Kuhmann, Karl et al.

Patent Trials and Appeals Board

Apr 15, 2020

13639765 - (D) (P.T.A.B. Apr. 15, 2020)

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.
13/639,765 10/05/2012 Karl Kuhmann 404556US99PCT 5534
22850 7590 04/15/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARL KUHMANN,
ANDREAS DOWE, and RAINER GOERING

Appeal 2019-003365
Application 13/639,765
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1 and 4–22.2 We have jurisdiction

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies “EVONIK DEGUSSA GmbH” as
the real party in interest (Appeal Brief filed July 11, 2018 (“Appeal Br.”) at
1).
2 See Appeal Br. 4–25; Reply Brief filed March 22, 2019 (“Reply Br.”) at
1–8; Final Office Action entered February 15, 2018 (“Final Act.”) at 2–8;
Examiner’s Answer entered January 30, 2019 (“Ans.”) at 3–8.
Appeal 2019-003365
Application 13/639,765

2
under 35 U.S.C. § 6(b). We heard oral arguments from the Appellant’s
representative on April 1, 2020.
We affirm.
I. BACKGROUND
In a prior appeal, we sustained all rejections under 35 U.S.C. § 103(a)
of then-pending claims 1 and 4–20 but not a rejection under 35 U.S.C.
§ 102(b) of claims 1, 4, 5, 8–15, and 17–20 (Decision on Appeal entered
June 19, 2017, Ex parte Kuhmann, Appeal 2016-000186 (PTAB 2017),
https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016000186-06-15-
2017-1). This second appeal is now before us after continued examination.
We also refer Appeal 2016-003086 in Application 13/640,586, in
which we reversed the Examiner’s decision to reject the claims under 35
U.S.C. §§ 102(b) and 103(a) (Decision on Appeal entered May 15, 2018, Ex
parte Kuhmann, Appeal 2016-003086 (PTAB 2018), https://e-
foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016003086-05-11-2018-1).
The subject matter on appeal relates to a flexible pipe having a
multilayer structure with “unbonded layers” (Specification filed October 5,
2012 (“Spec.”) at 1, ll. 2–3). According to the Specification, “[t]his type of
pipe has high resistance to the diffusion of gases from any conveyed fluid,
and can therefore be used with particular advantage for conveying crude oil,
natural gas, methanol, CO2 and the like” (id. at 1, ll. 4–6).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A flexible pipe having a multilayer structure with
unbonded layers, where the pipe comprises an interior lining
comprising unbonded layers (a) and (b):
Appeal 2019-003365
Application 13/639,765

3
a) at least one layer comprising a molding composition,
wherein the molding composition comprises a polymer selected
from the group consisting of:
a polyarylene ether ketone,
polyphenyl sulfone,
polyphenylene sulfide,
a blend of a polyarylene ether ketone and polyphenylene
sulfide, and semiaromatic poly amide, where from 5 to 100 mol%
of a dicarboxylic acid content thereof derives from an aromatic
dicarboxylic acid having from 8 to 22 carbon atoms, and which
has a crystallite melting point Tm of at least 260°C, determined
according to ISO 11357 in the 2nd heating procedure;
b) at least one layer comprising a fluoropolymer molding
composition;
wherein the flexible pipe is operable at 200°C to convey a
fluid selected from the group consisting of crude oil, natural gas,
methanol, and super critical carbon dioxide and resistant to the
diffusion of gases from the conveying fluid; and
wherein the interior lining is an unbonded three-layer
lining having a layer sequence a/b/a.
(Appeal Br. 26 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected, as follows:
A. Claim 21 under 35 U.S.C. § 112, ¶ 2, as indefinite;
B. Claims 1, 4, 5, and 8–22 as unpatentable over Braad,3 Burkett,4
and Mistrater et al.5 (“Mistrater”); and

3 WO 2005/028198 A1, published March 31, 2005.
4 US 3,537,729, issued November 3, 1970.
5 US 5,328,181, issued July 12, 1994.
Appeal 2019-003365
Application 13/639,765

4
C. Claims 6 and 7 as unpatentable over Braad, Burkett, Mistrater,
and Topoulos.6
(Ans. 3–8; Final Act. 2–8).
III. DISCUSSION
Rejection A (Indefiniteness). Claim 21, which depends from claim
1, recites: “wherein the flexibility of the pipe when subjected to a
temperature of 130°C is retained when the pipe is subjected to a temperature
of 200°C” (Appeal Br. 30).
In the Final Action, the Examiner states that the term “flexibility” in
claim 21 renders the claim indefinite because it is unclear how “flexibility”
is measured (Final Act. 2).7 The Appellant contends that “[r]egardless of
how the ‘flexibility’ of the pipe is measured, quantitatively or subjectively,
the flexibility of the pipe measured at 130°C must be retained when
measured at 200°C by the same method” and that “[h]ow the flexibility of
the pipe is measured is immaterial” (Appeal Br. 9). The Appellant argues
that, therefore, “[t]here is nothing vague about [claim 21’s] scope and
content” (id.).
We agree with the Appellant that the Examiner’s rejection is not well-
founded. The Appellant’s position on this matter is reasonably supported by

6 US 2010/0160008 A1, published June 24, 2010.
7 In reply to the Final Action, the Appellant proposed amendments,
including a proposal to cancel claim 21, but these amendments were not
entered (Advisory Action entered May 7, 2018, Box 3a; Amendment filed
May 7, 2018). The Examiner does not repeat the rejection in the Examiner’s
Answer but, at the same time, does not expressly withdraw it (Ans. 3–8).
Therefore, we presume that the rejection has been maintained. See 37
C.F.R. § 41.39(a)(1).
Appeal 2019-003365
Application 13/639,765

5
the claim language itself, as would be interpreted by one of ordinary skill in
the art. Because the Examiner does not respond to the Appellant’s
argument, we do not sustain the rejection.
Rejections B & C (Obviousness). Unless separately argued, the
rejected claims stand or fall with claim 1, which we select as representative.
See 37 C.F.R. § 41.37(c)(1)(iv).
With respect to claim 1, the Examiner finds that Braad describes a
flexible pipe with an interior three-layer lining having an a/b/a structure, in
which the layers are “unbonded” (Ans. 3; Final Act. 3). The Examiner also
determines that Braad discloses, or would have suggested to a person having
ordinary skill in the art, the same polymers specified for the layers recited in
claim 1 (Ans. 3; Final Act. 3–4). Also, based on the disclosures in Burkett
and Mistrater, the Examiner finds that Braad’s pipe would be expected to be
operable at 200°C to convey a fluid as specified in claim 1 (Ans. 4; Final
Act. 4).
The Appellant’s principal contention is that “Braad does not teach an
‘interior lining comprising unbonded layers (a) and (b) . . . wherein the
interior lining is an unbonded three-layer lining having a layer sequence
a/b/a’” (Appeal Br. 5; see also id. at 12–16). Specifically, the Appellant
argues that “unlike Applicant’s ‘unbonded three-layer lining having an
unbonded layer sequence a/b/a’, at least one of Braad’s ‘polymer layers’
must be strongly bonded to the ‘film layer’” and “[t]hat is not what
Applicant claims” (id.).
We disagree with the Appellant. Braad describes a “flexible
unbonded pipe compris[ing] at least one polymer layer and one film layer,
said polymer layer being bonded to said film” (Braad Abstract (emphases
Appeal 2019-003365
Application 13/639,765

6
added); see also id. at 4, ll. 3–5). Braad defines the term “unbonded” as “at
least two of the layers including the armouring layers [i.e., outer layers] and
polymer layers [being] not bonded to each other” (id. at 1, ll. 25–27). That
is, Braad teaches that at least two layers—whether they be armoring or
polymer layers—are not bonded to each other. Braad teaches an
embodiment in which “the film layer is sandwiched between two polymer
layers” and that, in this embodiment, “it is desired that at least one of the
polymer layers is bonded to the film layer with a bonding that is stronger
than the internal cohesion of said polymer layer” (id. at 12, ll. 1–4 (emphasis
added)).
In a manner similar to Braad, the current Specification defines
“unbonded” as “mean[ing] that at least two of the layers, inclusive of
reinforcing layers and plastics layers, have not been designed with bonding
between the same” (Spec. 1, ll. 22–24). Although claim 1 recites “an
interior lining comprising unbonded layers (a) and (b)” and “the interior
lining is an unbonded three-layer lining having a layer sequence a/b/a,” the
claim does not require that all (a)–(b) interfaces in the a/b/a structure lack an
adhesive or bond. As the Examiner cogently points out, “the claimed
invention does not exclude a lining in which two of the three layers a/b/a are
bonded to each other,” as disclosed in Braad, and that “[a] lining having
three layers a/b/a that are all unbonded to each other is therefore not
claimed” (Ans. 7 (emphasis added)). Thus, under the broadest reasonable
interpretation consistent with the Specification, we conclude that the
recitations “an interior lining comprising unbonded layers (a) and (b)” and
“the interior lining is an unbonded three-layer lining having a layer sequence
a/b/a” in claim 1 fail to distinguish over Braad’s flexible unbonded pipe. In
Appeal 2019-003365
Application 13/639,765

