13054593 (P.T.A.B. Aug. 7, 2017)

Ex Parte Deighton et al

Patent Trial and Appeal BoardAug 7, 2017

13054593 (P.T.A.B. Aug. 7, 2017)

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. 13/054,593 08/10/2011 Alan William Deighton P/3203-40 (V 18111) 8145 2352 7590 08/09/2017 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER ALONZO MILLER, RHADAMES J ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 08/09/2017 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): pat @ ostrolenk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN WILLIAM DEIGHTON and SIU KIT JOE WONG1 Appeal 2016-005625 Application 13/054,593 Technology Center 2800 Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and SHELDON M. McGEE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—4, 6—11 and 13. We have jurisdiction under 35 U.S.C. §6. 1 According to Appellants, the real party in interest is TECHNIP FRANCE. See App. Br. 1. Appeal 2016-005625 Application 13/054,593 STATEMENT OF THE CASE Appellants’ invention relates to an umbilical for use in in deep water applications. According to the Specification: An umbilical consists of a group of one or more types of elongated active umbilical elements, such as electrical cables, optical fibre cables, steel pipes and/or hoses, cabled together for flexibility, over-sheathed and, when applicable, armoured for mechanical strength. Umbilicals are typically used for transmitting power, signals and fluids (for example for fluid injection, hydraulic power, gas release, etc.) to and from a subsea installation. (Spec. 1). Claim 1 is representative of the subject matter on appeal and is reproduced below from the Claims Appendix to the principal Brief: 1. An umbilical for use in the offshore production of hydrocarbons comprising an assembly of functional elements at least one of which is an electrical power cable with a voltage rating of 6kV or higher, wherein the electrical power cable comprises one or more strands of 6000 series aluminium, each strand having a cross-section selected to provide said strand with an operating current and linear conductivity that is the same as a copper strand with a cross-section, wherein said 6000 series aluminum comprises aluminum, silicon, and magnesium, wherein said 6000 series aluminium further comprises Mg2Si precipitates, wherein the cross-section of said strand is larger than the cross-section of said copper strand but said strand weighs less than said copper strand, wherein the strands of 6000 series aluminium have a yield strength higher than 200 MPa. Appellants appeal the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1—4, 6—11 and 13 as unpatentable over the combination of Mjelstad, EP 1691377 in view of Gabriel, DE 661604, 2 Appeal 2016-005625 Application 13/054,593 Schoemer, U.S. 3,647,939 and British Standards, “Aluminium and Aluminium Alloys - Chemical Composition and Form of Wrought Products” (British Standards). (App. Br. 3; Final Act. 2—15). OPINION2 Upon consideration of the relied-upon evidence in this appeal record in light of the respective positions advanced by the Examiner and Appellants, we determine that Appellants have identified reversible error in the Examiner’s determination that the combination of Mjelstad, Gabriel, Schoemer and British Standards would have suggested an umbilical comprising power cables with one or more strands of 6000 series aluminum that include Mg2Si precipitates as required by independent claim 1. The Examiner has the burden of establishing a prima facie case of obviousness regarding the subject matter recited in the claims on appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he [patent] examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”); see also In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that while “the applicant must identify to the Board what the examiner did wrong, . . . the examiner retains the burden to show [unpatentability]”). 2 We limit our discussion to independent claim 1, the sole independent claim on appeal. 3 Appeal 2016-005625 Application 13/054,593 According to the Examiner, Mjelstad discloses an umbilical for use in the offshore production of hydrocarbons but does not disclose the umbilical includes, inter alia, a conductor comprised of 6000 series aluminum strands comprising Mg2Si precipitates. (Final Act. 2—3). The Examiner relied on Gabriel and Schoemer to describe the use of 6000 series aluminum strands, however acknowledging that Gabriel and Schoemer do not describe the 6000 series aluminum strands as comprising Mg2Si precipitates. (Final Act. 3—4). The Examiner found British Standards teaches that the 6000 series aluminum can further comprises Mg2Si precipitates. (Final Act. 4 citing British Standards 5). Appellants argue the combination of Mjelstad, Gabriel, Schoemer and British Standards fails to teach or suggest the use of 6000 series aluminum with Mg2Si precipitates to make the strands of a power cable of an umbilical as recited in claim 1. (App. Br. 8). According to Appellants, Mg2Si precipitates are the result of strengthening the aluminum alloy utilizing an aging process, which is required to make the material suitable as an umbilical. (App. Br. 8; Spec. 10,11. 13—18). We agree with Appellants that the Examiner’s rejection is in error. British Standards discloses the 6000 series aluminum comprise magnesium and silicon as major alloying elements. (British Standards 5). British Standards, however, does not disclose the formation of Mg2Si precipitates. The Examiner has not directed us to portions of the cited prior art references that describes the formation of 6000 series aluminum utilizing alloying processes that would result in the 6000 series aluminum comprising Mg2Si 4 Appeal 2016-005625 Application 13/054,593 precipitates. Moreover the Examiner has not explained why a person of ordinary skill in the art would have found it desirable to include a strand formed from 6000 series aluminum comprising Mg2Si precipitates in an umbilical. Accordingly, on this record, we are constrained to reverse the Examiner’s rejections of claims 1—4, 6—11, and 13 under 35 U.S.C. § 103(a). ORDER The Examiner’s prior art rejection of claims 1—4, 6—11, and 13 under 35 U.S.C. § 103(a) is reversed. REVERSED 5