Ex Parte Dierberger

Board of Patent Appeals and Interferences

Feb 26, 2010

11208801 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES A. DIERBERGER
____________________

Appeal 2009-009408
Application 11/208,801
Technology Center 1700
____________________

Decided: February 26, 2010
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-10, 12, and 13 under 35 U.S.C. § 103 as obvious
over Nelson (US 3,807,715, issued April 30, 1974). We have jurisdiction
under 35 U.S.C. § 6(b).
Appeal 2009-009408
Application 11/208,801

We REVERSE
Claim 1 is illustrative of Appellant’s invention:
1. A method of treating a full hoop part comprising
the steps of:
(1) identifying a defect in a part, said part extending for
360° about an axial center line;
(2) performing a weld treatment on said defect to correct
said defect; and
(3) performing heat treatment at a first band associated
with said weld treatment, and at a second band, said second
band being selected to be spaced about said axial center line
from said first band, and said second band also being spaced
from a location of said weld treatment.
II. DISPOSITIVE ISSUE
Has Appellant identified reversible error in the Examiner’s
obviousness rejection of representative claim 1 based on the asserted lack of
a teaching or suggestion of the steps of identifying a defect and performing a
weld treatment to correct the defect? We answer this question in the
affirmative.
III. FINDINGS OF FACT
Appellant’s Specification does not provide an express definition of the
term “defect” but states that:
a part 50 can have defects such as a crack shown at
52. Other type defects may be a casting defect such
as may be caused by shrinkage. A worker of
ordinary skill in the art would recognize many of
the known defects, which could require welding
repair treatment.
(Spec. ¶ [0020].)
2
Appeal 2009-009408
Application 11/208,801

Nelson is directed to correcting metallurgical problems that arise
during the joining of thick-walled pipes using “certain recently developed
automatic pipeline welding equipment” (Nelson, col. 1, ll. 27-31). Nelson
teaches using a heat treatment to relieve areas of high hardness or brittleness
that develop around or within a weld, which is indicative of a highly strained
crystal lattice structure (Nelson, col. 1, ll. 34-37 and 45-48; col. 3, ll. 36-50).
When these areas of hardness or brittleness are used in the presence of
atomic hydrogen under high pressure, weakness and cracking at the weld
joints may occur (Nelson, col. 1, ll. 35-44; col. 3, ll. 36-50). The type and
degree of heat treatment is determined by measuring the hardness and
knowing the environment the weld will be subjected to (e.g., the amount of
atomic hydrogen content) (Nelson, col. 3, ll. 40-42).
The apparatus taught by Nelson is particularly designed for applying a
heat treatment to newly welded pipelines, but can be used at other times
(Nelson, col. 1, ll. 56-63). For example, Nelson teaches using the heat
treatment of hardened areas in other heavy work structures, especially when
produced by rapid or excessive heat transfer during welding (Nelson, col. 1,
l. 64 to col. 2, l. 8). Also, the heat treatment can be applied to relieve heavy
mechanical stresses or local strains on the joints of heavy pipe due to, for
example, uneven terrain (Nelson, col. 2, ll. 25-31).
IV. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
3
Appeal 2009-009408
Application 11/208,801

Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
The analysis supporting obviousness should be made explicit. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)). The Examiner bears the initial burden, on
review of prior art or on any other ground, of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
V. ANALYSIS
The Examiner admits that Nelson does not explicitly identify a defect
in a part or explicitly perform a weld treatment to correct that defect (Ans. 3-
4). However, the Examiner has two rationales as to how Nelson implicitly
teaches identifying a defect and a treatment step for correcting the defect.
First, the Examiner finds that Nelson implicitly identifies a defect where
Nelson teaches measuring the hardness at a weld joint in order to determine
the type and degree of heat treatment to apply (Ans. 3 and 5). The Examiner
concludes that it would have been obvious for one of ordinary skill in the art
to perform a weld treatment on the defect, as welding to close cracks is
commonly practiced in the metallurgical arts (Ans. 4).
Second, the Examiner relies on a dictionary definition in which the
term “defect” may mean a “lack or absence of something essential to
completeness (opposed to excess)” (Ans. 6). As such, the Examiner
concludes that the gap between two pipes or tubes laid end to end is a
4
Appeal 2009-009408
Application 11/208,801

“defect” that is identified and corrected by welding the pipe together before
applying the heat treatment (Ans. 6).
With respect to the Examiner’s first contention, Appellant asserts
that the defect (hardness and embrittlement) is due in fact to the weld, and
thus cannot fairly be said to be a weld treatment to “correct” the defect
(Reply Br. 1). We agree.
While Nelson teaches the use of heat treatment for welding
applications generally, Nelson only teaches welding for connecting pipes of
a pipeline. Nelson does not teach welding for the purpose of correcting the
hardness or embrittlement that is found by the Examiner to be the recited
defect.
Regarding the Examiner’s second contention that the defect is the gap
between lengths of pipe, Appellant asserts that the Examiner is “simply
stretching the language of the claims” (Reply Br. 1). We agree that the
Examiner’s definition goes beyond what one of ordinary skill in the art
would reasonably consider a “defect.” While it is true that Appellant has
provided no express definition, the Examiner’s chosen dictionary definition
(of the several provided) is not in conformance with the broadest reasonable
meaning that can be given to the term upon review of Appellant’s
Specification.
Pipes for use in a pipeline would be purposely made to a certain
desirable length and welded together to form the pipeline in the field.
Nelson teaches that this process is the conventional method for making a
pipeline. One of ordinary skill in the art would not consider merely
assembling the pipes to be correcting a defect because the pipes were
5
Appeal 2009-009408
Application 11/208,801

purposely made to a length less than the length of the overall desired
pipeline. Accordingly, we find it error that the Examiner has considered the
gap between lengths of pipe to be a defect.
Since we have determined that the Examiner failed to establish a
prima facie case of obviousness regarding the identification and correction
of a defect, we do not reach the Appellant’s contentions regarding the heat
treatment performing step of claim 1.
VI. CONCLUSION
On the record before us and for the reasons discussed above, we
cannot sustain the rejection maintained by the Examiner.
VII. DECISION
The decision of the Examiner is reversed.

REVERSED

cam

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD, SUITE 350
BIRMINGHAM, MI 48009

6