## United States Court of Appeals for the Federal Circuit

05-1321 (Serial No. 09/312,992)

IN RE SCOTT E. JOHNSTON

Scott E. Johnston , of Cottonwood, Ca lifornia, pro se.

John M. Whealan , Solicitor, Office of the Solici tor, United States Patent and Trademark Office, of Arlingt on, Virginia. With hi m on the brief were Mary L. Kelly and Thomas W. Krause , Associate Solicitors. Appealed from: United States Patent and Trademark Office, Board of Patent Appeals and Interferences

## United States Court of Appeals for the Federal Circuit

05-1321 (Serial No. 09/312,992)

IN RE SCOTT E. JOHNSTON

__________________________ DECIDED: January 30, 2006

__________________________

Before MICHEL, Chief Judge , NEWMAN and BRYSON, Circuit Judges

. NEWMAN, Circuit Judge

.

Scott E. Johnston appeals the decision of the United St ates Patent and Trademark Office Board of Patent Appeals and Interferences , affirming the examiner's rejection of all the claims in patent applicat ion No. 09/312,992, entitled "Lar ge Diameter Spirally Formed Pipe," as anticipated or obvious. 1 We affirm the decision of the Board.

1 In re Johnston , No. 2004-0533 (Bd. Pat. App. & Inter. April 22, 2004).05-1321 2 BACKGROUND Mr. Johnston's patent application is for large diameter spiral pipe , in excess of 12 or 15 feet in diameter, formed by bending a long sheet of metal or other ductile material into a helix, and then joining the adjacent edges by we lding or other means to form a pipe into shapes such as cylindrical or arched. The clai ms at issue are directed to the spiral pipes themselves. The following cl aims are representative: 1. A spirally formed pipe, compri sing an elongated strip of ductile material formed into jointed, adjacent he lical convolutions, having a diameter larger than 15 feet. 5. A spirally formed pipe, comp rising an elongated strip of ductile material formed into jointed, adjacent helical convolutions, reshaped into an arch shape, having a beginning diameter above 144 inches. 9. A spirally formed pipe larger than 144 inches in diameter before reshaping into an arch shape. The Board rejected the claims as unpatentable in view of several references describing silos, storage tanks, and other cylindrical structures formed from strips of metal bent into a helical shape and joined at the edges. U.S. Pa tent No. 2,751,672 to Reed describes a silo of about 20 feet in diam eter, constructed by winding several metal sheets in a series of helical convolutions and bolting the edges t ogether. U.S. Patent No. 3,380,147 to McDonald shows a spirally wound silo of about 21 feet in diameter w herein sheet steel is wound into a helical configuration using gui des and crimping rollers; the edges are then welded together to form the wall of the silo. U.S. Patent No. 4,142,284 to Steuber shows a spirally wound storage tank of approximately 30 feet in di ameter. U.S. Patent No. 4,121,747 to McFatter shows large storage tanks, typically 31 feet in diameter, constructed from strip metal wound into a spiral pattern and butt-welded together.05-1321 3 Also cited by the examiner was a brochur e for a manufacturing system sold by PRD Cortec, wherein spirally formed tubes of corr ugated metal, up to 15 feet in diameter, are described for use in low cost housing units, storm sewers, drainage tubes, and culverts. The examiner also cited a "Handbook of Steel" directed to spirally formed steel pipes and arches for use in culverts, storm sewers , subdrains, spillways, underpasses and service tunnels. The Handbook shows steel pipe in diam eters of 24 feet or more, and shows such pipe deformed into elliptical shapes and arches of various configurations. The Board adopted the dictionary definition of "pipe" as "a tubular or cylindrical object, part or passage," and held that on this defin ition large cylindrical structures such as silos and storage tanks are "pipes" within t he meaning and scope of the claims, rendering the claims obvious or anticipated. Mr. Johns ton challenges this di ctionary definition as unduly broad, stating that the prior art structures woul d not be understood as included in the meaning of "pipe" by persons of skill in the field of the inv ention. Mr. Johnston suggests that "pipe" in the construc tion trades is well understood to mean structures used to carry fluids or as electrical conduits, and that th is understanding of the wo rd "pipe" does not include silos and storage tanks. It is well established that dictionary defin itions must give way to the meaning imparted by the specificati on, Phillips v. AWH Industries , 415 F.3d 1303 (Fed. Cir. 2005) ( en banc ), but in this case Mr. Johnston himself gave "pipe" the broad meaning he now criticizes. He states in the specification t hat his pipes may be used as overpasses, storage buildings, homes, silos, and water tanks, extols the value of his inv ention in such largediameter structures, and does not attempt to disclaim such scope from his claims.05-1321 4 The Board observed that the claims were not limited by the method of forming or shaping the spiral pipe, and held that such pipes in the claimed size range were shown or

