Ex Parte Weigand et al

Patent Trial and Appeal Board

Apr 28, 2017

13512374 (P.T.A.B. Apr. 28, 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.
13/512,374 05/29/2012 Peter Weigand 812826 1059
95683 7590 05/02/2017
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
WAY, JAMES R
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER WEIGAND, GUNTER QUASS, and
JENS VON WAADEN
Appeal 2015-007359
Application 13/512,374
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Weigand et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 6—8 and 10—13. See Appeal
Br. 2. Claims 1—5 and 9 have been canceled. See id. at 12, Claims App.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Air Liquide
Global E&C Solutions Germany. Appeal Br. 1.
Appeal 2015-007359
Application 13/512,374
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to a port arrangement for
access to a demountable component located in the interior of an apparatus or
container.” Spec. 12.2 Claim 6, reproduced below, is the sole independent
claim and is representative of the subject matter on appeal.
6. A port arrangement for accessing a demountable
component in an interior of an apparatus or container, the port
arrangement comprising:
an inner port including a port tube and forming a non­
integral, releasable connection with an internal component, the
releasable connection being pretensioned so as to provide a
pressing force which presses the port tube toward and against
the internal component; and
an outer port connected with an outer jacket, the port tube
of the inner port being received through the outer port.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
appeal:
Laskaris US 4,526,015 July 2, 1985
Theissen US 4,705,189 Nov. 10, 1987
Chevalier US 4,790,290 Dec. 13, 1988
2 We note that references herein to Appellants’ Specification refer to
the Substitute Specification filed May 29, 2012.
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Application 13/512,374
REJECTIONS
The following rejections are before us for review:
I. Claims 6—8 and 10—13 stand rejected under 35U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 4.
II. Claims 6, 7, and 13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Laskaris. Id. at 4—5.
III. Claims 6 and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Chevalier. Id. at 5—6.
IV. Claims 8 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Laskaris. Id. at 6—7.
V. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Laskaris and Theissen. Id. at 7.
ANALYSIS
Rejection I— Claims 6—8 and 10—13 as
failing to comply with the written description requirement
The stated basis for the Examiner’s rejection under 35 U.S.C. § 112,
first paragraph, is that Appellants’ Specification provides insufficient written
description support for a releasable connection that is “non-integral,” as
recited in claim 6. See Non-Final Act. 4. The Examiner explained that, “as
the connection is joining two separate pieces[,] it would be considered
integral.” Id. According to the Examiner, “the threaded connection or the
press fit connection that is provided for in the [Specification of the present
invention would appear to be a type of fixed together connection, thus
making the connection integral.” Ans. 2.
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Application 13/512,374
Appellants argue that “[i]t is well known that a connection which is
made to be in one piece, such as by being a molded connection or a welded
or brazed connection, and which must be cut or otherwise severed to be
disconnected, is an integral connection.” Appeal Br. 4. In contrast,
Appellants point to Figures 2—5 of the Specification and assert that “sealing
elements 21, 31, 41, 51 in these embodiments [are] merely pressed against
and abut the inner jackets 22, 32, 42, 52 and therefore do not form an [Uc]
integral connections therewith, i.e., the connections are non-integral.” Id. at
4-5 ; see Spec. ]ff[ 7, 14, 17. Thus, according to Appellants, one of ordinary
skill in the art “would understand the meaning of ‘non-integral’ in light of
the intrinsic record of the present application to mean that the recited
connection is not a one-piece construction and does not include welded or
brazed connections which form a one-piece construction and integrally
connect the material of the two parts.” Reply Br. 2.
We agree with Appellants that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. Namely, the embodiments
depicted in Figures 2—5, as well as the corresponding description of these
embodiments provided in the Specification, would reasonably convey to one
having ordinary skill in the art that Appellants had possession of a port
arrangement that includes a “non-integral,” releasable connection. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). Accordingly, we do not sustain the rejection of claim 6, and of
claims 7, 8, and 10-13 depending therefrom, under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
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Appeal 2015-007359
Application 13/512,374
Rejection II— Claims 6, 7, and 13 as anticipated by Laskaris
Independent claim 6 recites, in relevant part, a port arrangement
having “an inner port including a port tube and forming a non-integral,
releasable connection with an internal component.” Appeal Br. 12, Claims
App. (emphasis added). Appellants argue that “the connection of Laskaris is
a brazed connection, which is not a releasable connection.” Appeal Br. 5
(citing Laskaris, col. 3,11. 34—35). We agree.
In rejecting claim 6 as anticipated by Laskaris, the Examiner found
that “Laskaris specifically teaches [that] the port is brazed to the inner wall,
and[,] as is well known in the art[,] a brazing connection can be
disconnected and rebrazed.” Non-Final Act. 5; see Laskaris, col. 3,
11. 34—35. Although Laskaris discloses a brazed connection between the port
tube and the internal component, Appellants persuasively assert that a
“releasable connection, as this term would be understood in light of the
[Specification, excludes connections which would need to be cut-off or
