Ex Parte Quinn et al

Patent Trial and Appeal Board

Apr 18, 2017

13970228 (P.T.A.B. Apr. 18, 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.
13/970,228 08/19/2013 Christopher Quinn 10436.2 6476
96605 7590
Dodd Call Black, PLLC
370 S 300 E
Salt Lake City, UT 84111
EXAMINER
VINEIS, FRANK J
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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):
docketing @ dcbip .com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER QUINN, REED QUINN, KIT MORRISON,
and MATTHEW HAWKES
Appeal 2016-000794
Application 13/970,228
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—5, 7—18, and 20-22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-000794
Application 13/970,228
BACKGROUND
The subject matter on appeal relates to a repair wrap for repairing or
strengthening an inanimate object, which includes a fabric pre-impregnated
with a hardening material. Specification, hereinafter “Spec.,” 8, 9, 51.
Representative claim 1 is reproduced from page 18 of the Appeal
Brief (Claims Appendix), as follows:
1. A repair system, the repair system comprising:
an inanimate object having first and second portions and a broken
portion positioned between the first and second portions;
a fabric, wherein the fabric includes one or more fibers; and
a hardening material, wherein the hardening material:
is pre-impregnated in the fabric in an inactivated state; and
the amount of pre-impregnated hardening material is sufficient
to completely saturate the fabric;
wherein the pre-impregnated fabric is wrapped around the first and
second portions of the inanimate object in direct contact with the inanimate
object; and
wherein curing the hardening material forms a shell about the first and
second portions of the inanimate object.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Leong, etal. US 2012/0245284 A1
(hereinafter “Leong”)
Robinson, et al. US 2008/0017263 A1
(hereinafter “Robinson”)
Callinan, et al. US 5,540,652
(hereinafter “Callinan”)
http://water.me.vccs.edu/concepts/material.html
(hereinafter “Pipe Materials”)
Sept. 27, 2012
Jan. 24, 2008
July 30, 1996
Sept. 19, 2004
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REJECTIONS ON APPEAL1
I. Claim 21 under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement (Non-Final Act.2 3; Ans. 2);
II. Claim 21 under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement (Non-Final Act. 3—5; Ans. 2-4);
III. Claim 21 under 35 U.S.C. § 112(b) as being indefinite (Non-Final
Act. 5; Ans. 4);
IV. Claims 1—5, 8, 10, 11, 14, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Robinson (Non-Final Act. 8—9; Ans. 4—7);
V. Claims 1—3, 8—13, 15—17, and 20—21 under 35 U.S.C. § 103(a) as
unpatentable over Callinan (Non-Final Act. 10-13; Ans. 7—11);
VI. Claims 4, 5, and 7 under 35 U.S.C. § 103(a) as unpatentable over
Callinan in view of Leong (Non-Final Act. 13; Ans. 11); and
VII. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Callinan
in view of Pipe Materials (Non-Final Act. 13—14; Ans. 11).
DISCUSSION
Rejection I
The Examiner finds that the limitation “wherein the shell has a load
strength of at least 1500 pounds” lacks written description support because
“[paragraph 49 does not support the breadth of claim 21, i.e. any fibrous
1 The Examiner withdrew the rejection of claims 1—5, 8, 10, 11, 14, 21, and
22 under 35 U.S.C. § 102(a)(1) as being anticipated by Robinson (Non-final
Act. 5—8). Ans. 12.
2 Non-Final Office Action dated January 5, 2015.
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substrate,” and because “the example in paragraph 49 is a wrap around a
pipe [and] it is not clear the results are not tied to the substrate” being
repaired, where the same load strength can be achieved with other inanimate
objects. Non-Final Act. 3; Ans. 2. The Examiner finds further that “[t]he
skilled artisan would not have recognized Appellants were] in possession of
the claimed invention because the claim recites no limitations regarding the
type of fiber, the type of resin, or the type of fabric (e.g. knit), or the fabric
properties (e.g. density).” Ans. 14.
Appellants argue that written description for this limitation appears at
149 of the Specification because it “describes tests of two different repair
systems that had a load strength of at least 1500 lbs.” Appeal Br. 6.
