Victor Kirilichin et al.

Patent Trials and Appeals Board

Dec 8, 2021

2020003395 (P.T.A.B. Dec. 8, 2021)

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.
16/027,992 07/05/2018 Victor Kirilichin 05406-P0002C 5127
24126 7590 12/08/2021
ST. ONGE STEWARD JOHNSTON & REENS LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
AVERICK, LAWRENCE
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
12/08/2021 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VICTOR KIRILICHIN, DAVID P. TURECHEK,
and BRIAN P. KRIEGER
____________

Appeal 2020-003395
Application 16/027,992
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON REMAND

This case is before us on remand from the Federal Circuit. After
considering the direction given us from the Federal Circuit in its remand
Opinion, In re Kirilichin, No. 2021-1168, 2021 WL 3045413 (Fed. Cir.
July 20, 2021), we have reviewed the Examiner’s rejection of all pending
claims (claims 1–13) under 35 U.S.C. § 103 as unpatentable over Rothstein
(US 4,646,816, iss. Mar. 3, 1987) and Lee (US 5,160,226, iss. Nov. 3, 1992).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
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THE INVENTION
Appellant’s invention is a plug assembly comprised of two
components that seals a hole. Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An insert for sealing a hole having a first diameter
comprising:
a core having a height and a tapered outer wall;
a threaded hole located in a first end of said core, a depth of
said threaded hole less than the height;
a cylindrical metallic sleeve having a through hole defining
an inner diameter of the cylindrical metallic sleeve wherein said
cylindrical metallic sleeve is in contact with and surrounds at
least part of said core;
said cylindrical metallic sleeve having a first end and a
second end;
a maximum outer diameter of said cylindrical metallic
sleeve is equal to or less than the first diameter;
a second end of said core having an outer diameter larger
than the inner diameter of the cylindrical metallic sleeve;
the first end of said core having a first end diameter
dimensioned such that prior to retraction of said core into said
cylindrical metallic sleeve and prior to engagement of said
threaded hole with a male threaded device, said first end of said
core is retained and in press fit contact at said second end of
said cylindrical metallic sleeve such that the core extends from
the first end of said core to the second end of said core in a
direction away from both the first and second ends of said
cylindrical metallic sleeve.
OPINION
Nomenclature
The industry that practices the subject technology does not appear to
have adopted a standard set of terms for the various components used in the
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type of plug devices at issue in this case. For the sake of clarity and brevity,
we will adopt the following nomenclature convention.1
Plug assembly: will refer to the set comprised of two components that
make up the subject device (claim 1’s “insert”).
Sleeve: will refer to the outermost, expandable component of the plug
assembly. The sleeves of some plug assemblies are open at both ends,
whereas the sleeves of some of the prior art plug assemblies discussed herein
are open at one end and closed at the other.
Core: will refer to the innermost component of the plug assembly that
is urged into the sleeve to expand it.
Insertion hole: will refer to the hole in the work piece that is sought to
be plugged and sealed. The insertion hole is distinct from the interior bore
of the plug assembly sleeve component that receives the core.
We will, from time to time for purposes of clarity, use the
corresponding, analogous term from a particular reference next to one of the
foregoing conventional terms set off in parentheses.
Rejection of Claims 1–5
Appellant argues claim 1, but raises no separate argument as to
claims 2–5. Appeal Br. 5–25. Claim 1 is representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Rothstein discloses the invention as claimed
except for explicitly disclosing that core (plug) 48 and sleeve 46 engage with
each other “prior to” engagement of a threaded device. Non-Final Act. 4–6.
The Examiner relies on Lee as press fitting two plug assembly components

1 To be clear, this is merely a naming convention, not a construction of the
claim terms.
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without first engaging a threaded device and concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to press fit Rothstein’s core (plug) 48 and sleeve 46 prior to
placing them in the insertion hole and engaging a threaded device. Id.
at 6–7. According to the Examiner, a person of ordinary skill in the art
would have pre-assembled the plug components to avoid mismatching of
parts. Id.
As we understood Appellant’s position during the original appeal
before PTAB, the primary thrust of Appellant’s position is that, in
Rothstein’s plug assembly, the core (plug 48) is disposed on the distal end of
the device and is drawn into the interior of sleeve 46 to radially expand the
sleeve to fill the insertion hole, whereas, in contrast, Lee’s sleeve (plug
body 14) is disposed on the distal end of the device and Lee’s core (pin 12)
is forced into the sleeve from the proximal end of the device. Appeal Br. 21.
In Appellant’s own words:
Examiner adds press fitting to the wrong end of the core
As alluded to above, Lee and Rothstein function in
fundamentally different ways. Lee requires pressing or
hammering the expansion pin into the insert whereas Rothstein
requires pulling. These divergent principles of operation mean
that one of skill in the art looking to improve Rothstein would
not see Lee as relevant to improving pulling based inserts.
Basically, the end of Lee which is press fit is facing the insert
body without a through hole. The threaded hole as claimed in
Claim 1 is in that end which is press fit and thus the press fit
end being added in Lee is being modified to include a hole for
pulling installation of the core into the sleeve where Lee would
not allow access to that hole for pulling in the first place.
Id. In other words, Rothstein’s core (plug 48) is positioned distally in the
insertion hole (tube 19) and sleeve 46 is positioned proximally. Rothstein,
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Figs. 5–8. Rothstein then radially expands sleeve 46 by urging the core
(plug 48) into sleeve 46 with a pulling motion. Id. In contrast, Lee’s sleeve
(body 14) is disposed distally in bore 28 and Lee’s proximally placed core
(pin 12) radially expands the sleeve by being pushed into the sleeve. Lee,
Figs. 1–2.
Appellant also argues against the Examiner’s proposed combination
based on: (1) teaching away: (2) change in principle of operation; (3)
hindsight; and (4) unsatisfactory for intended purpose. Appeal Br. 5, 6, 18,
and 22. Appellant also argues that there is no reason for a person of
ordinary skill in the art to have made the combination. Id. at 24.