rendered obvious in the cited references. T hus claim 1 was found anticipated by each of the Reed, McDonald, and Steuber patents, for each shows a silo or storage tank in the form of a spirally formed pipe of an elongated strip of material having a diameter larger than 15 feet, as in claim 1. Mr. Johnston did not separately ar gue dependent claims 2 and 4. We agree that those claims were correctly held to be anticipated, for every claim element is

shown in each of these references. Claim 3, which depends from claims 1 and 2, contains the additional limitation "further including that said wall may be smooth, corrugated , or profiled with increased dimensional proportions as pipe size is increased." The Board ruled that this additional content did not narrow the scope of the claim because these limitations are stated in the permissive form "may." As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted. We affirm the Board's ru ling that claim 3 as written is anticipated. Claims 5 through 9 were agreed to stand or fall together. The B oard found that the subject matter of claim 9 would have been obvious from the combination of the PRD Cortec brochure and the Handbook of Steel. PRD Cortec s hows spirally formed pipe that is larger

than 12 feet in diameter but not arched. The Handbook s hows examples of helically formed pipe that may be reshaped into "ellip tical pipe, horseshoes, arches and other shapes," although each shape is le ss than 12 feet in diameter. The Board found that it would have been obvious to reshape the PRD Cortec 15 foot diameter pipe into the shapes in the Handbook, citing the Handbook's teaching t hat round or arched pi pe can be used as05-1321 5 storm sewers, drainage tubes, and culverts. Mr. Johnston argues that there is inadequate motivation to combine these two references, on the basis that ther e is not a specific teaching in the prior art that this subject ma tter may be combined. He also argues that the Handbook teaches away from making such a combination. Precedent requires that to find a combinati on obvious there must be some teaching, suggestion, or motivation in the prior art to se lect the teachings of separate references and combine them to produce the claimed combinati on. Karsten Mfg. Co rp. v. Cleveland Golf Co. , 242 F.3d 1376, 1385 (Fed. Cir. 2001) ("In holding an invention obvious in view of a combination of references, there must be some suggestion, motivation, or teaching in the prior art that would have led a per son of ordinary skill in the art to select the references and combine them in the way that would produc e the claimed invention."); In re Dance , 160 F.3d 1339, 1343 (Fed. Cir. 1998) ("When the references are in the same field as that of the applicant's invention, knowledge t hereof is presumed. Howeve r, the test of whether it would have been obvious to select specific teachings and combine them as did the applicant must still be met by i dentification of some suggestion, teaching, or motivation in the prior art, arising from what the prior art would have taught a person of ordinary skill in the field of the invention."); In re Fine , 837 F.2d 1071, 1075 (Fed. Cir . 1988) (there must be "some objective teaching in t he prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relev ant teachings of the references"); Interconnect Planning Corp. v. Feil , 774 F.2d 1132, 1143 (Fed. Cri. 1985) ("When prior art references require selective combination by the court to render obvious a subsequent invention, there mu st be some reason for the combination other than the hindsight gleaned from the invention itself."). An explicit teaching that identifies and selects05-1321 6 elements from different source s and states that they should be combined in the same way as in the invention at issue, is rarely found in the prior art. As precedent illustrates, many

factors are relevant to the motivation-to-c ombine aspect of the obviousness inquiry, such as the field of the specific in vention, the subject matter of the references, the extent to which they are in the same or related fields of technology, the nature of the advance made by the applicant, and the maturity and congestion of the field. Objective indicia are also relevant, see Graham v. John Deere Co. , 383 U.S. 1 (1966), for the commercial response

to an invention is a useful control upon hindsight evaluation of obviousness.

These considerations have been ex tensively illustrated. E.g. , Vulcan Engineering Co., Inc. v. Fata Aluminium, Inc. , 278 F.3d 1366, 1372 (Fed. Cir . 2002) (continuous lost foam casting); Karsten Mfg. Corp. v. Cleveland Golf Co. , 242 F.3d 1376, 1385 (Fed. Cir. 2001) (golf club). Precedent has also recogniz ed that "[t]he suggestion or motivation to

combine references does not have to be stated expressly; rather it may be shown by reference to the prior art itsel f, to the nature of the problem so lved by the claimed invention, or to the knowledge of one of ordinary skill in the art." Medical Instrumentation and Diagnostics Corp v. Elekta AB , 344 F.3d 1205, 1221-22 (Fed. Cir . 2003). These criteria have served to impart objectivity to t he determination of obviousness. See In re Rouffet , 149 F.3d 1350, 1358 (Fed. Cir. 1998) (obviousness r equires proof "that the skilled artisan .

. . would select the elements fr om the cited prior art refer ences for combination in the manner claimed").

The Board found motivation to combine t he teachings of the Steel Handbook and PRD Cortec, in that both references deal wit h the same field of technology, and both show spirally formed pipe of lar ge diameter. The Handbook teac hes the interchangeability of05-1321 7 round and arched pipe in various applications, and recognizes the need to provide greater capacity without increasing height, such as for use in a culvert under a road. The Handbook also teaches that spirally-form ed round pipe can be re-s haped into arch shapes to provide greater cross-sectional area fo r a given height. PRD Cortec teaches the formation of a 15-foot diameter spirally-formed pipe, but does not explicitly show deforming such pipe into other shapes, such as arches. Mr. Johnston argues that it would not be obv ious to combine thes e teachings, stating that the Handbook describes only spirally-form ed arched-steel pipe less than 12 feet in diameter and arched steel pipe m ade of structural plate bolt ed together with diameters of over 25 feet, whereas PRD Cort ec shows only round spirally-fo rmed pipe. He argues that the Handbook suggests that lar ge-diameter arched-pipe should not be formed helically, but should be bolted together from structural plate. The Handbook states: Corrugated metal pipe was first developed and used for culverts in 1896. As experience was gained in the us e of this thin-walled, lightweight, shop fabricated pipe, the diameters gradually in creased to 96 in. and larger. Fill heights became greater, even exc eeding 100 ft. A further development, in 1931, was structural plate pi pe with larger co rrugations, for field assembly

. Diameters and arch spans beyond 25 ft. have been successfully installed.

Handbook at 39. This statement and the other exam ples in the Handbook were held by the Board to teach the shapes and dimensions of k nown steel construction products, and not to negate the use of spiral forms. The Board held t hat one of ordinary skill in this field would have been motivated, by these teachings, to produce large-diameter spirally-formed pipe and to shape them into arch shapes: In our view, PDR's teaching of a 15 foot diameter spirally formed pipe usable as an irrigation pipe, a drainage tube, a sewer, or a culvert combined with the Handbook's teaching of reshaping spirally formed pipes (less than 12 foot diameter) used for culverts and drainage into an arch shape would have05-1321 8 made it obvious at the time the inv ention was made to a person of ordinary skill in the art to reshape PDR's 15 foot di ameter spirally formed pipe into an arch shape as taught by Handbook. T he motivation for this change comes not from appellant's disclos ure but from the clear teachings of the applied prior art. In that regard, Handbook teac hes using either (1) round spirally formed pipes, or (2) arch shaped spirally formed pipes for use in culverts and drainage. This teaching of two alter native cross-sections provides the necessary motivation for an artisan to have modified the round spirally formed pipe of PDR into an arch shape. Bd. op. at 20-21. We agree with the Board that PRD Cortec contains the motivation or suggestion to combine its large diameter pipe with the teachings of t he Handbook. PRD Cortec shows the suitability of spirally-f ormed pipe in large cylindric al/shaped structures, and the Handbook shows large cylindrical/shaped structures. These teachings are in the same field

of endeavor and deal with related s ubject matter. We agree wit h the Board that it would have been obvious to combine the PRD Cort ec and Handbook's teachings to provide spirally formed pipe for large diameter and shaped structures. That decision is

AFFIRMED

.