Appeal 2007-2378
Application 10/837,098
1 Rejection of claims 2 and 6 under 35 U.S.C. § 103
2 The Appellants argue (Reply Br. 6):
3 Brewis et.[sic] al. teaches a variety of possible solutions to dealing with
4 problems such as pipe thinning, breakage and necking. He cites gaps 52 as
5 one means of preventing breakage (col. 3, lines 33-35), along with use of
6 teeth/ribs 146 of progressively different lengths (col. 3, lines 36-46) and also
7 a radiused corner 147 that helps prevent necking (col. 3, lines 47-51). There
8 is no suggestion that stop 56 be used to limit how far the teeth/ribs can
9 penetrate, nor any suggestion as to the relationship between the
10 configuration of stop 56 and how much penetration can be tolerated. Brewis
11 et al[.] effectively teaches away from the present invention by directing one
12 skilled in the art towards other measures. There is no motivation for one
13 skilled in the art to configure the position of stop 56 so that it prevents
14 overpenetration of the teeth.
15
15 Brewis first discloses that there is an enlarged stop at the rear of the expansion
16
17 mandrel (Brewis, col. 3, ll. 18-19). Then Brewis discloses that drawing the
18 expansion mandrel forward urges the expandable member to expand so that its
19 toothed ribs are urged outwardly into the pipe (Brewis, col. 3, ll. 24-27). Those
20 disclosures would have indicated to one of ordinary skill in the art that the function
21 of the enlarged stop is to stop the forward movement of the expansion mandrel so
22 that the toothed ribs are not further urged outwardly into the pipe. Thus, those
23 disclosures would have led one of ordinary skill in the art, through no more than
24 ordinary creativity, to position the enlarged stop such that the forward movement
25 of the expansion mandrel is stopped at the point where the desired penetration,
26 such as no more than 35%, of the toothed ribs into the pipe is obtained. See KSR
27 Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (In
17-20. In the event of further prosecution the Examiner and the Appellants should
address the improper dependency of method claims 17 to 20 from an apparatus
claim (14).
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