Appellants urge that the lack of detail provided in 149 “is irrelevant for
determining whether the written description [requirement] has been met.”
Id. Appellants contend further that the Examiner requires an explicit
recitation of the disputed limitation and, by so doing, violates the proper
standard for assessing compliance with the written description requirement
under 35 U.S.C. § 112(a). Reply Br. 4—5. Appellants urge that their Appeal
Brief addresses the Examiner’s concerns raised in “paragraph 9 on page 3 of
the office action regarding the effect of fiber type, resin type, density and
amount of hardening material.” Id. at 5.
We are not persuaded of reversible error by Appellants’ arguments.
Here, Appellants’ Brief (Appeal Br. 6) directs us to one example
which compares the purported “load strength” of polyester and fiberglass
fabrics on a substrate of metal pipe, wherein “[t]he fiberglass application
stayed straight under the load and the polyester started to deform.” Spec.
149. Appellants provide no specifics regarding the densities of the tested
fabrics, what hardening materials are used in this example, whether such
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hardening materials are pre-impregnated into the fabrics in an inactivated
state, or whether the amounts of hardening material are sufficient to
completely saturate the two tested fabrics.
“The purpose of the written description requirement ‘is to ensure that
the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor's contribution to the field of art as
described in the patent specification.’” In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011), citing
Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000). Because
claim 21 does not limit the broad class of fabrics or hardening materials used
to form the shell, we agree with the Examiner’s finding that the breadth of
claim 21 is not supported by 149 of Appellants’ Specification.
Nor are we persuaded by Appellants’ argument that the Examiner is
applying an improper standard for assessing whether the written description
requirement is met. Reply Br. 4. The Examiner properly laid out the
requirement under 35 U.S.C. § 112(a) (Non-Final Act. 2) and then explained
how claim 21 failed to meet this requirement. The Examiner’s statement
regarding the lack of an “explicit recitation of the limitation of claim 21”
(Ans. 13) is merely one of many observations the Examiner makes about the
written description deficiencies of claim 21. Non-Final Act. 3, 14; Ans. 2,
13—15. We also emphasize that, contrary to Appellants’ assertion (Reply Br.
5), Appellants have not addressed with sufficient specificity the full scope of
the Examiner’s findings regarding how claim 21 lacks written description
support.
We, therefore, sustain Rejection I.
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Rejection II
Factors to be considered in determining whether a disclosure
would require undue experimentation... include (1) the quantity
of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In analyzing the Wands factors, the Examiner makes multiple factual
findings regarding, inter alia, the breadth of claim 21, and the lack of details
in Appellants’ disclosure, and then concludes that claim 21 is non-enabled as
requiring undue experimentation because “a skilled artisan would have to
test virtually every fiber type, every knit pattern, and every resin type in
hopes of achieving load strengths of greater than 1,500 [pounds].” Non-
Final Act. 4—5.
In their arguments, Appellants do not address the full scope of the
Examiner’s findings that “[t]he claim recites a knit fabric but [there are] no
limitations regarding the type of knit, fiber, [or] resin” and how the
Specification’s “only example . . . provides no details regarding the fibers,
the fabric (i.e. if it is knit or woven), the resin, or the amount of resin.” Id. at
4. Rather, Appellants focus on the Examiner’s findings that claim 21 “has
no upper limit and as such claims all values from 1500 pounds through
infinity,” and does not limit the “inanimate object type.” Id.
Appellants’ arguments are not persuasive of reversible error because
Appellants do not address the full scope of the Examiner’s findings
regarding the breadth of claim 21 as to type of knit, fiber, or resin used to
achieve the purported load strength. Accordingly, Appellants do not reveal
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error in the Examiner’s conclusion that undue experimentation would be
necessary to practice the full scope of claim 21.
We, therefore, sustain Rejection II.
Rejection III
The Examiner rejects claim 21 for reciting “a load strength.”
Non-Final Act. 5; Ans. 4.
We decline to reach this rejection because we do not believe it is
necessary to address the definiteness of a claim that is both non-enabled and
lacks written description support, and because our affirmance of the lack of
written description and enablement rejections (i.e., Rejections I and II)
disposes of claim 21.