In response, the Examiner reiterates that the only thing missing from
Rothstein is an explicit teaching that the core and sleeve are press fit “prior
to” engagement with a threaded device. Ans. 4 (“the only teaching the
examiner has gleaned from the disclosure of Lee is that it is known to be
advantageous to press fittingly preassemble two components of a sealing
insert”). Thus, the Examiner merely relies on Lee for the explicit disclosure
of pre-assembling by press fitting the core and sleeve prior to engagement
with a male threaded device. Id. The Examiner disposes of Appellant’s
“teaching away” argument by pointing out that the argument depends on the
shape of the hole that the plug is inserted into, which is an unclaimed feature
of the invention. Ans. 6. The claim 1 preamble merely recites that the
insertion hole has a “first diameter” and the body of the claim recites that the
outer diameter of the sleeve is equal to or less than such “first diameter.”
Claims App. Thus, although claim 1 requires that the sleeve has a
cylindrical shape, there is no corresponding limitation with respect to the
shape of the insertion hole. Id.
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In its Reply Brief and despite the Examiner’s assertion in the Answer
that the only teaching from Lee relied on in the rejection is press-fit
preassembly, Appellant presents a lengthy argument as to why all of the
features of Lee cannot be bodily incorporated into Rothstein. See generally
Reply Br. 2–19. Essentially, Appellant focuses on the relative juxtaposition
of the core and sleeve components of Rothstein and Lee that purportedly
prevent Lee from being bodily incorporated into Rothstein. Reply Br. 16
(“it is not any end which is press fit rather it must be the first end”). In other
words, according to Appellant, a person of ordinary skill in the art could not
have combined a first reference’s teaching of the core end of the plug
assembly being first placed into the insertion hole with a second reference’s
teaching of the sleeve end being first placed into the hole.
Rothstein operates in a manner that is remarkably similar to
Appellant’s invention except that Rothstein’s threaded device uses a wrench
and manual force to accomplish retraction of the core into the plug, whereas
Appellant’s threaded device is motorized. Spec. ¶ 41, Fig. 5 (installation
device 21). Rothstein retracts core (plug) 48 into sleeve 46 by rotating
nut 54 in relation to slidable flat washer 53. Rothstein, col. 9, ll. 21–34.
Rotating nut 54 in relation to the threads on stem 49 allows core (plug 48) to
be axially retracted into sleeve 46 without the stem or core being rotated,
such rotation being inhibited by using a wrench on “gripping end” 51 of
stem 49. Id. col. 9, ll. 27–44, Fig 6. In other words, by using a first wrench
on gripping end 51 of stem 49, Rothstein’s second wrench rotates threaded
nut 54 without rotating stem 49 or core (plug) 48 attached thereto. Id. This
operates to apply an axial pulling force on core (plug) 48 to draw it into and
radially expand sleeve 46. Id. col. 9, ll. 33–44, Fig. 6. This is not
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fundamentally different than how Appellant radially expands its sleeve 5 by
axial retraction of pull rod 20 into installation device 21. Spec. ¶ 36,
Figs. 2A–D.
Appellant offers the following statement which, if not demonstrably
false, is without factual foundation in the record.
Examiner states that in FIG. 6 of Rothstein that the tapering
surface of core (48) would permit the same type of press fitting
operation between the core (48) and the cylindrical metallic
sleeve (46). But, this overlooks the fact that Lee is telling the
skilled artisan that doing this would result in a radial clearance
problem because the outer wall of the Rothstein sleeve (46) is
not tapered and that the press fitting would effectively expand
the sleeve (46) and create a clearance problem. With a
clearance problem, the insert cannot be put into the hole to be
sealed in the first place or would not create an effective seal.
Reply Br. 13.
The foregoing statement of Appellant is belied by Figure 6 of
Rothstein, reproduced below. Figure 6 shows radial clearance between
sleeve 46 and insert hole (tube 19) along the entire axial length of sleeve 46
despite showing axial overlap and frictional contact between the distal end
of sleeve 46 and proximal end of core (plug) 48.

FIGURE 6 OF ROTHSTEIN
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Rothstein, Fig 6. There is no underlying factual foundation for Appellant’s
assertion that preassembly of Rothstein would create a radial clearance
problem. Furthermore, Appellant fails to explain how or why Rothstein has
a radial clearance problem, while Appellant’s invention, which operates in
the exact same manner as Rothstein, does not. Stated differently, Appellant
fails to explain how or why Rothstein would experience any more
pre-assembly radial expansion clearance problems than Appellant.
Moreover, the notion of “radial clearance” necessarily takes into
account the inner diameter of the insertion hole in addition to the outer
diameter of the plug assembly. However, there is no limitation in claim 1
directed to the respective diameters of the plug assembly and the insertion
hole other than the outer diameter of the sleeve being equal to or less than
the diameter of the insertion hole. Claims App., claim 1. In particular, there
is no limitation in claim 1 that specifies whether the outer diameter of the
sleeve is measured before or after press-fit preassembly of the sleeve and
core. Id.
Regarding preassembly, Rothstein teaches that Figure 6 depicts the
configuration and relative positions of stem 49, nut 54, washer 53, sleeve 46,
and the core (plug 48) prior to insertion of the plug assembly into the
insertion hole.
[A]ssembled sleeve member 46 and plug member 47 are
provided with a slidable flat washer 53 and a threaded nut 54
for tightening the plug within the tube end. The nut 54 is
threadedly received on the threaded outer end 49b of the
stem 49, and bears against the washer 53 which, in turn, bears
against the shoulder 50 of the sleeve member 46. Thus
assembled, the plugging apparatus is placed within the tube
end 19a.
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Id. col. 9, ll. 27–44 (emphasis added). In other words, the relationship of
sleeve 46, core (plug) 48, stem 49, washer 53, and nut 54 is properly
considered a “pre-assembly” relative to its insertion into tube 19.
