Ex Parte Wentworth et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10837098 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN W. WENTWORTH and ROBERT F. CRANE
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Appeal 2007-2378
Application 10/837,098
Technology Center 3600
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Decided: January 22, 2009
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Before WILLIAM F. PATE, III, TERRY J. OWENS, and
DAVID B. WALKER, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
DECISION ON REQUEST FOR REHEARING
The Appellants request reconsideration of our decision to affirm the
Examiner’s rejection of claims 1, 3, 14 and 17-20 under 35 U.S.C. § 102(b)
over Brewis, and claims 7, 9-13, 15 and 16 under 35 U.S.C. § 103 over
Brewis in view of Carter (Decision mailed August 28, 2007).1

1 The Appellants do not request reconsideration as to claims 2, 4-6 and 8.
Appeal 2007-2378
Application 10/837,098

Claims 1 and 3
The Appellants’ claim 1 requires “a stop limiting forward travel of the
expander and preventing outward radial travel of the jaws after the tooth has
been engaged in the wall of the replacement pipe.”2
The Appellants argue that “for [Brewis’s stop] 56 [col. 3, l. 19; Fig. 1]
to act as a stop ‘preventing outward radial travel of the jaws after the tooth
has been engaged in the wall of the replacement pipe’, the cone 45 [Brewis’s
Fig. 1] must travel distance D2 [shown in the figure on page 2 of the
Request], which it cannot do given that D2 is much larger than D1 [shown in
the figure on page 2 of the Request]” (Request 2).
The Appellants’ argument assumes that Brewis’s drawings are to
scale, which is improper because Brewis does not indicate that the drawings
are to scale. See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent
any written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value”). See also, In re
Nash, 230 F.2d 428, 431 (CCPA 1956) (“... it is well settled that the
drawings of patent applications are not necessarily scale or working
drawings ...”); In re Olson, 212 F.2d 590, 592 (CCPA 1954) (“Ordinarily
drawings which accompany an application for a patent are merely
illustrative of the principles embodied in the alleged invention claimed
therein and do not define the precise proportions of elements relied upon to
endow the claims with patentability”).
Moreover, the Appellants’ claim 1 does not exclude penetration of the
teeth into the replacement pipe. The Appellants’ Specification indicates that

2 Claim 3 depends from claim 1 and is not argued separately from claim 1
(Request 1-4).
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the penetration can be about 35% of the replacement pipe’s wall thickness
(Spec. 3:22-25), and the Appellants’ claim 6 recites “wherein the tooth
penetrates to a depth of no more than 35% of the thickness of the wall of the
replacement pipe.” Hence, even if the dimension D2 is greater than D1 in
the Appellants’ figure on page 2 of the Request, Brewis’s stop 56 will
prevent further outward radial travel of the jaws once the penetration of
ribs 46 into the wall of the replacement pipe is sufficient that stop 56 hits the
back of expandable element 44 in that figure. In view of Brewis’s disclosure
that “[t]he [prior art] mandrel [corresponding to Brewis’s expansion
mandrel 45] can be drawn up further to apply greater force to the pipe, but
this increases the risk of splitting the pipe” (col. 1, ll. 32-34), one of ordinary
skill in the art, through no more than ordinary creativity, would have
configured Brewis’s stop 56 such that it hits the back of expandable
element 44 before ribs 46 have penetrated the replacement pipe sufficiently
to weaken it excessively. See KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741 (2007) (In making an obviousness determination one “can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ”).
The Appellants argue, in reliance upon a figure on page 3 of the
Request, that the purpose of Brewis’s stop 56 is not to prevent ribs 46 from
penetrating excessively into the replacement pipe but, rather, is to prevent
expandable element 44’s jaws from falling out (Request 2-3).
Brewis’s disclosure that the four sectors of expandable element 44 are
retained together by resilient O-rings 49 (col. 3, ll. 7-14; Fig. 1) indicates
that those O-rings, not stop 56, serve the purpose argued by the Appellants.
Claims 7 and 9-13
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Claims 7 and 9-13 do not require the stop discussed above regarding
claim 1. The Appellants argue, with respect to claims 7 and 9-13 rejected
over Brewis in view of Carter, that “[t]he Brewis device would, at the time
the invention was made, have been considered unsuitable for combined
bursting [using Carter’s pipe parting fins or blades 56; Fig. 1] and
replacement for the very reasons the inventors describe, i.e. an expanding
taper puller can cause the pipe being towed to fail if too much pulling force
is needed for bursting” (Request 5-6).
As indicated above regarding claim 1, it appears that Brewis would
have indicated to one of ordinary skill in the art that Brewis’s stop 56 would
prevent the pipe failure argued by the Appellants.
The Appellants argue that “Carter can be considered a ‘teaching
away’ in that the arrangement shown for pulling the replacement pipe does
not entail the potential problems that the Brewis device creates when used
for bursting” (Request 6).
As stated by the Federal Circuit in In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994):
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The
degree of teaching away will of course depend on the particular facts;
in general, a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.

Carter discloses a pipe parting and expanding device (pipe mole 40)
comprising a tapered body portion (44) having pipe parting fins or
blades (56) on its sides and having a rearward end (64) for engaging a
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Application 10/837,098

replacement pipe (col. 3, ll. 46-53). Because Carter’s device is a pipe
bursting and replacement device, Carter would not have indicated to one of
ordinary skill in the art that Carter’s line of development is unlikely to be
productive of the pipe bursting and replacement result sought by the
Appellants.
One of ordinary skill in the art, through no more than ordinary
creativity, would have been led to combine the disclosures of Brewis and
Carter to obtain the benefits of Brewis’s expandable element 44 (col.; 3,
ll. 5-14) in combination with Carter’s pipe parting fins or blades 56 (col. 3,
ll. 58-51). See KSR, 127 S. Ct. at 1740 (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Because, as
discussed above with respect to the rejection of claim 1, Brewis would have
indicated to one of ordinary skill in the art that stop 56 would prevent
expandable element 44 from being overexpanded such that ribs 46 penetrate
into the replacement pipe sufficiently to excessively weaken it, one of
ordinary skill in the art would have had a reasonable expectation of success
in modifying Brewis’s pipe towing head such that it includes Carter’s pipe
bursting fins or plates 56 and, therefore, is useful for both pipe bursting and
placement. See In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success …. For
obviousness under § 103, all that is required is a reasonable expectation of
success”).
Claim 14
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The Appellants argue that “[c]laim 14 was rejected over Brewis under
35 U.S.C. 102 in the new ground of rejection raised by the examiner, yet
Brewis lacks a pipe bursting projection” (Request 6).
The Appellants stated in their Reply Brief that “[c]laim 14 contains
identical language to claim 4 [rejected under 35 U.S.C. § 103], and it is
assumed therefore that claims 14 and 17-20 should have been included in the
rejection under 35 U.S.C. 103 discussed below, and not in the 102 rejection,
since Brewis et al. does not disclose ‘a pipe bursting projection on its
frontwardly facing outer surface’ as recited in claim 14” (Reply Br. 5).
For the reasons given above regarding claims 7 and 9-13, Brewis and
Carter would have led one of ordinary skill in the art, through no more than
ordinary creativity, to place Carter’s pipe parting fins or plates 56 on the
frontwardly facing outer surface of Brewis’s front frustoconical portion 16
to obtain the combined benefit of Carter’s pipe bursting and Brewis’s
expandable element 44.
As pointed out in our Decision, “[a] pipe bursting projection on
Brewis’s towing head’s tubular body (14) would be on the frontwardly
facing outer surface (fig. 1) as required by the Appellants’ claims 4, 5
and 14-16)” (Decision 7-8). As also indicated in our Decision
(Decision 4:n.2), the Appellants did not provide a substantive argument as to
the separate patentability of claim 14 and claim 4 which was rejected under
35 U.S.C. § 103 (Reply Br. 5).
To the extent that the Appellants are arguing claims 14 and 17-20 as
not anticipated by Brewis, we denominate our affirmance of the rejection of
those claims as a new rejection under 35 U.S.C. § 103 over Brewis in view
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of Carter.3 Doing so, in this instance, is fair to the Appellants because the
Appellants have acknowledged that the rejection of those claims should have
been under 35 U.S.C. § 103 over Brewis in view of Carter, along with
claim 4 (Reply Br. 5), and the Appellants have already addressed the
limitation argued with respect to claim 14 (“a pipe bursting projection on its
frontwardly facing outer surface”), see id., when responding to the rejection
under 35 U.S.C. § 103 of claim 4 over Brewis in view of Carter (Reply
Br. 8).
Claims 15 and 16
Regarding claims 15 and 16, which depend from claim 14, the
Appellants argue that it would not have been obvious to one of ordinary skill
in the art, in view of Brewis and Carter, to use Brewis’s expanded taper type
puller for pipe bursting (Request 6).
That argument is not convincing for the reasons given above with
respect to claims 7 and 9-13.
Decision
The Appellants’ request for rehearing is granted to the extent that we
denominate the affirmance of the rejection of claims 14 and 17-20 as a new
rejection under 35 U.S.C. § 103 over Brewis in view of Carter, but is denied
with respect to making any change to our decision to affirm the Examiner’s
rejections.
DENIED

tc

3 The Appellants do not separately argue claims 17-20 (Reply Br. 5).
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PHILIP G. MEYERS
PHILIP G. MEYERS LAW OFFICE
SUITE 302
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