. Rather, the Examiner takes the position that the
modified Bowen device (i.e., the combined teachings of Bowen, Steiner,
Hauber, Sinopoli, AAPA, and Fawley) and the subject invention are
“structurally similar” and “[s]imilar structure behaves similarly under
similar condition.” See Final Act. 6, 23. As such, the Examiner concludes
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that the modified Bowen device “teaches that the finished cylinder forms a
light reduced weight high toughness structure that meet[s] as functionally
claimed a leak before fail mode to prevent catastrophic failure and meets
ISO 11439 performance guidelines.” See id. Appellant does not provide
persuasive evidence or argument apprising us of Examiner error. In
particular, Appellant does not apprise us how the Examiner’s proposed
combined teachings of Bowen, Steiner, Hauber, Sinopoli, AAPA, and
Fawley fail to meet the recited ISO performance guidelines.
Appellant contends that the Examiner engages in impermissible
hindsight in combining the references. Br. 18.
We are not persuaded. The Examiner cites specific teachings in the
references themselves, as well as Appellant’s Admitted Prior Art (AAPA),
in support of the Examiner’s articulated reasoning for combining the
references as proposed in the rejection. See Final Act. 2—6.
Appellant presents additional evidence contending non-obviousness
via the Prakash Declarations. See Br. 36-45, Evidence App., Exhibits A
and B. The arguments presented in the Prakash Declaration I appear to be
directed to the DeLay reference, which is not commensurate with the
Examiner’s rejection of claim 1 based on the combined teachings of
Bowen, Steiner, Hauber, Sinopoli, AAPA, and Fawley. See, e.g., Br. 37,
Evidence App., Exhibit A, Prakash Declaration 1:2. Therefore, the
arguments presented in the Prakash Declaration I are moot.
Regarding the Prakash Declaration II, Appellant’s rebuttal evidence
does not address the combined teachings of Bowen, Steiner, Hauber,
Sinopoli, AAPA, and Fawley as proposed by the Examiner. See Br. 41—45,
Evidence App., Exhibit B, Prakash Declaration II: 1—4; see also Final Act.
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2—6. Moreover, to the extent that the Prakash Declaration II evinces praise
by others and recognition of a problem, the presented evidence is not so
great as to outweigh the evidence of obviousness presented by the
Examiner.
Having considered all the evidence presented by Appellant against
obviousness and weighing such evidence anew, we discern no error in the
Examiner’s analysis and reasoning on the issue of secondary
considerations. As such, Appellant has not overcome the prima facie case
of obviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the
court balanced the Office’s case against the strength of appellant’s
objective evidence of non-obviousness.).
Lastly, Appellant contends that (1) “[t]he examiner refused to receive”
the Declaration filed July 10, 2014, and (2) the Department of Energy
(DOE) “reported . . . interest in Dr. Prakash’s invention and funding
levels.” See Br. 17.
As an initial matter, we note that entry or non-entry of rebuttal
evidence is not an appealable matter, but rather is a petitionable matter, and
thus is not within the jurisdiction of the Board. See In re Mindick, 371 F.2d
892, 894 [1967] (holding that the refusal of an examiner to enter an
amendment of claims is reviewable by petition under 37 C.F.R. § 1.181, and
not by appeal to the Board). As such, we express no opinion regarding the
Examiner’s non-entry of the July 10, 2014 Declaration.
In the Answer, the Examiner notes that “to be entitled to substantial
weight, [Appellant] should establish a nexus between the rebuttal evidence
and the claimed invention, i.e., objective evidence of nonobviousness must
be attributable to the claimed invention” and that “[t]he Federal Circuit has
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acknowledged that [Appellant] bears the burden of establishing nexus.”
Ans. 3. In this case, the Examiner determines that “Appellant[’s]
declaration regarding DOE interest in the invention by providing grant to
develop does not establish the nexus between the rebuttal evidence and the
claimed invention.” Id. Appellant does not apprise us of Examiner error.
Accordingly, and based on the record presented, we are not
persuaded the Examiner erred in rejecting independent claim 1 as obvious
over Bowen, Steiner, Hauber, Sinopoli, AAPA, and Fawley. Accordingly,
we sustain the Examiner’s rejection of claim 1 as obvious over Bowen,
Steiner, Hauber, Sinopoli, AAPA, and Fawley. We further sustain the
Examiner’s rejection of claims 3, 4, 6—9, and 18, which fall with claim 1.
