Ex Parte Roberts et al

Patent Trial and Appeal Board

Aug 31, 2018

12405708 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/405,708 03/17/2009 James M. Roberts
44986 7590 09/05/2018
Levenfeld Pearlstein, LLC (ILLINOIS TOOL WORKS)
2 North LaSalle Street
Suite 1300
Chicago, IL 60602
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.
21969 (35371-75030) 4063
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
ipdocket@lplegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. ROBER TS,
MICHAEL STAROZHITSKY, ANDREA C. McMARTIN,
MICHAEL B. SCOBY, and ALGIS P. SUOPYS
Appeal2017-011001
Application 12/405,708
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an
Examiner's decision finally rejecting claims 1, 5, 6, and 8-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The claims on appeal are directed to a pipe and component insulation
corrosion resistant jacket, wherein the jacket is wrapped around the pipe.
The corrosion resistant jacket comprises an outer polymeric layer film, an
inner polymeric layer, and a stainless steel core layer disposed between the
Appeal2017-011001
Application 12/405,708
outer polymeric layer film and the inner polymeric layer, wherein the outer
film is comprised of different polymers from the inner layer.
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief dated March 3, 2017. The limitations at issue
are italicized.
1. A pipe and component insulation corrosion resistant
jacket comprising:
a pipe;
a corrosion resistant jacket wrapped around the pipe with
an overlap, the corrosion resistant jacket comprising:
an outer polymeric layer film, wherein the outer
polymeric film layer is one of a fluoropolymer, a polyvinylidene
fluoride, a poly(methyl methacrylate) polymer, and polyvinyl
chloride film;
an inner polymeric layer, the inner polymeric layer
being formed from a non-porous material that is pin-hole free,
impermeable to water, chemically resistant and resistant to
insulation by-product ions, wherein the non-porous material is
a laminate comprising a polyethylene sheet of material and an
ethylene acid copolymer resin; and
a stainless steel core layer disposed between the
outer polymeric layer film and the inner polymeric layer, the
stainless steel core layer is formed from a Series 200 or Series
400 stainless steel,
wherein the outer polymeric film and the inner
polymeric layer each extend over a respective face of the core
layer and an edge of the core layer between the faces;
a strap wrapped around the jacket to secure the jacket to
the pipe, the strap having a structural layer and inner and outer
coating layers disposed on opposite sides of the structural layer,
wherein the outer polymeric layer film includes an inner
surface that is adhered to the core layer by an adhesive, and an
exposed outer surface at an opposite side of the polymeric layer
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Application 12/405,708
film from the inner surface that is open to surrounding
environs; and
wherein the inner polymeric layer includes an outer
surface that is adhered directly to the core layer and an inner
surface facing the pipe or component.
Br. 20-21.
The Examiner maintains the following rejections on appeal:
(1) claims 1, 5, 6, and 12-20 under 35 U.S.C. § I03(a) as
unpatentable over Funk et al. 1 in view ofKelch, 2 Ellis et al.,3 O'Connor et
al., 4 ASSDA, 5 and Atlas Steels Australia, 6 as evidenced by Woodley7 and
Hata· 8
'
(2) claims 8-11 under 35 U.S.C. § I03(a) as unpatentable over
Funk in view of Kelch, Ellis, O'Connor, ASSDA, and Atlas Steels Australia,
as evidenced by Woodley and Hata, and further in view of Parker et al. 9
1 US 4,213,487, issued July 22, 1980 ("Funk").
2 US 4,680,234, issued July 14, 1987 ("Kelch").
3 US 3,755,029, issued August 28, 1973 ("Ellis").
4 US 2002/0141712 Al, published October 3, 2002 ("O'Connor").
5 ASSDA Technical Bulletin 200 Series Stainless Steel Grain Guides 1-3
(October 2006) ("ASSDA").
6 Stainless Steels - Introduction to the Grades and Families,
http://www.azom.com/article.aspx? ArticleID=470 (last visited Aug. 26,
2018) ("Atlas Steels Australia").
7 Ralph M. Woodley, Flexible Membrane Linings for Salt-Gradient Solar
Ponds, American Chemical Society 195-210 (June 15, 1983) ("Woodley").
8 US 3,616,299, issued October 26, 1971 ("Hata").
9 US 4,403,004, issued September 6, 1983 ("Parker").
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Application 12/405,708
B. DISCUSSION
The Examiner finds Funk discloses "'a laminate of a metal sheet
having thermoplastic material on both sides[lOJ ... producing a suitable
material for use as a pipe-wrap' (col. 1, lines 29-32) where the laminate
'uses are in corrosion-resistant areas' (col. 1, lines 60-61)." Final Act. 2. 11
The Examiner finds Funk discloses that "'thermoplastic resins which can be
employed to produce the thermoplastic sheets are ... polyvinyl chloride
[PVC] ... and polyvinyl fluoride' ( col. 2, lines 30-36)." Final Act. 3. The
Examiner finds that this disclosure in Funk "is considered to mean that the
outer layer, which is exposed to the environment, may comprise PVC or a
fluoropolymer (PVF)." Final Act. 3 ( emphasis added).
The Examiner also finds Funk discloses that "'among the synthetic
thermoplastic resins which can be employed to produce the thermoplastic
sheets are ... chlorinated polyethylene ... [and] polyvinyl chloride' (col. 2,
lines 30-35)." Final Act. 4. The Examiner finds that this disclosure in Funk
"is considered to mean that the disclosure of Funk encompasses chlorinated
polyethylene or polyvinyl chloride as an inner polymeric layer yielding a
PVC or PVF/stainless steel/chlorinated polyethylene or polyvinyl chloride
structure," whereby the outer and inner layers may comprise the same (i.e.,
PVC) or different (i.e., PVF and chlorinated polyethylene, respectively)
materials. Final Act. 4 ( emphasis added).
The Examiner finds Funk does not disclose that "the chlorinated
polyethylene or polyvinyl chloride [inner] layer comprises a laminate with
1° Funk Figure 2 depicts laminate 38 comprising upper sheet 20, metal sheet
32, and lower sheet 30. Funk, col. 3, 11. 62---66.
11 Final Office Action dated September 23, 2016.
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Application 12/405,708
ethylene acid copolymer resin as recited in the instant claims." Final Act. 4
( emphasis added). Therefore, the Examiner turns to Kelch.
The Examiner finds Kelch discloses "'a coextruded flexible film
having a first layer comprising a blend of a vinyl chloride polymer and a
chlorinated polyolefin and a second layer comprising a normally solid
thermoplastic adhesive."' Final Act. 4 ( citing Kelch, col. 1, 11. 65-68). The
Examiner finds Kelch discloses that suitable normally solid thermoplastic
adhesives include copolymers of ethylene and a copolymerizable monomer
such as acrylic acid. Final Act. 4 ( citing Kelch, col. 4, 11. 20-29).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art "to use the vinyl chloride polymer-chlorinated
polyolefin blend/ethylene-acrylic acid copolymer laminate of Kelch as the
chlorinated polyethylene [inner] layer in the invention of Funk" to obtain the
advantages disclosed in Kelch (i.e., long term weather resistance, UV
stability, hardness, and scratch resistance). Final Act. 5.
The Appellants dispute, inter alia, the Examiner's finding that "one of
the upper and lower thermoplastic sheets 20, 30 may be made of a different
material or otherwise be formed differently than the other." Br. 7. The
Appellants argue:
Funk simply lists synthetic thermoplastic resins that can be
employed to produce the thermoplastic sheets. No disclosure is
made with respect to particular combinations of materials or
configurations used in the upper and lower thermoplastic sheets
20, 30. Indeed, Funk refers collectively to the "thermoplastic
sheets" in the cited passage at column 2, lines 30-36, without
suggesting that one sheet, individually, may be formed of one
synthetic thermoplastic material while the other sheet,
separately, may be formed from a different synthetic
therm op las tic material.
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Moreover, Funk[] describes a calendering process to
form the laminate 38 that uses chlorinated polyethylene and
aluminum "to produce a laminate comprising an aluminum
sheet having chlorinated polyethylene on both sides thereof."
Column 3, lines 7-10. Funk provides that the process is the
same for other materials, such as polyvinyl chloride and
stainless steel foil. Column 3, lines 35-36. Thus, with respect
to the construction of the laminate 38, Funk discloses that the
thermoplastic sheets 20, 30 are the same on both sides of the
metal sheet 32. For at least these reasons, Appellant
respectfully submits that Funk does not disclose the outer
polymeric layer film and inner polymeric layer in the manner
claimed.
Br. 7-8.
The Appellants argument is persuasive of reversible error. Funk
discloses:
Included among the synthetic thermoplastic resins which
can be employed to produce the thermoplastic sheets [20, 30]
are those which are disclosed in [the prior art], such as
chlorinated polyethylene, chloro-sulfonated polyethylene,
polyvinyl chloride, polychloroprene, polyisobutylene, and
polyvinyl fluoride. The preferred thermoplastic materials are
an elastomeric chlorinated linear polyethylene and polyvinyl
chloride.
Funk, col. 2, 11. 30-38.
To establish a prima facie case of unpatentability in a prior art
rejection, an Examiner must demonstrate that the claimed invention is
anticipated 12 and/or rendered obvious by the prior art. See In re Oetiker, 977
12 "To anticipate a claim, a prior art reference must disclose every limitation
of the claimed invention, either explicitly or inherently." In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). Inherency may not be established by
probabilities or possibilities, but rather must be inevitable. In re Oelrich,
666 F.2d 578, 581 (CCPA 1981).
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F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears initial burden of
presenting a prima facie case of unpatentability).