Regarding “press-fit,” Figure 6 depicts sleeve 46 and core (plug) in
axial overlapping, physical contact with each other. Id. Fig. 6. Such overlap
and physical contact implies at least some amount of friction between the
two components. Rothstein is silent as to the amount of friction that exists
between sleeve 49 and the core (plug 48) in Figure 6. Nevertheless, the fact
that they are depicted in physical contact with each other suggests that the
relationship sleeve 49 and core 48 may arguably be characterized as
“press-fit.” This brings us to the issue of whether the axially overlapping,
frictional, pre-insertion relationship of sleeve 46 and core (plug) 48 depicted
in Figure 6 is accomplished “prior to engagement” with the threaded device.
The Examiner concedes that Rothstein is silent on this final point.
Non-Final Act. 5–6.
It is within the context of the foregoing teaching of Rothstein that the
Examiner relies on Lee solely for demonstrating that it was known, in the
prior art, to press-fit a core into a sleeve prior to being placed into the
insertion hole. Ans. 4. In the Examiner’s own words: “To be clear, the
only teaching the examiner has gleaned from the disclosure of Lee is that it
is known to be advantageous to press fittingly preassemble two components
of a sealing insert.” Id. (emphasis in original).
Appellant’s “Teaching Away” Arguments
Appellant argues against the Examiner’s proposed combination by
asserting that Lee “teaches away” from Rothstein. Appeal Br. 5, 12–18.
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As noted by the Federal Circuit in its remand Opinion, “whether a
reference teaches away from the claimed invention” is a question of fact.
Kirilichin, 2021 WL 3045413, at *2 (quoting Meiresonne v. Google,
Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017)). “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.” In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (citation
omitted). “A reference does not teach away, however, if it merely expresses
a general preference for an alternative invention but does not criticize,
discredit, or otherwise discourage investigation into the invention claimed.”
Galderma Labs v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). It is
settled law that the “mere disclosure of alternative designs does not teach
away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The only evidence in support of the “teaching away” argument that
Appellant presents from the record before us is the following statement from
Lee:
The additional expansion needed in the prior art plugs to absorb
the installation tolerance has a number of adverse consequences
in addition to the consideration of the installation environment
. . . preassembly of the pin and plug members has not been
found to be practical, in part because of the large diameter of
the pin and in part because of the radial distortion of the plug
body caused by pre-insertion.
Appeal Br. 11–12 (quoting Lee, col. 2, ll. 14–26, emphasis supplied by
Appellant). Appellant attempts to embellish the foregoing statement with
unsubstantiated attorney argument. For example, Appellant argues, without
factual support, that “Lee specifically and clearly states to the skilled artisan
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that the only reason it is possible to provide the press fit [the] examiner
identifies is that the hole/insert is tapered.” Appeal Br. 11–12 (emphasis
omitted). However, unsworn attorney argument is not evidence. Icon
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017);
see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that
attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value).
At the outset, it must be pointed out that the language in Lee upon
which Appellant relies is taken from the “Background of the Invention”
section of the reference. Charitably construed, it amounts to little more than
a self-serving, subjective statement of opinion by inventor Lee who is
attempting to promote the patentability of his latest invention over his prior
work (US 2,821,323 to Lee iss. Jan 28, 1958), which is cited in the
preceding column of the same “Background” section. Lee, col. 1, ll. 13–15.
Generally speaking, a statement by an applicant as to the advantages of his
invention is less persuasive than one made by a disinterested person. In re
McKenna, 203 F.2d 717, 720 (CCPA 1953). Thus, in weighing the
evidentiary value to be given to Lee’s “Background” statement relied on by
Appellant, we are mindful of the source of the statement and the purpose for
which it is offered.
Contrary to the misleading impression given by Appellant, it was
known in the prior art (even prior to Lee) to pre-assemble a core and
cylindrical sleeve into a plug assembly before placement into an insertion
hole. US 3,825,146 to Hirmann, iss. July 23, 1974.2 Hirmann is explicitly

2 A copy of Hirmann is supplied in the accompanying Appendix.
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identified and discussed in the “Background of the Invention” section of
Lee. Lee col. 1, ll. 28–31. Figures 1 and 2 of Hirmann are reproduced
below side-by-side. Referencing the figures below, Figure 1 of Hirmann
appears on the left and Figure 2 appears on the right.

FIGURES 1 AND 2 OF HIRMANN
Element 1 is a cylindrically shaped expandable sleeve. Element 2 disposed
within sleeve 1 is expanding member 2. Figure 1 depicts the expanding
member at the mouth of the opening of the sleeve. Figure 2 depicts the
expanding member after it has been pushed into the interior of the sleeve.
Hirmann explains:
[I]n order to ensure that the plug itself will remain
non-displaceably and sealingly seated within the workpiece
bore 10 and also will be capable of withstanding considerable
pressure within such bore, for instance for valves of hydraulic
installations, the sleeve 1 is expanded with the aid of the
expanding ball 2.
Hirmann, col. 3, ll. 18–23. Hirmann explicitly teaches pre-assembly of the
sleeve and expansion member. Id. col. 3, ll. 9–11 (“the plug construction of
FIG. 1 which has previously mounted therein a ball or sphere 2 serving as
the plug expanding element is destined to be inserted into the bore 10 of any
suitable workpiece” (emphasis added)). Furthermore, Hirmann is not
limited to using a ball as the expanding member.
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Instead of using a ball or sphere as the expanding element for
the plug it would be possible to use a different configured or
designed expansion element which is provided with a ball-like
or crown-like portion at the region of the bore 6 of the plug.
Id. col. 4, ll. 43–48.
A skilled practitioner knows that, in order to insert (an unexpanded)
cylindrical plug assembly into a cylindrical insertion hole, the outer diameter
of the plug assembly must be less than the inner diameter of the insertion
hole. The space or clearance between the plug assembly and insertion hole
must then be bridged by expansion of the plug assembly to seal the hole.
Such expansion must be accompanied by sufficient force to withstand
pressure. In that regard, it was known, in the prior art, to provide cylindrical
expansion plugs that can withstand higher pressures. See US 4,867,333 to
Kolp, iss. Sept 19, 1989 (cited in Lee at col. 1, ll. 15–27).3, 4
Leading up to its “not . . . practical” remark, Lee discusses various
considerations related to the spacing between the outer diameter of the plug
sleeve and the inner diameter of the insertion hole. In Lee’s time, it was
common to require that the insertion hole be reamed out prior to plugging.
Lee col. 1, ll. 34–37. Lee then notes that: “Due to the relatively small size

3 The Federal Circuit expressly notes that Appellant’s application relates to a
plug that can withstand high pressures. Kirilichin, 2021 WL 3045413, at *1.
Appellant presents three claims that contain a limitation directed to
withstanding a blowout pressure of at least 40,000 psi (claims 5, 9, 13);
however, Appellant groups these claims with the independent claims from
which they depend and does not separately argue for their patentability.
See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims
constitutes a waiver of arguments for separate patentability).
4 A copy of Kolp is provided in the accompanying Appendix.
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of the plugs, minor variations in tooling or reaming technique can produce
clearances between the outside surface of the plug and the inside surface of
installation bore that are significant to the function of the plug.” Id. col. 1,
ll. 37–41. Therefore, according to Lee, “an installation tolerance must be
allowed between the installation bore and the unexpanded plug outer
surface.” Id. col. 1, ll. 42–44.5 Lee then concludes that “the total plug
expansion must be increased by adding the installation tolerance to the
expansion required for specified sealing performance.” Id. col. 1, ll. 59–62.
It is within the context of Lee’s discussion of machining and mechanical
tolerances of the reamed insertion hole and the plug assembly components
that Lee remarks about the practicality of using pre-assembled components.
Id. col. 2, ll. 14–25. The consideration mentioned by Lee in the
“Background of the Invention” section specifically relates to “radial
distortion” of the sleeve caused by pre-assembly of the core and sleeve prior
to insertion of the plug assembly into the reamed insertion hole. Id. col. 2,
l. 25.
There is one final consideration that merits discussion as to whether
Lee’s “not . . . practical” remark should be considered a teaching away of
pre-assembling a cylindrical plug device, and that has to do with Appellant’s
own teaching disclosure in its Specification. Appellant’s own invention
discloses and claims a pre-assembled cylindrical plug device. Claims App.,
claim 1 (“cylindrical metallic sleeve”). If pre-assembling a cylindrical plug
assembly was truly “not practical” at the time of Appellant’s invention and

5 Lee estimates the radial tolerance that must be allowed for variation in the
diameter of the reamed out insertion hole is two-thousandths of an inch. Id.
col. 1, ll. 65–66.
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would have been so recognized in the art, such would indicate that there was
a technological hurdle that needed to be overcome. Consequently, we would
expect Appellant to teach how it overcame such technological hurdle.
Appellant’s Specification is twelve pages in length. See generally Spec.
The “Detailed Description of the Invention” is only seven pages in length.
Id. at 6–12. We have reviewed Appellant’s entire Specification and there is
no discussion or analysis regarding radial distortion related to pre-assembly
or techniques to accommodate, adjust for, or mitigate technological issues
related to such radial distortion. See generally Spec.
Appellant teaches that the core and sleeve (“cylinder”) are sized so
that the core can be press-fit into the sleeve. Spec. ¶ 38. Appellant teaches
that “[t]he outer dimension of the sleeve and the inner dimension of the hole
are typically also within close tolerances so that the radial expansion of the
sleeve is sufficient to seal the hole.” Id. (emphasis added). According to
Appellant, the outer diameter of the sleeve may be up to four-thousandths of
an inch smaller than the inner diameter of the insertion hole.6 Id. Appellant
understands that larger differences in diameter between the sleeve and the
hole can still seal the hole, but may result in lower blow out pressure. Id.
At this juncture, it bears mention that, although Appellant discusses
the radially spaced apart relationship of the outer diameter of the sleeve and
the inner diameter of the insertion hole in its Specification (id.), claim 1 is
directed solely to a plug assembly (insert). Claims App., claim 1. In that
regard, the Examiner is correct in pointing out that Appellant’s “teaching

6 In comparison, Lee states that two-thousandths of an inch in radial
tolerance must be allowed for variations in the diameter of the reamed
insertion hole. Lee, col. 1, ll. 64–67.
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away” argument relates to the spatial relationship between the sleeve and the
insertion hole, yet there is no limitation in the claim directed to the spatial
and dimensional relationship between the plug assembly and the insertion
hole other than the diameter of the sleeve being equal to or less than the
diameter of the insertion hole. Claims App., claim 1; Ans. 6 (“the particular
shape of the hole that applicant’s insert is to be inserted is not a claimed
feature”). Again, claim 1 does not specify whether the diameter of the
sleeve is measured before or after pre-assembly. Id. Thus, Appellant’s
“teaching away” argument is not commensurate with the scope of
Appellant’s claims.
Furthermore, with respect to the two components of the plug assembly
apart from the size of the insertion hole, Appellant teaches that tolerances
between the diameter of void 10 of the sleeve and cylindrical section 7 of
core 3 allows sleeve 5 to retain core 3 to create an assembled insert. Spec.
¶ 33. However, there is no limitation in claim 1 requiring the core to have a
cylindrical top section. Claims App. Notably, Appellant teaches that some
embodiments of the invention dispense with cylindrical section 7 at the top
of the core 3 so that the tapered section extends from top to bottom of core 3.
Spec. ¶ 32. Claim 1 merely requires that the core has a height and “a tapered
outer wall.” Claims App. There is no teaching in the Specification as to
how to achieve a press fit between the sleeve and a fully tapered core. See
generally Spec. Appellant does not disclose that any particular amount of
radial distortion is expected to occur as a result of press-fit pre-assembly. Id.
Appellant does not disclose, much less claim, any particular dimensions with
respect to the interior diameter of hole 34 that is required to accommodate
such radial distortion (if any). Id.
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Notwithstanding the foregoing, we are not inclined to find that
Appellant’s Specification lacks enablement with respect to achieving press-
fit pre-assembly and subsequent placement of the assembled plug into an
insertion hole. Rather, in the absence of specific description, it is
appropriate for us to merely assume that anyone desiring to perform the
claimed pre-assembly would know how to do so. In re Epstein, 32
F.3d 1559, 1568 (Fed. Cir. 1994); see also In re Fox, 471 F.2d 1407
(CCPA 1973) (explaining that claim elements that are not described in detail
are presumed to be known to those of ordinary skill in the art). Thus,
although Appellant argues that Lee teaches away from press-fit preassembly
of a cylindrical plug assembly, such argument is belied by Appellant’s own
lack of any teaching disclosure on how to overcome what supposedly causes
such preassembly to be “not practical” in the first place. Appellant’s failure
to provide any teaching on how to achieve press-fit pre-assembly and then
overcome radial expansion problems, if any, to insert such assembly into an
insertion hole substantiates the Examiner’s conclusion that no more than
ordinary skill is required to practice the invention in view of the teachings of
the prior art. Epstein, 32 F.3d at 1568.
In summary, with the advent of Lee, two alternative types of pre-
assembled plug devices were known in the prior art: (1) devices with
cylindrical sleeves (e.g., Hirmann); and (2) devices with sleeves with tapered
outer surfaces (e.g., Lee). Where the prior art contains some references that
teach the combination and others teach away from it, each reference must be
considered “for its power to suggest solutions to an artisan of ordinary skill
consider[ing] the degree to which one reference might accurately discredit
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another.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) (quoting In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)).
With the foregoing in mind, we consider whether Lee’s “not found to
be practical” remark (Lee, col. 2, l. 22) amounts to a teaching away from
using cylindrical sleeves or merely expresses a preference for tapered
sleeves. In that regard, we note that “teaching away” requires “clear
discouragement” from implementing a technical feature. In re Ethicon,
Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017). “[Just because] better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes.” Bayer Pharma AG v. Watson Labs,
Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017) (quoting In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012)). Having considered the matter carefully
upon remand, we find that Lee’s “not . . . practical” remark is merely an
expression of preference for tapered sleeves, which Lee views as superior to
cylindrical sleeves, rather than an expression of “clear discouragement”
from use of the latter. Ethicon, 844 F.3d at 1351; Bayer Pharma, 874 F.3d
at 1327. Our view that Lee merely expresses a preference is reinforced by
Lee’s explicit acknowledgement that configurations involving a cylindrical,
non-tapered socket were known and merely required the designer to allow
room for the expansion means to be partially pre-inserted without “unduly
distorting” the plug body. Lee, col. 3, ll. 41–45. Thus, the teachings of
Hirmann, the subjective nature of Lee’s “not practical” statement, Lee’s
explicit acknowledgement that press-fit preassembly was known, and
Appellant’s complete lack of any teaching disclosure (practical or otherwise)
on how to overcome what Lee subjectively believes is “not practical,” all
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militate in favor of treating Lee’s statement as merely an expression of
preference rather than a teaching away.7
Appellant’s Hindsight Argument
Appellant argues that the Examiner engaged in impermissible
hindsight. Appeal Br. 18, 22; Reply Br. 4–5, 12. However, we see no
evidence of hindsight in the Examiner’s rejection. The Examiner relies on
Rothstein as disclosing substantially all of claim 1 except for press-fit pre-
assembly. Non-Final Act. 5. The Examiner relies on Lee only to support a
finding that it was known, in the prior art, to press-fit pre-assemble a plug
and sleeve. Ans. 4 (“To be clear, the only teaching the examiner has gleaned
from the disclosure of Lee is that it is known to be advantageous to press
fittingly preassemble two components of a sealing insert”).
In the Non-Final Rejection, the Examiner gives a persuasive and
cogent reason for making the proposed combination. Non-Final Act. 6 (“to
avoid mismatching of parts”). This rationale is taken directly from Lee. Lee
explains that its sealing plug is suitable for manufacture over a wide range of
sizes. Lee. col. 9, ll. 42–46. Thus, Lee sees a benefit in using pre-assembly
to prevent mismatching of parts of different sizes.
Construction of the plug 10 or 40 as a one piece unit prevents
the otherwise possible inclusion of foreign matter in the plug
body socket 22 or 52 and prevents mismatching of plug bodies
with expansion members 12 or 42. In addition, preassembly
simplifies and aids the procedure of installation by requiring

7 While before the Federal Circuit, Appellant raised a new argument,
namely, that Rothstein’s use of a wrench constitutes an “explicit” teaching
away from a press-fit arrangement. Appellant’s Federal Circuit Appeal
Br. 20. There is no mention of this theory in Appellant’s PTAB Appeal
Brief. We will not entertain Appellant’s untimely new argument in this
remand proceeding. 37 C.F.R. § 41.41(a)(2).
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less manual dexterity than is necessary with separate parts,
particularly in the miniature sizes.
Lee, col. 8, ll. 10–17.
Under the circumstances, the Examiner’s stated rationale constitutes
articulated reasoning with rational underpinning sufficient to support the
rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning), cited with approval in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). The Examiner having supplied a sufficient,
non-hindsight reason to combine the references, Appellant’s hindsight
argument is of “no moment.” In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed.
Cir. 2016).
Appellant’s Principle of Operation Argument
Appellant argues that the Examiner’s proposed combination changes
Lee’s basic principle of operation. Appeal Br. 6–7, 21; Reply Br. 3. This
argument is not persuasive. First, the primary reference that is being
modified is Rothstein. Rothstein seals an insertion hole by radially
expanding cylindrical sleeve member 46 with a tapered core (plug 48).