Thus, we express no opinion regarding the propriety of Rejection III.
Rejection IV
The Examiner finds that Robinson teaches the limitations of claims
1—5, 8, 10, 11, 14, and 21—22 except, inter alia, that Robinson does not
disclose pre-impregnation of the fabric with the resin. Non-Final Act. 8—9;
Ans. 4—6. The Examiner also finds that “the final product [of Robinson]
would be structurally the same, i.e. a resin impregnated fabric wrapped
around a pipe.” Non-Final Act. 9; Ans. 5.
Appellants argue that “the Examiner concedes that [Robinson] is
silent as to the pre-impregnation”. Appeal Br. 11. Appellants contend
further that “claim 1 is not a ‘product-by-process’ claim” because it “does
not refer to the making of the repair wrap.” Id.
Appellants’ arguments are persuasive of reversible error. The
Examiner indeed notes that Robinson fails to teach the fabric is
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pre-impregnated. Non-Final Act. 8. The Examiner then incorrectly uses a
product-by-process rationale to arrive at the conclusion that Appellants’
product claims are obvious. Id. Central to the Examiner’s rationale is the
proposition that because “Applicant now claims a pre-impregnated fabric
wrapped around an inanimate object[,] the final product would be
structurally the same, i.e. a resin impregnated fabric wrapped around a
pipe.” Id. at 9 (emphasis added).
We disagree with the Examiner’s determination that Appellants’
claimed “product” is “a resin impregnated fabric wrapped around a pipe.”
Id. Rather, the claimed product recited in claim 1 is “[a] repair system”
which requires three physical components: an inanimate object, a fabric, and
a hardening material, and the claimed hardening material component is
required to be “pre-impregnated in the fabric in an inactivated state.”
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Because the Examiner fails to establish that Robinson describes or
suggests pre-impregnation of the hardening material in the claimed fabric, or
that such pre-impregnation would have been obvious, we do not sustain
Rejection IV.
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Rejection V
The Examiner finds that Callinan teaches all recited elements of
independent claims 1 and 13, but “does not teach the fabric is completely
saturated with the resin.” Non-Final Act. 9—11; Ans. 7—9. The Examiner
concludes that “it would have been obvious to one of ordinary skill in the art
at the time the invention was made to optimize the amount of resin” present
in the fabric and determined that “[t]he burden is upon the [Appellants] to
demonstrate that the claimed amount is critical and has unexpected results.”
Non-Final Act. 11; Ans. 9.
Appellants contend that the “Examiner’s rejection of claim 1 over
[Callinan] suffers at least the same [deficiencies] noted above in relation to
[Robinson].” Appeal Br. 13. As an initial matter, we caution Appellants
that simply pointing to previous arguments made with respect to a rejection
based on one reference, without any explanation as to why such arguments
are relevant to a rejection based on a different reference, poses a significant
risk of running afoul of our Rules. Specifically, we emphasize that
“arguments shall explain why the examiner erred as to each ground of
rejection contested.” 37 C.F.R. § 41.37(c)(l)(iv) (emphasis added). “[An
appeal] brief must make all arguments accessible to the judges, rather than
ask them to play archaeologist with the record.” DeSilva v. DiLeonardi, 181
F.3d 865, 867 (7th Cir. 1999).
In the present case, Appellants’ naked assertion that the present
rejection based on Callinan is deficient for the same reasons as the rejection
based on Robinson does not comply with our Rule requiring an appropriate
explanation why the Examiner erred as to each ground of rejection. Indeed,
most of Appellants’ arguments against Rejection IV based on Robinson (i.e.,
the Examiner’s finding of an equivalency of “substantial” and “complete”
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saturation (Appeal Br. 9); the addition of activated resin to dry fibers (id.);
and the lack of Robinson’s pre-impregnation of resin (id. at 11—13)) have
nothing at all to do with present Rejection V based on Callinan. This Board
should not be required to sift through Appellants’ arguments made against a
rejection based on one reference to speculate as to the propriety of such
arguments made against a different rejection based on a different reference.
“Judges are not like pigs, hunting for truffles buried in briefs.” United States
v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991).