reheated and severed,” in order to be released. Appeal Br. 5.
In particular, Appellants’ Specification describes “a port arrangement
in which the port connected with the internal component can easily be
separated from the same.” Spec. 114. For example, the Specification
describes an exemplary embodiment of a port arrangement in which “the
sealing element of the releasable connection consists of cones inserted into
each other, and the force for pressing the parts of the sealing element into
each other is generated by pretensioning an expansion compensator
integrated in the tube of the inner or outer port.” Id. 117; see also id. 118
(describing another exemplary embodiment in which “the sealing element of
the releasable connection consists of one hemisphere and one shell half
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Application 13/512,374
inserted into each other”). The Specification also expressly distinguishes a
releasable connection from prior art port arrangements that “must be cut off
from the component to be removed,” and explains that “[s]uch cutting off,
and also the subsequent reattachment of the port arrangement, requires a
great effort.” Id. 17.
We agree with Appellants that, in view of the Specification, “the term
‘releasable connection’ . . . means a connection which can be easily
separated and excludes welded or brazed connections which require a great
effort and material destruction to remove.” Reply Br. 3. As Appellants
explain, the Examiner’s construction of “releasable connection” used in the
rejection essentially does “not afford[] any weight to the term ‘releasable’
because any connection could be removed through the application of heat
and/or material destruction.” Appeal Br. 5—6. In other words, to the extent
that the Examiner is correct in that it is possible to release the brazed
connection of Laskaris by applying sufficient heat, such a connection is not
one that can be easily separated and reconnected without material
destruction. Thus, the Examiner has not established by a preponderance of
the evidence that Laskaris discloses “an inner port including a port tube and
forming a non-integral, releasable connection with an internal component,”
as recited in claim 6.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims—we do not sustain the rejection of independent
claim 6, and of dependent claims 7 and 13, as anticipated by Laskaris.
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Rejection III— Claims 6 and 12 as anticipated by Chevalier
Independent claim 6 recites, in relevant part, a port arrangement
having a releasable connection that is “pretensioned so as to provide a
pressing force which presses the port tube toward and against the internal
componentAppeal Br. 12, Claims App. (emphasis added). Appellants
argue that Chevalier fails to disclose a releasable connection that is
pretensioned so as to press, as claimed. See id. at 8—9. We agree.
With regard to the above claimed feature, the Examiner found that,
“as [Chevalier’s] resilient pad 11 is compressed (pretensioned)[,] the force
from the pad trying to restore its shape against the collar 13 and set
screw 14, the inner port 8 presses outward creating a pressing force between
spud 4 and the inner port 8.” Non-Final Act. 6; see Chevalier, col. 3,
11. 52—61. The Examiner explains that “resilient member 11 pushes against
the collar 13, therefore pulling the inner port 8 away from the internal
component,” and “[t]he remaining forces taking place in this configuration
in order to keep it in static equilibrium would be an opposite force taking
place at the threads in order to keep the inner port in place.” Ans. 4—5.
However, Appellants persuasively assert that, “[e]ven assuming that the
resilient pad 11 trying to restore its shape would cause a force on the rod 8,
such a force would be in an opposite direction extending away from the
spud 4, or internal component, and therefore not toward the spud 4, or
internal component.” Appeal Br. 8 (citation omitted).
In particular, Chevalier discloses that “[s]et screw 14 is . . . turned
down to lock the pad 11 and backing disc 12,” and that “[f]urther threading
of rod 8 in spud 4 will then compress pad 11 to seal the space between
opening 7 and rod 8.” Chevalier, col. 3,11. 57—61 (boldface omitted). The
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Examiner’s explanation on pages 4 and 5 of the Answer does not establish
that compressing Chevalier’s pad 11 would provide a force that presses
rod 8 toward spud 4 (i.e., the internal component). To the extent that
compressing Chevalier’s pad 11 will provide some force against rod 8, we
agree with Appellants that “the pretensioning ... is in a direction away from
the internal component, not toward the internal component.” Reply Br. 5.
Thus, the Examiner has not established by a preponderance of the evidence
that Chevalier discloses that the releasable connection is “pretensioned so as
to provide a pressing force which presses the port tube toward and against
the internal component,” as claimed.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims—we do not sustain the rejection of independent
claim 6, and of dependent claim 12, as anticipated by Chevalier.
Rejections IV and V— Claims 8, 10, and 11 as
unpatentable over Laskaris alone or in combination with Theissen
Regarding Rejections IV and V, we note that these rejections are
premised on the same purported disclosure from Laskaris discussed above
for Rejection II, and that the Examiner relied on Theissen in Rejection V for
teaching additional features, but not to cure the aforementioned deficiency of
Laskaris. Non-Final Act. 6—7. Consequently, we also do not sustain the
rejections of claims 8 and 11 as being unpatentable over Laskaris, or of
claim 10 as being unpatentable over Laskaris and Theissen.
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Application 13/512,374
DECISION
We REVERSE the Examiner’s rejections of claims 6—8 and 10—13.
REVERSED
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