Steven Leary et al.

Patent Trials and Appeals Board

Jun 18, 2020

14080255 - (D) (P.T.A.B. Jun. 18, 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.
14/080,255 11/14/2013 Steven Leary 20697-9 1723
105330 7590 06/18/2020
Adams and Reese, LLP
One Shell Square
701 Poydras Street, Suite 4500
New Orleans, LA 70139
EXAMINER
HIDALGO-HERNANDE, RUTH G
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
jason.mueller@arlaw.com
lauren.barberena@arlaw.com
patents105330@arlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN LEARY and MARGARET FITZGERALD
____________

Appeal 2020-000068
Application 14/080,2551
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–9, 11–14, 16–19, 22, 23, 26–29, 32, 33, 36,
and 37. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Flange
Skillets International, LLC. (Appeal Br. 1.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates generally to an apparatus and method
for insertion of gaskets and, more particularly, to an apparatus for and a
method of inserting sealing gaskets between flange connectors of adjacent
pipe sections of underwater pipe line sections.” (Spec. 1, ll. 12–15.)
Claims 1 and 26 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A gasket insertion apparatus comprising:
a frame configured to have a gasket mounted therein;
a handle; and
at least one adjustable arm member extending from the
handle, the at least one adjustable arm member formed from a
malleable material and configured to transition from a first fixed
position, in a same plane relative to the handle, to a second fixed
position, the second fixed position not in the same plane relative
to the handle,
wherein a bottom edge of the at least one adjustable arm
member is configured to rest upon a flange of a flange assembly
when the at least one adjustable arm member is in the second
fixed position.

REJECTIONS
Claims 1–6, 8, 9, 11, 12, 22, 23, 26, 27, 29, 32, 36, and 37 are rejected
under 35 U.S.C. § 102(b) as anticipated by Vidrine (US 2011/0167607 A1,
pub. July 14, 2011).
Claims 1–9, 11, 12, 22, 23, 26–29, 32, 36, and 37 are rejected under
35 U.S.C. § 103(a) as unpatentable over Vidrine and McCreary
(US 2,339,479, iss. Jan. 18, 1944).
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Claims 13, 14, 16–19, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vidrine, McCreary, and McNeal (US 4,495,690, iss.
Jan. 29, 1985).

ANALYSIS
The § 102(b) rejection
The Examiner finds that Vidrine teaches “a gasket insertion
apparatus (10) comprising: a frame (12); a handle (18); and at least one
adjustable arm member (37) extending from the handle (18), the at least one
adjustable arm member formed from a malleable material.” (Non-Final
Action 2.) The Examiner also finds that Vidrine teaches
that the apparatus may be made of any structurally suitable
material such as aluminum or aluminum alloys, steel, stainless
steel, mild steel, polymeric composites, or industrial laminates
such as those Manufactured By Norplex-Micarta, Industrial
Laminates/Norplex. Most of these materials are the same as the
materials disclosed by Appellant to form the gasket insertion
apparatus (see Appellant’s specification, page 9, lines 14-16).
Therefore, the characteristics of the materials for both
apparatuses (Instant application and Vidrine) are going to be
similar, thus the properties of being adjustable/deformable/
malleable are the same. Furthermore, these types of materials
are inherently capable of being deformed.