Rothstein, col. 8, ll. 14–36; col. 9, ll. 28–44; Figs. 5–6. That principle
remains intact despite the Examiner’s proposed modification. Again, the
Examiner relies on Lee to modify Rothstein only as to its teaching that a
sleeve and plug can be press-fit pre-assembled prior to placement into the
insertion hole. Ans. 4. Such a press-fit pre-assembly would resemble the
relationship between sleeve 46 and core (plug) 48 shown in Figure 6.
Rothstein, Fig. 6, col. 8, ll. 14–36; col. 9, ll. 28–44.
Rothstein and Lee both have the same principle of operation. They
both seal a hole by radially expanding a sleeve with a core. In both cases, an
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axial force is applied so that the core is urged into the sleeve. Appellant’s
device operates the same way. Other prior art devices operate the same way.
See, e.g., Hirmann; Kolp in attached Appendix.
The difference between Rothstein and Lee is that radial expansion in
Rothstein is accomplished by urging the plug with axial force applied in a
pulling direction whereas Lee uses force in a pushing direction. We do not
consider the application of force in a particular direction as the “principle of
operation” of either of these devices. Even if we consider the direction of
force as part of the principle of operation (we do not), Rothstein and
Appellant both apply axial force in a pulling direction. Such principle of
operation is not changed by the Examiner’s proposed combination, which
merely combines Rothstein’s invention with Lee’s teaching of press-fit
preassembly (but not the rest of Lee’s structure). As can be readily seen by
viewing Rothstein’s Figure 6, frictionally engaging Rothstein’s sleeve 46
and core (plug) 48 prior to insertion in the insertion hole (tube 19) would
have no effect on Rothstein’s principle of operation.
Appellant’s Unsatisfactory for Its Intended Purpose Argument
Appellant argues that the Examiner’s proposed modification of the
prior art renders either or both of the references “unsatisfactory” for its
intended purpose. Appeal Br. 22; Reply Br. 16. This argument is not
persuasive. Rothstein’s device seals a hole by radially expanding a sleeve
with a plug. Rothstein, col. 8, ll. 14–36; col. 9, ll. 28–44; Figs. 5–6.
Appellant presents neither evidence nor persuasive technical reasoning that
press-fit pre-assembling Rothstein’s sleeve and plug prior to placement in
the insertion hole (tube 19) would somehow render Rothstein inoperable.
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Appellant provides no explanation as to how its own device is operable, but
modified Rothstein, which operates in an identical fashion, is not.
Whether Rothstein’s modified plug assembly would have a diameter
that allowed it to fit into the insertion hole (tube 19) is a function of the
specific dimensions of the plug assembly and the insertion hole. Once
again, Appellant does not claim any specific diameter of its sleeve other than
it being equal to or less than the diameter of the insertion hole and, again,
without specifying that the sleeve diameter is measured before or after
preassembly. Claims App. Again, there is no teaching in Appellant’s
Specification regarding the expected radial expansion of its sleeve upon
press-fit pre-assembly. See generally Spec. There is similarly no teaching
regarding how to accommodate such radial expansion, if any, to arrive at a
maximum outer diameter of said cylindrical metallic sleeve that is equal to
or less than the diameter of the insertion hole. Id. Appellant’s argument that
modifying Rothstein would render it unsatisfactory for its intended purpose
is based on the speculative assumption that modifying Rothstein would
cause the diameter of the pre-assembled plug assembly to be too large to fit
into the insertion hole. First of all, there is no evidence in the factual record
of this case to support this speculative assumption. Secondly, Appellant
altogether fails to account for the ability of the person of ordinary skill in the
art to make any adjustments in the respective diameters of the plug assembly
and the insertion hole to allow for insertion.
It is well settled that a claimed invention may be obvious even when
the prior art does not teach each claim limitation, so long as the record
contains some reason that would cause one of skill in the art to modify the
prior art to obtain the claimed invention. Beckson Marine, Inc. v. NFM,
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Inc., 292 F.3d 718, 728 (Fed. Cir. 2002). In an obviousness analysis, “we do
not ignore the modifications that one skilled in the art would make to a
device borrowed from the prior art.” In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1382 (Fed. Cir. 2007). This follows from the prospect that “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421. The record before us establishes that
skilled practitioners were well aware of the issues related to the relative
diameters of the plug assembly and the insertion hole. See, e.g., Lee, col. 1,
ll. 13–62; Hirmann, col. 3, ll. 8–15; Kolp, col. 6, ll. 14–50 (Appendix
hereto). In the instant case, Appellant presents neither evidence nor
persuasive technical reasoning that adjusting the outer diameter of a sleeve
to accommodate the inner diameter of the insertion hole to achieve effective
plug performance requires more than ordinary skill or produces unexpected
results.
Appellant emphasizes that Lee’s sleeve is closed on one end whereas
Rothstein provides a through hole. Appeal Br. 22–23. However, Appellant
is reminded that the Examiner only relies on Lee as teaching press-fit
preassembly. Ans. 4. Similarly, Appellant argues that Rothstein’s stem 49
would be rendered unsatisfactory when combined with Lee because Lee’s
juxtaposition of the core and sleeve would not permit access of a stem.
Appeal Br. 22. Again, Appellant is reminded that the Examiner only relies
on Lee as teaching press-fit preassembly.
Appellant’s arguments run afoul of well-established principles of
obviousness jurisprudence. It is well settled that “it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
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Thus, combining the teachings of references does not involve an ability to
combine their specific structures. In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Instead, common sense dictates that familiar items may have
obvious uses beyond their primary purposes such that 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 420.
Appellant’s “unsatisfactory for intended purpose” argument fails to
apprise us of Examiner error.
Rothstein is Fully Capable of Being Modified
to Allow for Press-fit Pre-assembly
The crux of Appellant’s opposition to the Examiner’s proposed
combination is that Rothstein cannot be modified so that its plug assembly
components are preassembled, because press-fit preassembly would cause
radial expansion of Rothstein’s straight-walled sleeve, thereby prohibiting
the plug assembly from being inserted into the insertion hole. Appeal
Br. 12.
