Ex Parte Schuster et al

Patent Trial and Appeal Board

Jul 15, 2016

13487339 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/487,339
129925
ABB Inc,
7590
FILING DATE
06/04/2012
07119/2016
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
FIRST NAMED INVENTOR
Peter Schuster
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.
0067-0088 8871
EXAMINER
BRINSON, PATRICK F
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
taft-ip-docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SCHUSTER and MAR TIN GULLER
Appeal2014-008205
Application 13/487,339
Technology Center 3700
Before JEREMY M. PLENZLER, THOMAS F. SMEGAL, and
MARK A. GEIER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Schuster and Martin Guller (Appellants)1 seek our review under
35 U.S.C. § 134 of the Examiner's Final Rejection under 35 U.S.C. § 102(b)
of claims 1, 3, 4, 6, 7, 17, 19 and 20 as anticipated by Stammen (US
5,690, 146, iss. Nov. 25, 1997); and under 35 U.S.C. § 103(a) of claims 2, 5,
8-16 and 18 as unpatentable over Stammen and Samuels (US 4, 119, 123, iss.
Oct. 10, 1978). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Thomas & Betts
International, LLC. Appeal Br. 3.
Appeal2014-008205
Application 13/487,339
CLAIMED SUBJECT MATTER
Claims 1, 8, and 17 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A conduit comprising:
a multilayer wall including:
an outer layer having a first color;
an intermediate layer having a second color; and
an inner layer having a third color, wherein the
intermediate layer is between the outer layer and the inner layer,
and the first color, the second color, and the third color are
different from each other and each of the first color, the second
color, and the third color indicates a level of wear of the
multilayer wall when one of the first color, the second color, or
the third color is exposed, and the level of wear indicates a future
and quantified time period for replacing the conduit.
ANALYSIS
Anticipation of Claims 1, 3, 4, 6, 7, 17, 19 and 20 by Stammen
The Examiner finds that Stammen anticipates claims 1, 3, 4, 6, 7, 17,
19 and 20 by disclosing "a hose and method for wear detection including a
multilayer wall," as recited by the claims. Ans. 2 (also citing Stammen, col.
3, 11. 65---67).
Independent Claim 1
Appellants first respond that "Stammen fails to disclose a conduit
such that ... [']the level of wear indicates a future and quantified time
period for replacing the conduit,' as recited by claim 1," or "that the blue
color of the outer layer 14 indicates a 'level of wear,' let alone, indicates a
'future and quantified time period for replacing the conduit."' Appeal Br. 8-
9.
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Application 13/487,339
However, it is well established that "[a]n intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates."
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Thus, reciting that the "color[s] indicate[] a
level of wear," or that the level of wear "indicates a future and quantified
time period for replacing the conduit," does no more than define a possible
use of the conduit. Such a statement of use or purpose does not make a
claim to a known structure patentable. See In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997) (stating that the applicant's contention that the
claimed structure will be used in a way not taught by the prior art reference
does not have patentable weight if the structure is already known).
The Examiner finds that "Stammen expressly states that simple
abrasion wears through the blue outer layer and reveals the yellow layer
after about 1,000 abrasion cycles," that "[o]bservation of the yellow layer
after 1,000 cycles is an early wear indicator and [that] the hose should be
replaced at that time," and "exposure of wire of the reinforcing layer (20) is
a further indication of failure of the intermediate layer ( 16) and that the hose
should be replaced at that time." Ans. 5 (citing Stammen, col. 3, 11. 55---60.
In our view the Examiner's findings explain that Stammen's structure is
capable of performing the recited intended use or purpose.
Furthermore, a reference anticipates a claim if it discloses the claimed
invention 'such that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession of the
invention."' In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In
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Appeal2014-008205
Application 13/487,339
re LeGrice, 301F.2d929, 936, Jn re Donohue, 766 F.2d 531, 533 (Fed. Cir.