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and DeLay
Claim 2
Claim 2 recites, “[t]he pressure vessel of claim 1 wherein the core is
first wrapped with a [sic.] resin covered ceramic fibers such as carbon,
fiberglass and subsequently wrapped with the steel wire with or without
other fibers.” Br. 32, Claims App.
The Examiner finds that “DeLay teaches that the core [35] is first
wrapped with . . . resin [25, fig 6] covered ceramic fibers such as carbon,
fiberglass [para 0015].” Final Act. 9. The Examiner concludes it would
have been obvious “to combine one known element in this case
Bowen/Steiner/Hauber/Sinopoli/[AAPA/]Fawley’s core with resin as
taught by DeLay, to obtain the predictable results of providing protection
from damages and/or leak detection.” Id. (citing MPEP 2143 (A)). The
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Examiner further notes that “ISO 11439 discloses the pressure vessel core
wrapped with a resin [45, fig 6] covered ceramic fibers such as carbon,
fiberglass [para 7.2.3.1].” Final Act. 9.
Appellant contends that
DeLay teaches the use of carbon fibers, but does not
suggest applying the resin and carbon fibers first and an outer
layer of a steel wire. It is not exactly clear how the examiner can
make this an obvious combination. Appellant reviewed all the
cited prior art disclosures and has failed to see this combination.
Furthermore, why the steel wire is used outside the carbon resin
fibers is not explained.
Br. 20.
DeFay discloses that “[i]n still another variant of the invention, the
first set of fibers 25 includes materials selected from the group consisting
of: carbon, high strength carbon, and steel” that “the method of forming an
improved pressure vessel 10 includes applying at least one layer of fabric
85 to the liner 35 or mandrel with a resin matrix 20. The fabric 85 includes
any of selected sets of fibers 25, 30” and that “[i]n a specific non-limiting
embodiment, tanks or pressure vessels 10 of the type contemplated here are
typically composed of a thin walled aluminum pressure vessel liner 35
which is overwrapped with a fiber/epoxy resin reinforcement 20.” DeFay
11 62, 91, 94, respectively; see also id. 1114, 40.
In view of DeFay’s disclosure, we agree with the Examiner that
DeFay discloses a core first wrapped with resin covered ceramic fibers,
such as carbon. See Final Act. 9. Moreover, Appellant acknowledges that
the Examiner is further proposing to “subsequently [wrap the modified
Bowen device] with the steel wire [of Sinopoli 12] with or without other
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fibers.” See Br. 20.10 Appellant does not apprise us of Examiner error.
In addition, Appellant does not apprise us of error in the Examiner’s
stated reason for combining DeLay with Bowen, Steiner, Hauber, Sinopoli,
AAPA, and Fawley, namely, “to combine one known element in this case
Bowen/Steiner/ Hauber/Sinopoli/[AAPA/]Fawley’s core with resin as
taught by DeLay, to obtain the predictable results of providing protection
from damages and/or leak detection.” See Final Act. 9.
Further, the Examiner does not engage in impermissible hindsight in
combining the references but cites specific teachings in the references
themselves, as well as Appellant’s Admitted Prior Art (AAPA), in support of
the Examiner’s articulated reasoning for combining the references as
proposed in the rejection. See Final Act. 9; see also Br. 21.* 11
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 2 as obvious over Bowen, Steiner, Hauber, Sinopoli,
AAPA, Fawley, and DeLay.
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Prakash
Claim 5
Claim 5 recites, “[t]he pressure vessel of claim 1 wherein the wires
are plated with copper, zinc, tin, brass or nickel.” Br. 32, Claims App.
Appellant contends that
[t]he examiner relies on the fact wires are plated for improved
adhesion. This admission seems unnecessary for this claimed
10 See also Final Office Action dated July 18,2012 at page 8; Non-Final Office
Action dated December 7, 2012 at page 9.
11 See id.
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invention in that the wrapping is done virtually continuously
around the cylinder to ends as described. It is more likely the
plating avoids corrosion.... If however, the wires are embedded
in rubber adhesion is a consideration .... In either case, the
plating of the wire is unique to this claimed invention.
Br. 21.
In response to Appellant’s argument, the Examiner states that “[i]n
this case, for composite material structure, [Prakash] has expressly taught
that the wires are plated with copper, zinc, tin, brass or nickel or ‘chemlock’
adhesives to enhance adhesion or corrosion resistance when embedded in the
matrix.” Ans. 5 (citing Prakash 134); see also Final Act. 10. 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. Appellant does not provide persuasive evidence or argument
apprising us of Examiner error. Moreover, Appellant acknowledges that
“adhesion is a consideration” for wires “embedded in rubber.” Br. 21.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 5 as obvious over Bowen, Steiner, Hauber, Sinopoli,
AAPA, Fawley, and Prakash.
Claim 11
Claim 11 recites, “[t]he pressure vessel of claim 1 wherein the wires
are covered with a polymer having metal powders such as zinc or
aluminum which provide cathodic corrosion protection.” Br. 34, Claims
App.
Appellant contends that
Prakash does not teach, suggest or mention a polymer coating
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with powdered aluminum or zinc to provide cathodic protection.
This Prakash prior art net was used for ballistic protection and
therefore corrosion resistance and hardened tungsten plating or
coating was taught using a powder polymer coating with
aluminum or zinc not cathodic corrosion resistance.
Br. 22.
In response to Appellant’s argument, the Examiner notes that
“Prakash teaches that the wires are covered with a polymer having metal
powders such as zinc or aluminum . . . which as functionally claimed
provide cathodic corrosion protection.” Ans. 6 (citing Prakash || 34—36).
The Examiner further notes “it has been held that the recitation that an
element [wire covered with polymer having metal powders] is performing a
function [provide cathodic protection] is not a positive limitation but only
requires the ability to so perform.” Id. Appellant does not apprise us of
Examiner error. In particular, Appellant does not apprise us how the
modified Bowen device, in further view of Prakash, as proposed by the
Examiner, would not have the ability to perform/be capable of providing
cathodic corrosion protection as claimed.
Accordingly, we sustain the Examiner’s rejection of claim 11 as
obvious over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Prakash.
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Bhagwat
Claim 12
Claim 12 recites, “[t]he pressure vessel of claim 1 wherein multiple
wires and cables are calendered in a rubber or polymer, proper width cut
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and wrapped over the core of the pressure vessel with wires running
substantially transverse to the longitudinal axis of the vessel and wherein
the start and end lines of the calendered treatment has an over lap of over 5
cm.” Br. 34, Claims App.
The Examiner finds that
[Steiner] discloses that the start and end lines of the calendered
treatment has an overlap [fig 1]. However is silent about the
length being over 5 cm. It would have been obvious to one
having ordinary skill in the art at the time of the invention to
make overlap of over 5 cm. as claimed. Since the Federal Circuit
held that, where the only difference between the prior art and the
claims was a recitation of relative dimensions of the claimed
device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the
claimed device was not patentably distinct from the prior art
device. MPEP2144.04 IV A.
Final Act. 11.
In response, Appellant notes that an overlap above 5 cm is not “taught
or suggested in any prior art document cited.” Br. 23. In addition,
Appellant contends that
[w]hen unvulcanized calendered wire is used in tire construction,
the overlap use is reduced to an absolute minimum to avoid tire
imbalance and uniformity issues. The use of a 5 cm overlap is a
huge amount of material. This length was determined to be
required to keep the overlap intact during pressurized core
expansion of up to 10% to burst.
Br. 23—24; see also Spec. 145.12
12 The Specification describes that “the starting and finish part of the
calendered fabric can have an overlap where the finish end will extend beyond
the underneath starting end on the circumference of the core. An over lap of
more than 5 centimeters is recommended.” Spec. 145.
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Appellant has the better position here. The Examiner fails to provide
sufficient evidence or technical reasoning to support the finding that it
would have been obvious “to make [the start and end lines of the
calendered treatment of the modified Bowen device to have an] overlap of
over 5 cm. as claimed.” Final Act. 11; see also Ans. 7.
Accordingly, we do not sustain the Examiner’s rejection of claim 12
as obvious over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Bhagwat.
Claim 13
Claim 13 recites, “[t]he pressure vessel of claim 1 wherein multiple
wires and cables are calendered in a rubber or polymer, proper length cut
and wrapped over the core of the pressure vessel with wires running
parallel to the longitudinal axis of the vessel.” Br. 34, Claims App.
Appellant contends that
[Claim 13] has the wires wound parallel along the body of the
cylinder. This may seem inconsequential, but when this is
achieved, the wire length is at a minimum distance. This means
the stretch on the wire during expansion of the cylinder is
instantaneous as there is no helix angle to constrict each wire as
loaded resisting expansion and thus stretching occurs right away.
This feature is unique in the art and not taught or suggested.
Br. 24.