However, the Background of the Invention section of Lee amply
demonstrates that a person of ordinary skill in the art, prior to Appellant’s
date of invention, was aware of the issues related to clearance between the
outside surface of the sleeve and the interior surface of the insertion hole.
Lee col. 1, l. 28 – col. 2, l. 4; col. 3, ll. 41–45. Lee’s application filing date
is 1990. Lee, p. 1. At least some of Lee’s concerns about cylindrical sleeves
and insertion hole walls is directed to manufacturing tolerances related to
variations in tooling and reaming techniques. Lee, col. 1, ll. 34–43.
Rothstein’s plug assembly is used to seal heat exchanger tubes. Rothstein,
col. 1, ll. 14–18. Rothstein explains that reaming is a factor related to plug
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assemblies such as Lee where the core is pushed into a sleeve. Id. col. 2,
ll. 1–17. There is no indication that reaming is required when using
Rothstein’s plug. See generally Rothstein. Similarly, there is no mention of
reaming in Appellant’s Specification. See generally Spec. Likewise, there
is no indication that the machine tolerances that were of concern to Lee
in 1990 remained a matter of concern when Appellant filed its parent
application in 2014. Id. In addition, there is no indication in Appellant’s
Specification that radial expansion of the cylindrical sleeve during press-fit
preassembly of Appellant’s plug assembly is even a relevant consideration
that requires mention, much less any teaching disclosure. Spec. ¶ 38.
Regardless of whether the core or the sleeve element end of the device
is placed first into the insertion hole and regardless of whether the external
walls of the sleeve and interior walls of the insertion wall are cylindrical or
tapered, it is undisputed that Lee teaches press-fit preassembly of a core into
a sleeve. We also agree with the Examiner that Lee provides the requisite
motivation to modify Rothstein as proposed in the rejection. Non-Final
Act. 7 (avoid mismatching of parts and convenience of installation).
Conceiving of and executing a pre-insertion friction fit of Rothstein’s
plug and sleeve requires no more than ordinary skill as such was known in
the prior art. Hirmann, col. 2, l. 55 – col. 3, l. 43; Figs. 1–2; Lee, col. 3,
ll. 41–50. The result of the Examiner’s proposed modification is predictable
and expected. See KSR, 550 U.S. at 416 (explaining that the combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results).
We acknowledge that Hirmann is not applied art in the Examiner’s
rejection. Nevertheless, we are admonished by the Federal Circuit, in
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appropriate cases, to consider non-applied references that serve as evidence
of the background knowledge of a person of ordinary skill in the art. See
Randall v. Rea, 733 F.3d 1355, 1361–1363 (Fed. Cir. 2013). Here, Hirmann
is relevant background knowledge on the issue of whether a person of
ordinary skill in the art would have been motivated to modify Rothstein so
as to press-fit preassemble a cylindrical sleeve and core. Id. We sustain the
Examiner’s unpatentability rejection of claims 1–5; however, inasmuch as
our reliance on Hirmann arguably changes the thrust of the Examiner’s
rejection, we designate our affirmance as a NEW GROUND OF
REJECTION. See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013)
(applicant entitled to fair opportunity to react to the thrust of a rejection).
The Examiner’s Rejection of Claims 6–9
Appellant argues independent claim 6, but does not separately argue
claims 7–9 that depend therefrom. Claims App., Appeal Br. 25–26. Claim 6
is representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 6 is substantially similar in scope to claim 1. Claims App.
Appellant argues that the rejection “ignores” the fact that Lee’s threaded
hole would be inaccessible to a threaded device due to the juxtaposition of
respective ends of the core (pin 12) relative to the opening of the sleeve
(plug body 14) which is only open on one end. Appeal Br. 25–26.
Appellant’s argument mischaracterizes the Examiner’s rejection with
respect to the teachings of the references and how those teachings are
combined to render the claims unpatentable. Our discussion with respect to
claim 1 applies with equal force to claim 6. For the reasons expressed above
with respect to claim 1, we sustain the Examiner’s rejection of claims 6–9.
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The Examiner’s Rejection of Claims 10–13
Appellant argues independent claim 10, but does not separately argue
claims 11–13 that depend therefrom. Claims App., Appeal Br. 26. Claim 10
is representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 10 is substantially similar in scope to claim 1. Claims App.
Appellant raises the same arguments that we previously considered and
found unpersuasive with respect to claims 1 and 6 and find equally
unpersuasive here. Appeal Br. 26.
For the reasons expressed above with respect to claims 1 and 6, we
sustain the Examiner’s rejection of claims 10–13.
NEW GROUND OF REJECTION
Unpatentability of Claims 1–13 over
Rothstein, Hirmann, and Lee
Claim 1
As set forth in the Examiner’s Non-Final Rejection, Answer, and our
previous discussion in this Decision regarding the teachings of Rothstein,
Rothstein discloses the invention of claim 1 substantially as claimed.
Non- Final Act. 4–6; Ans. 3–4. Rothstein does not explicitly disclose that
the first end of its core (plug) 48 has a diameter that allows such first end to
be retained in press-fit contact with the second end of its sleeve (sleeve 46)
“prior to” insertion of a threaded device. Hirmann discloses a plug assembly
comprising a cylindrical metal sleeve (expandable sleeve 1) and a core
(expanding member 2). Hirmann, Figs. 1–2. Hirmann’s core (expanding
member 2) is press-fit pre-assembled into expandable sleeve 1. Id. col. 2,
ll. 61–64 (“fixedly retained); col. 3, ll. 8–11 (“mounted therein . . . to be
inserted”). Lee explicitly discloses that its core is press-fit preassembled
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into its sleeve and that it is advantageous to do so because it prevents
possible mismatching of parts and increases the convenience of installation.