(Answer 5.)
Appellant argues that “[a]n adjustable arm member is not disclosed or
suggested by Vidrine.” (Appeal Br. 4.) Specifically, Appellant argues that
with regard to tabs 37 shown in Figures 1 and 2 of Vidrine, Vidrine “fails to
teach or disclose that these tabs are ‘configured to transition from a first
fixed position, in the same plane relative to the handle, to a second fixed
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position, the second fixed position not in the same plane relative to the
handle’, as recited in the pending claims.” (Id. at 5.)
Vidrine discloses “[a] gasket insertion apparatus and method for
inserting a fluid sealing gasket between the bolted connection flanges of
adjacent underwater pipe line segments.” (Vidrine, Abstract.) Vidrine
further discloses that “[t]he apparatus 10 [(which includes tabs 37)] may be
made of any structurally suitable material such as aluminum or aluminum
alloys, steel, stainless steel, mild steel, polymeric composites, or industrial
laminates.” (Id. ¶ 14, 19, Figs. 1, 2.)
Appellant’s Specification discloses that “[a]rms 500 are sufficiently
malleable or flexible to permit manual bending and may be made of any
structurally suitable material, for example, aluminum or aluminum alloys,
steel, stainless steel, mild steel, polymeric composites, sheet metal, and
industrial laminates.” (Spec. 11, ll. 17–20.) In view of Appellant’s
Specification’s characterization of these materials, we agree with the
Examiner that the disclosure of some of these same materials in Vidrine
establishes that Vidrine discloses forming tabs 37 from a malleable material.
(See Answer 5.)
But claim 1 recites more than the use of a malleable material to make
the at least one adjustable arm member. Claim 1 also recites that the
adjustable arm member is “configured to transition from a first fixed
position, in a same plane relative to the handle, to a second fixed position,
the second fixed position not in the same plane relative to the handle.” In
other words, it is not sufficient that Vidrine discloses that the adjustable arm
member is formed from a malleable material. The Examiner agrees, noting
that for the arm member to be configured to be adjustable, one must look to
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both “the structure of the arm and the material characteristics thereof.” (Id.)
Thus, to anticipate claim 1, Vidrine must also expressly or inherently
disclose that the arm/tab is configured to transition from a first fixed
position, in a same plane relative to the handle, to a second fixed position,
not in the same plane.
Vidrine’s discussion of tabs 37 is limited. Vidrine discloses that
“[c]ertain embodiments of the present invention may also include tabs 37,
which may be configured to rest the insertion apparatus 10 on flange 30 to
provide additional stability.” (Vidrine ¶ 19; see also id. at Figs. 1–2.)
Nonetheless, the
Examiner believes the material of arm members (37) of Vidrine
is fully capable of being grabbed and bent in ANY number of
desirable positions. Since this is an apparatus claim and all the
structural limitations are met, there is no reason why the tab/arm
of Vidrine could not be deformed or adjusted from one position
to another.

(Answer 5–6.)
“[A]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference may still anticipate
if that element is ‘inherent’ in its disclosure. To establish
inherency, the extrinsic evidence “must make clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by
persons of ordinary skill.” Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir.
1991). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing
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may result from a given set of circumstances is not sufficient.”
Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re
Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A.
1981)).

In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Vidrine does not expressly set forth that tabs 37 are “configured to
transition from a first fixed position, in a same plane relative to the handle,
to a second fixed position, the second fixed position not in the same plane
relative to the handle,” as recited in claim 1. Nor do Figures 1 and 2 of
Vidrine, which show tabs 37, expressly set forth such a configuration. See
Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”). Thus,
we must ask whether this claim element is necessarily present in the
apparatus described in Vidrine.
Appellant argues that “Vidrine states that the tabs ‘provide additional
stability’ in resting the insertion apparatus on the flange. Vidrine at
Paragraph [0019]. If the tabs were adjustable or movable from one position
to another, the stability of the apparatus would be compromised.” (Appeal
Br. 5.) Moreover, Vidrine is silent on any potential for movement or
adjustment of the position(s) of tabs 37 from a first to a second fixed
position relative to a plane of the handle in accordance with claim 1. Nor
does the Examiner sufficiently explain why, in addition to being made of a
malleable material, the tabs 37 of Vidrine are necessarily configured to
transition from a first to a second fixed position. While it may be possible to
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configure tabs 37 to so transition, we do not agree that this element is
necessarily present in the apparatus described in Vidrine.
Absent the Examiner directing us to additional evidence, we do not
agree that the missing descriptive matter, i.e., that the adjustable arm
member is configured to transition from a first fixed position, in the same
plane relative to the handle, to a second fixed position, not in the same plane,
is necessarily present in the apparatus described in Vidrine.
In view of the above, we will reverse the rejection of claim 1 under
§ 102(b). Independent claim 26 includes similar language and for similar
reasons, we will reverse the § 102(b) rejection of claim 26, and dependent
claims 2–6, 8, 9, 11, 12, 22, 23, 27, 29, 32, 36, and 37.

The § 103(a) rejection
In rejecting claim 1 under § 103(a), the Examiner finds that Vidrine
“does not explicitly teach to transition the at least one adjustable arm
member from a first fixed position relative to the handle, the first fixed
position in a same plane relative to the handle to a second fixed position
relative to the handle.”2 (Non-Final Action 10.) The Examiner relies on
McCreary “solely to teach that it is known to manufacture a flat apparatus
(bendable tongue 20) in a compact position that eventually, when used, is
bent away from its original planar configuration to an expanded position, i.e.
its final desired shape (McCreary, Figures 1, 5 and 6).” (Answer 7.)

2 We note that claim 1 does not recite “to transition the at least one
adjustable arm member.” Rather, claim 1 recites “configured to transition.”
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McCreary discloses
a composite gasket or gasket assembly comprising two
component elements or parts, first: a pressure sealing element or
gasket proper, also designated as a packing element, serving to
cooperate with the opposed faces of the joint for sealing the
pressure, and second: a gauge element or compression limiting
element for limiting the approach of the joint faces toward each
other and thus limiting the extent to which the sealing element
may be compressed by the faces of the joint.

(McCreary, col. 1, ll. 8–18.) McCreary further discloses that the gasket
includes “a pliable non-resilient interlocking means which comprises a
bendable portion which can readily be bent by means of hand tools to effect
the interlocking and which will permanently remain fixed in the bent
interlocked position until manually returned to a non-interlocking position.”
(Id. at col. 2, ll. 43–49.)
The Examiner determines that
it would be obvious to one having ordinary skill in the art to use
the teachings of McCleary [sic] to manufacture the gasket
apparatus of Vidrine as a flat component with all the portions of
the apparatus in the same plane to maintain a compact position
for fabrication and storage, and when in use, bend the tabs to the
desired expanded position.

(Answer 7.) This suggests that the Examiner finds in McCreary, or at least
in the combination of Vidrine and McCreary, some reason to modify tabs 37
of Vidrine to make them adjustable. But the Examiner goes on to explain
that
since Vidrine is capable of adjustment in any number of desirable
positions (including the claimed positions), McCreary was used
to teach that when a user is ready to use the apparatus, portions
of the apparatus can be bent away, these portions having a
transition from a compact position to an expanded position to
serve its desired function.
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(Id. at 7–8 (emphasis added).) In short, the Examiner’s obviousness
determination, like the Examiner’s anticipation determination, relies on
Vidrine disclosing that tabs (37) are adjustable. However, for the reasons
discussed above, we do not agree that Vidrine discloses that tabs 37 are
adjustable. (See id.)
In view of the above, we will reverse the rejection of claim 1 under
§ 103(a). Independent claim 26 includes similar language and for similar
reasons we will reverse the rejection of claim 26 under § 103(a). With
regard to dependent claims 13, 14, 16–19, and 33, McNeal does not cure the
described deficiency. Therefore, we will also reverse the § 103(a) rejections
of dependent claims 2–9, 11–14, 16–19, 22, 23, 27–29, 32, 33, 36, and 37.

CONCLUSION
The Examiner’s rejection of claims 1–6, 8, 9, 11, 12, 22, 23, 26, 27,
29, 32, 36, and 37 under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejections of claims 1–9, 11–14, 16–19, 22, 23, 26–
29, 32, 33, 36, and 37 under 35 U.S.C. § 103(a) are reversed.

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Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 8, 9, 11,
12, 22, 23, 26,
27, 29, 32, 36,
37
102(b) Vidrine 1–6, 8, 9,
11, 12, 22,
23, 26, 27,
29, 32, 36,
37
1–9, 11, 12,
22, 23, 26–29,
32, 36, 37
103(a) Vidrine, McCreary 1–9, 11,
12, 22, 23,
26–29, 32,
36, 37
13, 14, 16–19,
33
103(a) Vidrine, McCreary,
McNeal
13, 14, 16–
19, 33
Overall Outcome 1–9, 11–
14, 16–19,
22, 23, 26–
29, 32, 33,
36, 37

REVERSED