As an initial matter, we note that claim 13 recites nothing about the
“the wires [being] wound parallel along the body of the cylinder” or “the
wire length [being] at a minimum distance.” See Br. 24; id. at 34, Claims
App.; In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not
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appearing in the claims cannot be relied upon for patentability). Although
the claims are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993); see also Ans. 7. Claim 13 merely requires “wires
running parallel to the longitudinal axis of the vessel.” See Br. 34, Claims
App. In this case, the Examiner finds that Bhagwat discloses wires running
approximately parallel to the longitudinal axis of the vessel. See Final Act.
12; see also Ans. 7. Appellant does not apprise us of Examiner error.
Accordingly, we sustain the Examiner’s rejection of claim 13 as
obvious over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Bhagwat.
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Paine
Claim 14
Claim 14 recites, “[t]he pressure vessel of claim 1 wherein two or
more rings of metal or polymer are placed on the core to facilitate winding
and retention of wrap fibers.” Br. 34, Claims App.
Appellant contends that “Paine teaches an electrical conductor with
the wire ends passing through cylinders, see figures 1, 3, 5 or 7; these
cylinders, the examiner calls rings cannot be placed over the core. . . . The
ring at a minimum must fit over the core.” Br. 25 (emphasis added).
Appellant’s contention is not persuasive because claim 14 recites
nothing about the rings being “placed over the core.” See Br. 25; id. at 34,
Claims App.; In re Self, 671 F.2d at 1348; In re Van Geuns, 988 F.2d at
1184; see also Ans. 7—8. Appellant elected to define the claimed subject
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matter using language that omits limitations found in the Specification and
we will not now import those limitations into the claims. The Federal
Circuit has “repeatedly held that the fact that the specification describes only
a single embodiment, standing alone, is insufficient to limit otherwise broad
claim language.'’'’ Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337, 1345 (Fed. Cir. 2008) (emphasis added). In this case, claim
14 merely recites that the rings are “placed on the core.” Br. 34, Claims
App. (emphasis added).
The Examiner finds that
Paine teaches two or more rings or ferrules [22, fig 1] of metal
[2:30] or polymer are placed on the core [20] to facilitate winding
and retention of wrap fibers [12] or to retain the starting and
finishing portions of the wrap fiber. Steiner further discloses that
mechanical means are used to hold wires end [1:33-36 and fig 1].
It would have been obvious to one having ordinary skill in the art
at the time of the invention to provide
Bowen/Steiner/Hauber/Sinopoli/Fawley wires with metal rings
with as taught by Paine as a holding means to retain wrap
material. It has been held that when element is functionally
claimed, e.g., to facilitate or to retain, is considered a functional
language and is treated as intended use or result to be achieved
and only requires the ability to so perform.
Final Act. 12; see also Ans. 7—8. Appellant does not provide persuasive
evidence or argument apprising us of Examiner error. In particular,
Appellant does not apprise us how the modified Bowen device, in further
view of Paine and/or Steiner, as proposed by the Examiner, would not have
the ability to perform/be capable of facilitating winding and retention of
wrap fibers as claimed.
Accordingly, we sustain the Examiner’s rejection of claim 14 as
obvious over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and Paine.
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Claim 15
Claim 15 recites, “[t]he pressure vessel of claim 1 wherein polymer
or metal ferrules are used to retain the starting and finishing portions of the
wrap fiber.” Br. 34, Claims App.
Appellant contends that “Paine shows ferrules, but in an electrical
connector for bolting to a structure. It is not clear how Paine teaches or
suggests the use of ferrules in the claimed combination.” Br. 25.
To the extent Appellant is 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 at 425; see also Ans. 8. “Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Keller, 642 F.2d at 425 (citations omitted); see also Ans. 8. In
this case, the Examiner finds that
Paine teaches two or more rings or ferrules [22, fig 1] of metal
[2:30] or polymer are placed on the core [20] to facilitate winding
and retention of wrap fibers [12] or to retain the starting and
finishing portions of the wrap fiber. Steiner further discloses that
mechanical means are used to hold wires end [1:33-36 and fig 1].
It would have been obvious to one having ordinary skill in the art
at the time of the invention to provide
Bowen/Steiner/Hauber/Sinopoli/Fawley wires with metal rings
with as taught by Paine as a holding means to retain wrap
material. It has been held that when element is functionally
claimed, e.g., to facilitate or to retain, is considered a functional
language and is treated as intended use or result to be achieved
and only requires the ability to so perform.
Final Act. 12; see also Ans. 8. Appellant does not provide persuasive
evidence or argument apprising us of Examiner error. In particular,
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Appellant does not apprise us how the modified Bowen device, in further
view of Paine and/or Steiner, as proposed by the Examiner, would not have
the ability to perform/be capable of retaining the starting and finishing
portions of the wrap fiber as claimed.
Accordingly, we sustain the Examiner’s rejection of claim 15 as
obvious over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and Paine.
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Seal
Claims 16 and 19
Appellant does not offer arguments in favor of dependent claims 16
and 19 different from those presented for independent claim 1. Br. 26. As
discussed above, these arguments are not persuasive.
Accordingly, for the same reasons discussed above for claim 1, we
likewise sustain the Examiner’s rejection of claims 16 and 19 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Seal.
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, Seal, and Pechacek
Claim 17
Claim 17 recites, “[t]he pressure vessel of claim 1 wherein the core is
made of a steel alloy having 0.2 to 1.5% chromium and is coated or plated
with copper or nickel from inside.” Br. 34, Claims App.
Appellant presents arguments for dependent claim 17 similar to those
presented for independent claim 1 (i.e., “destroying the claimed purpose of
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Bowen’s invention”). Br. 27. As discussed above, these arguments are not
persuasive.
Appellant further argues that
[t]he Pechacek inner shell is stainless steel or other metal.
Whereas the claimed material of the core in claim 17 is a steel
alloy having 0.2 to 15% chromium which is also coated or plated
with copper or nickel from the inside. It is not clear why
Pechacek would add coating or plating to stainless steel and as
read, he makes no mention of such a combination.
Id.
Appellant’s argument does not respond to the rejection as proposed
by the Examiner. First, the Examiner points out that Appellant “admitted
that SAE 4130 to 4140 series has 0.6 to 1.5% chromium.” Final Act. 14
(citing Spec. 137). Second, the Examiner clarifies in the Answer that “Seal
discloses that composite overwrapped pressure vessels (COPVs) core is
coated or plated with copper to retard diffusion/permeability of stored
content under high internal pressure a problem long associated with storage
vessel[s] or containers.” See Ans. 9 (citing Seal 3:35—43); see also Final
Act. 14. Appellant does not apprise us of Examiner error.
In addition, the Examiner does not engage in impermissible hindsight
in combining the references but cites specific teachings in the references
themselves, as well as Appellant’s Admitted Prior Art (AAPA), in support of
the Examiner’s articulated reasoning for combining the references as
proposed in the rejection. See Final Act. 14; see also Ans. 9; Br. 27.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 17 as obvious over Bowen, Steiner, Hauber, Sinopoli,
AAPA, Fawley, Seal, and Pechacek.
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Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA,
Fawley, and Prakash
Claim 10
Regarding claim 10, the Examiner finds that “Bowen/Steiner/Hauber/
Sinopoli/[AAPA/]Fawley discloses the claimed invention as discussed and
further modified with the following claimed limitation that is taught by
Prakash. Prakash expressly teaches, metal wires are covered with a polymer
having more than 5% elongation at break.” See Final Act. 18 (citing Prakash
142); see also id. at 15.
Prakash discloses that “[t]he composite with a matrix mechanically
locked to a net structure can greatly improve the toughness of the
composite.” Prakash 141 (emphasis added). Prakash further discloses that
[i]n one test of the present invention, a polyester resin
based composite having 18 volume percent wire net, wherein the
wire strength was 110 KSI, showed a composite strength of 13.5
KSI, modulus of 1.7 MSI, total percent elongation 35% and a
notched [i]zod toughness of 29 ft-lb/in. This represents an
increase in notched izod toughness of 2 or more times over
comparable strength composites. Advanced bi-directional
composites of high strength in the range 15 to 50 KSI have been
developed, but when compared to the present invention, these
advanced bi-directional composites, such as Kevlar reinforced
epoxy or glass reinforced epoxy composites, would be less than
half the notched izod toughness. Only enhanced advanced bi­
directional composites that have been enhanced through costly
additives of additional toughening agents which are not
comparable to the present invention can even approach the
toughness achieved by the present invention.
Id. 142 (emphasis added).
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Claim 10 recites that “the wires are covered with a polymer having
more than 5% elongation at break.” Br. 33, Claims App. (emphasis added).
Based on our understanding, “toughness” refers to “a measure of the energy
a sample can absorb before it breaksSee http://www.pslc.ws/macrog/
mech.htm (emphasis added) (last visited October 17, 2017); see also Spec.
13 (“High toughness materials are therefore necessary for the construction
of a pressure vessel to exceed the fracture mechanics based ‘leak-before-
fail’ requirement.”) (emphasis added). Given that the portion of Prakash
cited by the Examiner refers to “toughness” of the composite (i.e., a
measure of the energy before the composite breaks), the Examiner fails to
provide sufficient evidence or technical reasoning to support the finding
that Prakash discloses “[wires] covered with a polymer having more than
5% elongation at break.” See Final Act. 18 (emphasis added); see also
Ans. 9; Br. 29.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 10 as obvious over Bowen, Steiner, Hauber, Sinopoli,
AAPA, Fawley, and Prakash.13
Obviousness over Bowen, Steiner, Hauber, Sinopoli, AAPA, and Fawley
Claim 21
Independent claim 21 recites, “each strand being a steel monofilament
wire having a diameter of 0.35 mm and a strength of 3500 MPa and where
the wire has a plastic ductility of over 20% in reduction in area (RA) at
13 Because we determine that the Examiner fails to provide sufficient evidence
to support a prima facie case of obviousness, we do not reach the objective
rebuttal evidence of the Prakash Declarations.
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tensile fracture.” Br. 35, Claims App. Similar to independent claim 1, the
Examiner finds that
Sinopoli teaches use of steel wire of one or more strands, each
strand being monofilament wire of 0.35 mm [0.3 mm/0.35 mm,
para 0045] diameter of strength in the range of greater than 3000
MPa to 6000 MPa [4000 MPa, para 0055] [App[ellant] has
admitted in para 0006 that, Currently 3500 MPa strength steels
wires in the diameter range 0.15mm to 0.38mm are used in most
pneumatic radial tires for use on passenger, light truck, medium
truck and other applications] and where the wire has a plastic
ductility of over 20% in reduction in area (RA) at tensile fracture
[App[ellant] has admitted in para 0030 and 0031 that
commercially available wires called “ultra tensile wire” exceeds
this ductility].
Final Act. 21.
Sinopoli discloses (1) ‘“High Tensile Steel (HT)’ means a carbon steel
with a tensile strength of at least 3400 Mpa,” (2) “‘Super Tensile Steel
(ST)’ means a carbon steel with a tensile strength of at least 3650 Mpa,”
and (3) “‘Ultra Tensile Steel (UT)’ means a carbon steel with a tensile
strength of at least 4000 Mpa.” See Sinopoli ^fl[ 31—33, respectively. In
other words, Sinopoli does not disclose that “3500 Mpa” constitutes “Ultra
Tensile Steel (UT).” Appellant’s Specification discloses that “ultra tensile
wire” constitutes wire having a tensile strength of 4000 MPa and a tensile
strength of 4000 MPa exceeds an RA ductility over 20%. See Spec. ^fl[ 30,
31. Stated differently, the Specification does not disclose that a tensile
strength of “3500 MPa” constitutes an “ultra tensile wire” or that a tensile
strength of “3500 MPa” exceeds an RA ductility over 20%. See id. As
such, the Examiner fails to provide sufficient evidence or technical
reasoning to support the finding that the combined teachings of AAPA and
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Sinopoli disclose that a wire having a diameter of 0.35 mm and a strength
of 3500 MPa “has a plastic ductility of over 20% in reduction in area (RA)
at tensile fracture,” as claimed. See Final Act. 21; see also Ans. 10; Br. 30.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 21 as obvious over Bowen, Steiner, Hauber, Sinopoli,
AAPA, and Fawley.14
DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 3, 4, 6—9, and
18 as unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, and
Fawley.
We AFFIRM the Examiner’s decision to reject claim 2 as unpatentable
over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and DeLay.
We AFFIRM the Examiner’s decision to reject claims 5 and 11 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Prakash.
We REVERSE the Examiner’s decision to reject claim 12 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Bhagwat.
We AFFIRM the Examiner’s decision to reject claim 13 as unpatentable
over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and Bhagwat.
14 Because we determine that the Examiner fails to provide sufficient evidence
to support a prima facie case of obviousness, we do not reach the objective
rebuttal evidence of the Prakash Declarations.
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We AFFIRM the Examiner’s decision to reject claims 14 and 15 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Paine.
We AFFIRM the Examiner’s decision to reject claims 16 and 19 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Seal.
We AFFIRM the Examiner’s decision to reject claim 17 stands as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, Seal,
and Pechacek.
We REVERSE the Examiner’s decision to reject claim 10 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, Fawley, and
Prakash.
We REVERSE the Examiner’s decision to reject claim 21 as
unpatentable over Bowen, Steiner, Hauber, Sinopoli, AAPA, and Fawley.
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
27