Lee, col. 3, ll. 45–49.
It would have been obvious, at the time of Appellant’s invention, to
modify Rothstein so as to press-fit, preassemble its core (plug) 48 and
sleeve 46 as taught by Hirmann and Lee. As explicitly taught by Lee, a
person of ordinary skill in the art would have been motivated to make such
modification to prevent possible mismatching of parts and to increase the
convenience of installation.
Claims 2–5
With respect claims 2–5, which depend from claim 1, we adopt as our
own the findings and conclusions of the Examiner set forth in the Non-Final
Rejection. Non-Final Act. 7–8. With respect to claim 3, we further find that
Hirmann discloses annular protrusions (teeth) on the outer surface of its
sleeve. Hirmann, col. 2, ll. 64–66, Figs. 1–2.
Claim 6
As set forth in the Examiner’s Non-Final Rejection, Answer, and our
previous discussion in this Decision regarding the teachings of Rothstein,
Rothstein discloses the invention of claim 6 substantially as claimed.
Non- Final Act. 9–11; Ans. 3–4. Rothstein does not explicitly disclose that a
first end of its core (plug) 48 is press-fit into contact with its sleeve (sleeve
46) “prior to” engagement of the core’s threaded hole with a male threaded
device. Hirmann discloses a plug assembly comprising a cylindrical metal
sleeve (expandable sleeve 1) and a core (expanding member 2). Hirmann,
Figs. 1–2. Hirmann’s core (expanding member 2) is press-fit pre-assembled
into expandable sleeve 1. Id. col. 2, ll. 61–64 (“fixedly retained); col. 3,
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ll. 8–11 (“mounted therein . . . to be inserted”). Lee explicitly discloses that
its core is press-fit preassembled into its sleeve and that it is advantageous to
do so because it prevents possible mismatching of parts and increases the
convenience of installation. Lee, col. 3, ll. 45–49.
It would have been obvious, at the time of Appellant’s invention, to
modify Rothstein so as to press-fit, preassemble its core (plug) 48 and
sleeve 46 as taught by Hirmann and Lee. As explicitly taught by Lee, a
person of ordinary skill in the art would have been motivated to make such
modification to prevent possible mismatching of parts and to increase the
convenience of installation.
Rothstein does not disclose that the outer surface of its sleeve has a
plurality of protrusions configured as spaced apart rings. Hirmann discloses
a plug assembly which includes expandable plug sleeve 1. Hirmann, Fig. 1.
Hirmann’s sleeve includes a plurality of ring-shaped teeth 8. Id. col. 2,
ll. 64–66, Figs. 1–2. Lee discloses that the outside surface of its sleeve has
annular grooves. Lee, col. 6, ll. 58–66, Figs. 1–2.
Hirmann explicitly discloses that its ring-shaped teeth dig into the
material of the insertion hole to ensure that its sleeve will be fixedly retained
therein. Hirmann, col. 3, ll. 30–35. Lee explicitly discloses that its grooves
facilitate gripping the wall of the insertion hole upon radial expansion of the
sleeve. Id. col. 6, l. 66 – col. 7, l. 15, Figs. 1–2.
It would have been obvious, at the time of Appellant’s invention, to
modify Rothstein’s sleeve with ring shaped protrusions as taught by both
Hirmann and Lee. A person of ordinary skill in the art would have been
motivated to make such modification to facilitate a secure placement of the
plug assembly in the insertion hole.
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Claims 7–9
With respect claims 7–9, which depend from claim 6, we adopt as our
own the findings and conclusions of the Examiner set forth in the Non-Final
Rejection. Non-Final Act. 8, 11–12. With respect to claim 7, we further
find that Hirmann discloses protrusions (teeth) that extend radially around
the outer surface of its sleeve and interact with the hole as claimed.
Hirmann, col. 2, ll. 64–66; col. 3, ll. 30–35.
Claim 10
As set forth in the Examiner’s Non-Final Rejection, Answer, and our
previous discussion in this Decision regarding the teachings of Rothstein,
Rothstein discloses the invention of claim 10 substantially as claimed.
Non- Final Act. 12–13; Ans. 3–4. Rothstein does not explicitly disclose that
its core (plug) 48 is retained in press-fit contact with its sleeve (sleeve 46)
“prior to” engagement of the core’s threaded hole with a male threaded
device. Hirmann discloses a plug assembly comprising a cylindrical metal
sleeve (expandable sleeve 1) and a core (expanding member 2). Hirmann,
Figs. 1–2. Hirmann’s core (expanding member 2) is press-fit pre-assembled
into expandable sleeve 1. Id. col. 2, ll. 61–64 (“fixedly retained); col. 3,
ll. 8–11 (“mounted therein . . . to be inserted”). Lee explicitly discloses that
its core is press-fit preassembled into its sleeve and that it is advantageous to
do so because it prevents possible mismatching of parts and increases the
convenience of installation. Lee, col. 3, ll. 45–49.
It would have been obvious, at the time of Appellant’s invention, to
modify Rothstein so as to press-fit, preassemble its core (plug) 48 and
sleeve 46 as taught by Hirmann and Lee. As explicitly taught by Lee, a
person of ordinary skill in the art would have been motivated to make such
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modification to prevent possible mismatching of parts and to increase the
convenience of installation.
Claims 11–13
With respect claims 11–13, which depend from claim 10, we adopt as
our own the findings and conclusions of the Examiner set forth in the Non-
Final Rejection. Non-Final Act. 8, 14. With respect to claim 11, we further
find that Hirmann discloses at least two ring-shaped protrusions (teeth) that
extend radially around the outer surface of its sleeve. Hirmann, col. 2,
ll. 64–66.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References Aff’d Rev’d New
Ground
1-13 103 Rothstein, Lee 1-13 1-13
1-13 103 Rothstein, Hirmann, Lee 1-13
Overall
Outcome
1-13 1-13
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01. No time
period for taking any subsequent action in connection with this appeal may
be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)