In this case, the Examiner does not conclude that it would have been
obvious to one of ordinary skill in the art to select different thermoplastic
resins for upper and lower thermoplastic sheets 20, 30 based on the
teachings in Funk. See Ans. 14 ( explaining that a conclusion of obviousness
for the selection of different thermoplastic materials for resin layers 20 and
30 "is neither made in the rejection of record or necessary"). 13 Rather, using
the broadest reasonable interpretation standard, the Examiner finds that
"one of ordinary skill in the art ... would choose a specific resin for each
layer, including different resins, for the inner and outer layer [based on
Funk's disclosure]." Ans. 14.
The broadest reasonable interpretation standard is reserved for claim
construction. See, e.g., In re Herz, 537 F.2d 549, 551 (CCPA 1976) ("claims
are given their broadest reasonable construction consistent with the
specification"). To the extent the Examiner is referring to the broadest
reasonable interpretation standard to support a finding that Funk describes,
either expressly or inherently, that the thermoplastic resin comprising upper
and lower thermoplastic sheets 20, 30 may be different from one another, the
Examiner's interpretation of Funk is not supported by the record on appeal.
We recognize that Funk does not expressly disclose that the upper and
lower sheets 20, 30 must be comprised of the same thermoplastic resin.
Nonetheless, the Examiner does not direct us to any portion of Funk
expressly disclosing that the upper and lower sheets, in certain
13 Examiner's Answer dated June 15, 2017.
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embodiments, may comprise different thermoplastic resins in a single
laminate. Thus, to establish that claim 1 is unpatentable, the Examiner must
show that the upper and lower sheets of a single laminate in Funk inherently
comprise different thermoplastic resins.
Funk's entire disclosure describes embodiments wherein the upper
and lower sheets are comprised of the same thermoplastic resin( s ). More
specifically, Funk discloses that an object of the invention is "to provide a
process for producing a laminate of a metal sheet having thermoplastic
material on both sides thereof formed in a single pass through a calender."
Funk, col. 1, 11. 28-31. Funk discloses a calendering process using
chlorinated polyethylene and aluminum to produce a laminate comprising an
aluminum sheet having chlorinated polyethylene on both sides thereof.
Funk, col. 3, 11. 7-10. Funk discloses that:
The aluminum sheet is fed into the nip between the second roll
and the third roll while contacting at 250° to 350° F. the upper
chlorinated polyethylene sheet with the top of the aluminum
sheet and while simultaneously contacting the lower
chlorinated polyethylene sheet with the bottom of the aluminum
sheet. The temperature of the chlorinated polyethylene sheet
may be from 300° to 400° F. when the thermoplastic material
contains polyvinyl chloride. The top and the bottom of the
aluminum sheet have thereon a coating of a copolymer of 10 to
20 percent by weight of vinyl acetate, the balance of the
copolymer being essentially vinyl chloride.
Funk, col. 3, 11. 18-30 (emphasis added); see also Funk, col. 3, 11. 35-
36 ( disclosing that the process is the same for polyvinyl chloride and
stainless steel foil).
Moreover, in Funk's examples, the same thermoplastic material is
contacted on the top and bottom surfaces of a metal sheet. Funk, col. 6, 11.
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52-68; see also Funk, col. 5, 11. 48-52 ( disclosing that the examples
"represent the best mode contemplated for practicing the present
invention").
The Examiner finds that the specific embodiments disclosed in Funk
are "not considered limiting when evaluating the broader disclosure, which
recites thermoplastic resins and allows the ordinary artisan to select the
specific resins from a disclosed list in the reference." Ans. 14 (emphasis
added). The Examiner, however, does not explain why Funk's "broader
disclosure" teaches that the upper and lower sheets may comprise different
thermoplastic resins. The fact that one of ordinary skill in the art could have
selected different resins, without more, does not establish that Funk teaches,
either expressly or inherently, that the resins may be different.
In sum, a preponderance of the evidence does not support the
Examiner's finding that one of ordinary skill in the art would have selected
different thermoplastic resins for the upper and lower sheets of a single
laminate based on Funk's disclosure. Therefore, the obviousness rejection
of independent claim 1 and dependent claims 5, 6, and 12-20 is not
sustained.
The Examiner does not rely on Parker to cure the deficiencies in the
obviousness rejection of claim 1. See Final Act. 12 (finding that Parker
discloses an adhesive coating comprising a composition such as a silicone
resin or an acrylic polymer). Therefore, the obviousness rejection of claims
8-11 also is not sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
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