7
re Hiniker Co., 150 F.3d 1362, 1368–1369 (Fed. Cir. 1998) (“When given
their broadest reasonable interpretation, the claims on appeal sweep in the
prior art . . . . [T]he name of the game is the claim.”).
The Appellant alleges that “[i]t appears from Braad’s disclosure that
the strong bonding between the polymer layers and the film layer cannot
survive temperatures above 180°C” (Appeal Br. 19). As the Examiner
points out (Ans. 8), the Appellant fails to offer any evidence in support.
Therefore, we find no merit in the argument. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case of obviousness.”); In re Lindner, 457
F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements . . . are entitled
to little weight when the Patent Office questions the efficacy of those
statements.”).
The Appellant argues that “the evidence relied upon in support of the
Examiner’s conclusion of obviousness neither reasonably suggests the
invention claimed nor would have enabled one skilled in the art to make and
use the claimed invention with any reasonable expectation of success”
(Appeal Br. 20). We disagree. The Appellant does not direct us any facts or
teachings in the prior art that would have indicated a lack of reasonable
expectation of success. In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir.
1988) (“[F]or many inventions that seem quite obvious, there is no absolute
predictability of success until the invention is reduced to practice. . . . For
obviousness under § 103, all that is required is a reasonable expectation of
success.”).
Appeal 2019-003365
Application 13/639,765

8
The Appellant argues that Braad teaches away from the claimed
invention (Appeal Br. 20). The Appellant does not direct us to any evidence
that Braad would have indicated that the invention, as broadly recited in
claim 1, would not work. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir.
2016) (“Nothing in the prior art teaches that the proposed modification
would have resulted in an ‘inoperable’ process or a dietary fiber product
with undesirable properties.”).
Regarding claims 6 and 7, which recite that the crystalline melting
point Tm is at least 270°C and 280°C, respectively, the Examiner relies on
Topoulos to show that a semi-aromatic polyamide having a melting point of
at least 280°C is useful for making automobile parts and concludes that “[i]t
therefore would have been obvious for one of ordinary skill in the art to
provide for a semi-aromatic polyamide having a melting point of at least 280
degrees Celsius in order to obtain a pipe for use in an automobile” (Ans. 6).
The Appellant argues that Topoulos is non-analogous art (Appeal Br.
21). Although Topoulos does not mention pipes explicitly, we find that it is
reasonably pertinent to the problem with which the Inventors are concerned
because the reference discloses thermoplastic polyamide compositions
useful for a “wide range of applications” in which good mechanical
properties, heat resistance, and chemical resistance are important (Topoulos
¶ 3; Spec. 2, l. 27–3, l. 1 and 5, ll. 4–21). In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1380–81 (Fed. Cir. 2007) (prior art disclosing springs as part
of a counterbalancing mechanism in a folding bed is reasonably pertinent to
an application describing a gas spring used as part of a lift assist assembly in
a claimed treadmill). See also Wyers v. Master Lock Co., 616 F.3d 1231,
1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in [KSR Int’l Co. v.
Appeal 2019-003365
Application 13/639,765

9
Teleflex Inc., 550 U.S. 398 (2007)] directs us to construe the scope of
analogous art broadly, stating that ‘familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a
puzzle.’”); KSR, 550 U.S. at 417 (“When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one.”) (emphasis added).
Regarding claims 21 and 22, the Appellant points out that these claims
“uniquely limit the flexible pipe of [c]laim 1 to pipe ‘wherein the flexibility
. . . when subjected to a temperature of 130°C is retained when the pipe is
subjected to a temperature of 200°C[’] . . . and flexible pipe ‘which does not
form stress cracks in deformed regions when the pipe is subjected to a
temperature of 200°C[,’]” respectively (Appeal Br. 8–9; see also id. at 22–
25). The Appellant argues that “Braad teaches only that the disclosed
polymer layer ‘is capable of resisting the high temperatures of the fluid
conveyed e.g. in the order of 130°C to 150°C, or even in the order of 130°C
to 180°C’” (id. at 9 (citing Braad at 4, ll. 13–19)).
As the Examiner explains (Ans. 8), Braad does not limit the pipe’s
operability to 180°C (Braad at 4, ll. 13–15 (“In one embodiment, it is desired
that the polymer layer is capable of resisting the high temperatures of the
fluid conveyed e.g. in the order of 130°C to 150°C, or even in the order of
130°C to 180°C . . . .”)). Because the Appellant does not effectively refute
the Examiner’s reasoning based on Burkett and Mistrater (Ans. 4–5), the
Appellant’s argument is unpersuasive to identify reversible error in the
rejection as maintained against claims 21 and 22.
Appeal 2019-003365
Application 13/639,765

10
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejections based on obviousness.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21 112, ¶ 2 Indefiniteness 21
1, 4, 5, 8–22 103(a) Braad, Burkett,
Mistrater
1, 4, 5, 8–22
6, 7 103(a) Braad, Burkett,
Mistrater,
Topoulos
6, 7
Overall
Outcome
1, 4–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED