Ex Parte Bowers

Patent Trial and Appeal Board

Sep 27, 2018

13516614 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/516,614 09/26/2012
21839 7590 10/01/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jonathan Bowers
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1000035-000111 7633
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN BOWERS
Appeal2016-005690
Application 13/516,614
Technology Center 3700
Before NEIL T. POWELL, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan Bowers ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-27, which are all the
pending claims. Appeal Br. 1. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on July 3, 2018.
We REVERSE.
According to Appellant, the real party in interest is SAIPEM S.P.A.
Appeal Br. 2.
Appeal2016-005690
Application 13/516,614
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates to an apparatus and method
for repairing a weld joint between pipes that have been welded together,"
particularly, "but not exclusively, the invention relates to repairing welds
between pipe sections when laying pipelines underwater at sea." Spec., p. 1,
11. 5-8. Claims 1, 14, 18, 23, 25, and 26 are independent. Claim 1,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
1. A method of repairing a circumferential weld joint
formed between two pipe sections in a pipeline, wherein the
method comprises the steps of-1:]
- identifying a defective weld region in the weld joint, the
weld joint having a surface and wherein identifying the
defective weld region in the weld joint comprises identifying a
defect located beneath the surface of the weld joint,
- providing a weld excavating machine comprising a
weld excavating tool and a tool guiding apparatus,
- arranging the tool guiding apparatus in fixed relation to
the pipeline,
- guiding the weld excavating tool around the pipe and
along the weld joint by means of the tool guiding apparatus and
using the weld excavating tool to remove material from the
defective weld region, thereby forming an excavation, and
- using a welding apparatus to weld the excavation and
fill the excavation with weld material.
2
Appeal2016-005690
Application 13/516,614
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Rieppel us 3,084,246 Apr. 2, 1963
Kim us 5,764,859 June 9, 1998
Kamei JP 7040216 A Feb. 10, 1995
Matsuda JP 7223073 A Aug. 22, 1995
REJECTION
The following rejection is before us for review: Claims 1-27 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rieppel,
Kamei, Matsuda, and Kim. Final Act. 2--4.
ANALYSIS
The present claims are directed to methods and devices for repairing
an existing weld joint that connects pipe sections within a pipeline. See
Appeal Br., Claims App. For example, illustrative method claim 1 includes
"identifying a defective weld region in the weld joint ... located beneath the
surface of the weld joint," providing a weld excavating tool that is guided
around the pipeline "along the weld joint" and used "to remove material
from the defective weld region, thereby forming an excavation," which is
then filled with new weld material to repair the weld. Id. In other words,
the claimed methods and devices are distinct from the notion of creating an
initial weld between pipe sections-rather, they require such an initial weld
to already exist (and to have a defective region therein). See id.
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Appeal2016-005690
Application 13/516,614
In rejecting the claims, the Examiner relies on Rieppel as disclosing
"repairing a weld on a pipe," noting that "identifying the defective weld
region may be performed visually as the claim does not require a machine
for carrying out this step." Final Act. 2; see also Ans. 4--5 (erroneously
stating that identification of a weld defect "constitutes a preferred use of the
method," such that the weld defect identified "should not be given
patentable weight"). Although we appreciate the Examiner's statement that
a machine is not required for the identification step, the claims nevertheless
require identification of a defective weld region and repair of that defective
region ( as opposed to the creation of an initial weld).
Appellant persuasively asserts that the rejection is deficient because
Rieppel's disclosure, as relied on in the rejection, is directed to "creating a
new weld" by "forming a bevel groove between pipe sections and welding
the pipe sections together" initially, rather than to any notion of repairing a
defect in a weld that already exists. Appeal Br. 10; see id. at 10-11. More
specifically, Appellant explains that Rieppel "does not discuss anything
about identifying a weld defect ( on the surface or subsurface; visually or in
any other manner)," and "also does not describe using a weld excavating
tool to remove material from the defective weld region," as in the claimed
invention. Reply Br. 5; see id. at 4--6.
Accordingly, because the Examiner's rejection is premised on a
finding that is not supported by a preponderance of the evidence, we do not
sustain it.
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Appeal2016-005690
Application 13/516,614
DECISION
We REVERSE the Examiner's decision rejecting claims 1-27 under
35 U.S.C. § 103(a) as being unpatentable over Rieppel, Kamei, Matsuda,
and Kim.
REVERSED
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