Thus, because Appellants fail to comply with Rule 41.37(c)(l)(iv), we
only address the substance of those arguments made specific to Rejection V,
as well as those arguments Appellants make against Rejection IV that appear
to us to be potentially relevant to Rejection V: 1) the criticality of saturation
(Appeal Br. 9—10), and 2) the discovery of source or cause of the problem
(id. at 10-11). To the extent Appellants intended for us to apply other
arguments made against Rejection IV to present Rejection V, we decline to
consider such arguments because they fail to comply with our Rule 41.37.
Appellants argue claims 1—3, 8—12, 15—17, and 20—21 as a group
(Appeal Br. 9-11, 13—14) and argue claim 13 separately (id. at 14—15). We
therefore decide the propriety of this rejection on the basis of claims 1 and
13. Dependent claims 2—3, 8—12, 15—17, and 20-21 will stand or fall with
independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
Appellants first contend that the “criticality of complete saturation has
been demonstrated” by pointing to 1 52 of their Specification and noting that
complete saturation, “1) prevents channels forming throughout the curing
process; 2) allows for a water tight seal; 3) maximizes strength of repair; and
4) prevents weak spots within the repair.” Appeal Br. 9-10. Appellants
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urge that “[n]one of these benefits are described in any prior art reference
cited by the Examiner” because “the benefits cannot be stated since the prior
art fails to teach complete saturation.” Id. at 10.
We are not persuaded by Appellants’ criticality arguments.
Specifically, we observe that claim 1 does not require the resulting shell that
is formed about the portion of the inanimate object to be without channels or
sealed so that it is “water tight.” Nor does claim 1 require any specific
repair strength or prevention of weaknesses therein.
Rather, claim 1 recites that “the amount of pre-impregnated hardening
material is sufficient to completely saturate the fabric.” To the extent that
Appellants are arguing that lack of channel formation, a water tight seal, and
a strong repair would be inherent results of using the claimed amount
“sufficient to completely saturate the claimed fabric,” we are likewise
unpersuaded. In this regard, Appellants reproduce a portion of 1 52 of their
Specification to support their position that “the criticality of complete
saturation has been demonstrated.” Appeal Br. 9.
A careful reading of 1 52 in its entirety, however, does not support
Appellants’ contention. Specifically, 1 52 states, in relevant part, that “[t]he
ratio of hardening material to fabric is critical to produce the desired
properties” and that “[t]he ideal amount of hardening material 104 is the
amount that just barely but completely saturates the cloth.” Spec. | 52
(emphasis added). The Specification then explains how “too much
hardening material 104 will ruin the water tight property of the wrap”
because of the possibility of gas generation during the curing process, which
may form bubbles that connect, which in turn may cause water-leakage
channels to form. Id. Conversely, | 52 states that “[likewise too little
hardening material 104 is just as problematic” because “there will be dry
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places in the fibers” resulting in leaks and significant reduction in the
strength and the rigidity of the repair.
Thus, if 1 52 evinces any criticality, such criticality appears to be
based on having a precise amount or ratio of hardening material to fabric
(i.e., “just barely but completely” saturating the cloth). According to
Appellants’ Specification, either too much or too little hardening material
present in the fabric causes leaks and/or reduced strength of the repair.
Spec. 1 52. Claim 1, however, is not limited to such a precise amount or
ratio of hardening material to fabric. Rather, claim 1 simply recites “the
amount of pre-impregnated hardening material is sufficient to completely
saturate the fabric.” Because Appellants do not point us to any definition of
what they regard as “completely saturate[d]” (e.g., the upper and lower
boundaries for the amounts or ratios of pre-impregnated hardening material
in the claimed fabric), we determine that claim 1, as written, includes
amounts of pre-impregnated hardening material that are greater than those
amounts upon which Appellants rely to demonstrate criticality of the
claimed subject matter (i.e., “just barely but completely saturates”). It
follows, then, that based on Appellants’ relied-upon disclosure (Spec. 1 52),
the repair kit of claim 1 does not necessarily have the argued properties, and,
absent actual evidence to the contrary, Appellants’ criticality arguments as to
claim 1 are unavailing.
For the same reasons, we are likewise unpersuaded by Appellants’
arguments that “the discovery of the source or cause of the problem (gas
formation during curing) and the unexpected improvement derived
therefrom (the lack of channels and creation of a water tight seal) renders the
Examiner’s rejection improper and in clear error” (Appeal Br. 11), and that
Callinan teaches away because it “teaches that the fabric should NOT be
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saturated in order to create ‘porosity’” {id. at 13). Contrary to Appellants’
assertion, claim 1 does not require the resulting seal to either lack pores or
channels, or to be water tight, and Appellants have provided no evidence
that such properties would be inherent in the repair system of claim 1. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Appellant’s arguments fail from
the outset because . . . they are not based on limitations appearing in the
claims.”).
In view of the above, Appellants have failed to identity reversible
error in the rejection of claim 1 as being obvious under 35 U.S.C. § 103(a)
over Callinan, and we sustain the rejection of this claim. Because claims
2—3, 8—12, 15—17, and 20-21 are not argued separately (Appeal Br. 15), they
fall with independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 13
Claim 13 is directed to a repair system similar to independent claim 1,
but requires that “the shell is water tight.” The Examiner finds that
“Callinan teaches in addition to orthopedic support materials the resin coated
substrates may be wrapped around pipes to stop leaks.” Final Act. 10, citing
Callinan, 17:35—60. The Examiner also finds that Callinan discloses other
uses of its resin-coated substrates curing to form a “substantially waterproof
cast,” and interprets Callinan’s waterproof material as the claimed water
tight shell. Id., citing Callinan, 5:25—60.
Appellants state that “[cjlaim 13 includes language similar to claim 1
and is, therefore, allowable for at least the same reasons articulated above.”
Appeal Br. 15. We do not consider such statements to be separate
arguments per our Rule 41.37 which requires an explanation as to why the
examiner erred.
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Appellants focus their substantive arguments against the rejection of
claim 13 on the Examiner’s interpretation of waterproof not being equivalent
to “water tight” as recited in the claim. (Appeal Br. 14—15; Reply Br. 11—
12). Specifically, Appellants attempt to contrast their water tight shell with
Callinan’s “substantially waterproof cast” by characterizing the claimed
subject matter as “a shell which does not allow water to pass through the
cured shell (or ‘prevents] water leakage’ as stated in paragraph [0068] of
the filed specification).” Reply Br. 11. Appellants fail to address, much less
distinguish their claims from, the Examiner’s finding regarding Callinan’s
additional disclosure at column 17 regarding Callinan’s “coated substrates
can be used to wrap pipes for joining, reinforcement, [and] leak stoppage.”
Callinan, 17:41—43 (emphasis added).
Because Appellants do not address the full scope of the rejection as
set forth by the Examiner, this argument does not reveal error in the
Examiner’s obviousness conclusion. Accordingly, Appellants have failed to
identify reversible error in the rejection of claim 13 as being obvious under
35 U.S.C. § 103(a) over Callinan, and we sustain the rejection of this claim.
Rejection VI
Appellants argue that claims 4—5 and 7 “depend on claim 1 and .. .
are, therefore, allowable for at least the same reasons articulated above.”
Appeal Br. 15. Because Appellants’ arguments regarding claim 1 are
unpersuasive of reversible error, we are likewise unpersuaded by such
arguments as they pertain to claims 4—5 and 7.
Thus, we sustain Rejection VI.
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Rejection VII
Appellants argue that claim 18 “depends on claim 13 and is, therefore,
allowable for at least the same reasons articulated above.” Appeal Br. 16.
Because Appellants’ arguments regarding claim 13 are unpersuasive of
reversible error, we are likewise unpersuaded by such arguments as they
pertain to claim 18.
Thus, we sustain Rejection VII.
SUMMARY
The rejection of claim 21 as set forth in Rejections I and II is
affirmed.
We decline to reach Rejection III.
The rejection of claims 1—5, 8, 10, 11, 14, 21, and 22 as set forth in
Rejection IV is reversed.
The rejection of claims 1—5, 7—13, 15—18, and 20—21 as set forth in
Rejections V—VII is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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