1985)) (parallel citations omitted).
Even while observing that "Stammen generally discloses that the
exposure of color of an inner layer is a visual indicator of wear of a hose,"
Appellants "disagree with the Primary Examiner's implicit assertion that
one's knowledge of a remaining thickness of a multilayer wall is the only
factor in determining a 'future and quantified time period for replacing the
conduit."' Appeal Br. 9-10. Appellants continue by alleging that
"Stammen fails to disclose, expressly or inherently, the features of
independent claim 1." Id. at 10. See also Reply Br. 1-3. However,
Appellants offer no persuasive evidence to support such an argument. We
are instructed that "[a]ttomey's argument[s] in a brief cannot take the place
of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citing In
re Cole, 326 F.2d 769 (CCPA 1964)). We also note that Appellants do not
argue that Stammen lacks any structure recited by the claim 1, and we find
none of the recited structure to be missing from Stammen.
For the reasons set forth above, we agree with the Examiner that the
conduit disclosed by Stammen anticipates claim 1.
Dependent Claims 3, 4, 6, and 7
Appellants recite the additional limitation of claim 3 and "disagree
that Stammen discloses that the color of a layer, when exposed, indicates a
remaining thickness." Appeal Br. 10. Appellants also contend that
Stammen is silent regarding the additional recitation of claim 4. Id.
However, we again find Appellants to be arguing an intended use which
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Application 13/487,339
does not make a claim reciting a known structure to be patentable. See Jn re
Schreiber, 128 F.3d at 1477.
For the reasons set forth above regarding claim 1, we agree with the
Examiner that the conduit disclosed by Stammen anticipates dependent
claims 3, 4, 6, and 7.
Independent Claim 17
Appellants repeat the contentions previously asserted for claims 1 and
3, which we found unpersuasive. See Appeal Br. 11-12. Thus, for the
reasons set forth above regarding claims 1 and 3, we agree with the
Examiner that the conduit disclosed by Stammen anticipates claim 17.
Dependent Claims 19 and 20
Appellants repeat the contentions previously asserted for claims 17
and 4, which we found unpersuasive. See Appeal Br. 12. Thus, for the
reasons set forth above regarding claims 17 and 4, we agree with the
Examiner that the conduit disclosed by Stammen anticipates claims 19 and
20.
Obviousness of Claims 2, 5, 8-16, and 18 over Stammen and Samuels
Dependent Claims 2 and 5
Other than observing that "Samuels fails to remedy the deficiencies of
Stammen," in failing "to disclose or suggest, inter alia, that the level of wear
indicates a future and quantified time period for replacing the conduit,' as
recited by independent claim 1," Appellants do not separately argue
dependent claims 2 and 5. See Appeal Br. 13. Thus, for the reasons set
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Application 13/487,339
forth above, Appellants have not demonstrated error in the rejection of claim
1. Accordingly, we sustain the rejection of dependent claims 2 and 5.
Independent Claim 8
Appellants do not raise any arguments in addition to those we have
already found unpersuasive in sustaining the Examiner's rejection of claim
1. See Appeal Br. 13. Accordingly, we sustain the rejection of claim 8 over
Stammen and Samuels, for the same reasons stated above with respect to the
rejection of claim 1 as anticipated by Stammen.
Dependent Claims 9-16
Appellants do not raise any arguments in addition to those we have
already found unpersuasive in sustaining the Examiner's rejection of claims
8, 3, and 4. See Appeal Br. 13-14. Accordingly, we sustain the rejection of
claims 9-16 over Stammen and Samuels, for the same reasons stated above
with respect to the rejection of claim 8 as obvious over Stammen and
Samuels.
Dependent Claim 18
Appellants do not raise any arguments in addition to those we have
already found unpersuasive in sustaining the Examiner's rejection of claim
17. See Appeal Br. 14. Accordingly, we sustain the rejection of claim 18
over Stammen and Samuels, for the same reasons stated above with respect
to the rejection of claim 17 as anticipated by Stammen.
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Application 13/487,339
DECISION
The Examiner's prior-art rejections are SUSTAINED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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