Victaulic Company

Patent Trials and Appeals Board

Oct 23, 2020

2020002969 (P.T.A.B. Oct. 23, 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.
15/387,894 12/22/2016 Anthony J. Cuvo 22150.0398U2 4358
23859 7590 10/23/2020
Ballard Spahr LLP
SUITE 1600
999 PEACHTREE STREET
ATLANTA, GA 30309-4421
EXAMINER
CHOI, WILLIAM SOON
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
10/23/2020 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY J. CUVO and MATTHEW A. BOWMAN
Appeal 2020-002969
Application 15/387,894
Technology Center 3600

Before EDWARD A. BROWN, BRANDON J. WARNER, and
NATHAN A. ENGELS, Administrative Patent Judges.

ENGELS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Victaulic Company.
Appeal Br. 1.
Appeal 2020-002969
Application 15/387,894

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CLAIMED SUBJECT MATTER
The claims are directed to an adapter coupling. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A coupling for joining a flanged pipe element to a plain
end pipe element, said coupling comprising:
a plurality of segments attached to one another in spaced
apart relation end to end surrounding a central space, each of said
segments comprising:
a first side and a second side oppositely disposed;
a first channel positioned proximate to said first side and
extending circumferentially around and facing said central space;
a first flange positioned proximate to said second side and
extending outwardly away from said central space, said first
flange having a plurality of holes therethrough;
a second channel positioned between said first channel and
said flange and extending circumferentially around and facing
said central space;
wherein said coupling further comprises:
a split ring positioned in said first channel;
a seal positioned in said second channel;
a tube positioned within said central space and extending
outwardly from said second sides of said segments, said tube
engaging said seal.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kim US 2006/0208486 A1 Sept. 21, 2006
Bancroft US 2014/0070529 A1 Mar. 13, 2014

REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 6–13, 15, 16 102(a)(1) Kim
2–5, 14 103 Kim, Bancroft

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Application 15/387,894

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OPINION
Claim 1
The Examiner’s rejection of independent claim 1 includes a
limitation-by-limitation comparison of Kim to claim 1. Final Act. 2–3.
Appellant argues the Examiner erred in finding that Kim discloses the “first
flange” limitation and the “tube” limitation, as claimed.
“a first flange positioned proximate to said second side and extending
outwardly away from said central space”
The Examiner cites sidewalls 33 of Kim’s pipe joint as the claimed
first flange. Sidewalls 33 are depicted in the partial view of Kim’s Figure 5
and in Kim’s Figure 7, reproduced below with the Examiner’s annotations.

Annotated Copy of Portion of Kim’s Figure 5 (Ans. 9)
Appeal 2020-002969
Application 15/387,894

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Annotated Copy of Kim’s Figure 7 (Ans. 4)
The Examiner’s annotated version of Kim’s Figure 5 depicts a part of
the pipe joint with a rectangle added to indicate the Examiner’s
identification of the claimed “central space” and an upward arrow labeled
“33 extending outwardly away from the central space.” Ans. 9
(capitalization omitted). The Examiner’s annotated version of Kim’s
Figure 7 provides a perspective view of a pipe joint and includes a rectangle
identifying the Examiner’s identification of the claimed “central space.”
Ans. 4.
Appellant argues Kim’s sidewalls 33 extend inward, not outward as
claimed. Appeal Br. 3–4, 8–10. According to Appellant, Kim’s sidewalls
33 are fundamentally unlike the flanges described in the Specification in
both structure and function. Appeal Br. 10.
The Examiner responds, and we agree, that the claim language
requires considering the claimed flange from the perspective of the central
space. Ans. 9. The plain language of claim 1 defines the flange as
“extending outwardly away from said central space,” and considering Kim’s
sidewall 33 from the perspective of the central space, sidewalls 33 extend
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Application 15/387,894

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outwardly away from the central space. Sidewalls 33 do not extend
inwardly away from the central space. Notably, the claims do not define the
flange with respect to the horizontal portions of the claimed segments, for
example. In Kim’s Figures, sidewall 33 could be said to extend radially
inwardly from horizontal portion 30, but claim 1 does not define the flange
in terms of the segments nor does claim 1 otherwise distinguish sidewall 33
from the first flange, as claimed. Instead, we agree with the Examiner that
sidewall 33 extends outwardly away from the claimed central space and
satisfies “first flange” limitation of claim 1.
“said coupling further comprises: . . . a tube positioned within said
central space and extending outwardly from said second sides of said
segments”
The Examiner finds element 11 of Kim’s pipe joint satisfies the
claimed “tube” limitation. Final Act. 3. Appellant argues that Kim’s
element 11 cannot be the claimed tube because Kim describes element 11 as
welded or otherwise fixed to pipes 10. Appellant contends that, because
element 11 is welded to a pipe, it is part of the pipe and not part of the
coupling, as claimed. Appeal Br. 11; Reply Br. 3.
The Examiner responds, and we agree, that Kim’s element 11 satisfies
the “tube” limitation regardless of whether Kim teaches welding it to pipe
10. Kim’s Figure 5 is reproduced in its entirety below.
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Application 15/387,894

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Kim’s Figure 5
Kim’s Figure 5 is an exploded perspective view of a pipe joint that
depicts pipes 10 and elements 11 as separate structures. In fact, as described
by Kim, “the pipe joint device of the present invention comprises two
flanges 11, the packing 20, the clamps 30 and adjusting members 40.” Kim
¶ 37.
Nothing in claim 1 requires that the claimed tube be removable or
otherwise separable from a pipe. In fact, the structures recited in claim 1 are
not limited in the manner in which they may be joined. Accordingly, we
disagree with Appellant’s argument that Kim’s element 11 cannot satisfy the
“tube” limitation because Kim describes it as welded or otherwise fixed to a
pipe. Further, we agree with the Examiner that Kim’s element 11 satisfies
the “tube” limitation.
Having considered the Examiner’s rejection of claim 1 in light of each
of Appellant’s arguments, we disagree with Appellant’s arguments and
sustain the Examiner’s rejection of claim 1 as anticipated by Kim.
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Application 15/387,894

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Claims 2–16
Appellant relies on the same arguments addressed above for claims 2–
16. See Appeal Br. 6–12. We find Appellant’s arguments unpersuasive for
the same reasons explained above, and we sustain the Examiner’s rejection
of claims 6–13 and 15–16 as anticipated by Kim and the Examiner’s
rejection of claims 2–5 and 14 as unpatentable in view of Kim and Bancroft.
CONCLUSION
The Examiner’s rejections are sustained.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6–13, 15,
16
102(a)(1) Kim 1, 6–13, 15,
16

2–5, 14 103 Kim, Bancroft 2–5, 14
Overall
Outcome
1–16

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED