Ex Parte Dowe et al

Patent Trial and Appeal Board

Feb 3, 2017

13202338 (P.T.A.B. Feb. 3, 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.
13/202,338 09/23/2011 Andreas Dowe 384945US99X PCT 7672
22850 7590 02/07/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WOOD, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/07/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS DOWE, RAINER GOERING,
HANS-JUERGEN KOCKS, and JOERN WINKELS1
Appeal 2015-001721
Application 13/202,338
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 4, 5, 7—10, 13, and 17—23. An oral hearing was
held on January 26, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a method of laying a pipeline.
E.g., Claim 1. Claim 1 is reproduced below from page 5 (Claims Appendix)
of the Appeal Brief:
1 According to the Appellants, the real parties in interest are Evonik Degussa
GMBH and Salzgitter Mannesmann Line Pipe GMBH. Br. 1.
Appeal 2015-001721
Application 13/202,338
1. A method of laying a pipeline, comprising laying a coated
metallic pipe comprising an extruded coating layer such that the
extruded coating layer is subjected to a shearing pressure load
and a flexural load, wherein the extruded coating layer
comprises a polyamide moulding composition,
wherein
the coated metallic pipe has been wound up for transport and
is unwound prior to, or during, the laying of the coated
metallic pipe,
the coated metallic pipe is laid by a J-lay method or by a S-
lay method, and
a viscosity of the polyamide moulding composition
according to ASTM D 4440-3 is at least 2000 Pa- s at 240°C
using a shear rate of 0.1 sec'1.
REJECTIONS ON APPEAL
1. Claims 1, 4, 5, 7—10, and 13 stand provisionally rejected for
nonstatutory double patenting over claims 1—15 of Application Serial No.
12/675,1222 (the “’122 application”).
2. Claims 1, 5, 7—10, 13, and 17—223 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dowe et al. (US 2006/0183869 Al, published
Aug. 17, 2006) in view of Postlewaite et al. (US 3,389,563, issued June 25,
1968).
2 The prosecution history of the ’122 application includes an Issue
Notification dated Feb. 1, 2017, indicating that a patent will issue on Feb.
21,2017.
3 The Examiner’s Answer indicates that claim 6 is also subject to this
rejection. See Ans. 4. Claim 6, however, has been canceled, see, e.g., Br. 6
(Claims Appendix), and is not before us in this appeal.
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Application 13/202,338
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dowe in view of Postlewaite and Amouroux (US 2008/0096031 Al,
published Apr. 24, 2008).
4. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dowe in view of Postlewaite and Langner (US 3,715,890, issued Feb.
13, 1973).
ANALYSIS
Rejection 1
As an initial matter, we note that it appears that the Examiner relies on
claims from the ’122 application dated February 27, 2013, because the
Examiner’s provisional rejection refers to claims 1—15 of the ’122
application, and the claims dated February 27, 2013, appear to be the last
version of the claims in that application that included claims 1—15. See
Ans. 3; see also ’122 application, claims dated Feb. 27, 2013. The claims of
the ’122 application were subsequently amended, for example, to modify
claim 1 and to cancel various other claims. E.g., ’122 application, claims
dated Sept. 6, 2013. It does not appear that the record includes a stated
rejection over the current version of the claims of the ’122 application.
Moreover, in the Appeal Brief, the Appellants argue that “[cjlaim 1 of
the present application specifies that the viscosity of the polyamide
moulding composition according to ASTM D 4440-3 is at least 2000 Pa- s at
240°C using a shear rate of 0.1 sec'1,’’ while “[t]he claims of the ’122
application fail to specify this feature.” See Br. 4. That argument appears to
apply to any version of the claims of the ’122 application.
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Application 13/202,338
In the Examiner’s Answer, the Examiner fails to acknowledge or
respond to the Appellants’ argument. See Ans. 7—8. The Examiner’s
statement of the rejection likewise fails to address that difference between
the claims in this appeal and the claims of the ’122 application. See, e.g.,
Ans. 3.
Accordingly, we are constrained to reverse the provisional double
patenting rejection of claims 1, 4, 5, 7—10, and 13.
Rejections 2—4
The Appellants argue the claims as a group, focusing on a limitation
that appears in claim 1. We limit our discussion to claim 1. The remaining
claims on appeal will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner’s Answer. See generally Final Act.
3—8; Ans. 4—8.
The Examiner finds, inter alia, that Dowe teaches a coated submarine
pipe comprising an extruded polyamide coating that “is made from the same
material and in the same manner” disclosed by the Appellants’ Specification.
See Ans. 4. The Examiner finds that Dowe is “silent with regards to the
viscosity and solution viscosity.” Id. However, the Examiner determines
that, because Dowe’s pipe is made using the same materials and methods
disclosed by the Appellants, “it would necessarily have the same viscosity as
instantly claimed.” Id. The Examiner also finds that “Dowe teaches that it
is preferred that the viscosity be relatively high and as such one of ordinary
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Application 13/202,338
skill in the art would be motivated to adjust the viscosity, including through
the ranges instantly claimed in order to achieve the desired melt stiffness.”
Id.
The Examiner further finds that “Dowe is silent with regards to the
method of laying the pipe onto the ocean floor,” but that Postlewaite teaches
“a method laying a pipe using a J-lay method wherein the pipe is a coated
metal pipe,” and that “Postlewaite also teaches that the pipe may be stored
on a reel and unrolled at the time of laying.” Id. at 4—5. The Examiner
determines that a person of ordinary skill would have been “motivated to lay
the pipe of Dowe by using the method of Postlewaite as the method of
Postlewaite offers the ability to lay a pipe without kinking and without the
use of divers.” Id. at 5. In view of those findings, the Examiner concludes
that the method of claim 1 would have been obvious to a person of ordinary
skill in the art. Id. at 4—5.
The Appellants state that “Postlewaite discloses that certain
precautions must be taken when a coated pipe is being laid,” which means
“that the coating is liable to be scraped off.” Br. 3. The Appellants then
state that the inventors of the application before us on appeal “have found
that a good mechanical robustness of the polyamide coating is obtained”
when the viscosity of claim 1 is used. Id. at 4. The Appellants argue that
“[njeither Dowe nor Postlewaite disclose or suggest this result, so the
combination of those references certainly fails to suggest this important
feature of the present invention.” Id.
That argument is not persuasive because it does not address the
rationale that supports the rejection, ft appears that the Appellants intend to
argue that Postlewaite’s alleged disclosure of precautions indicates that
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Application 13/202,338
Postlewaite’s pipe does not possess the claimed viscosity because, if it did,
Postlewaite would not be concerned with scraping. See id. at 3^4. The
Examiner, however, does not rely on Postlewaite for the motivation to use a
pipe possessing the claimed viscosity; the Examiner relies on Dowe for a
pipe possessing the claimed viscosity, and on Postlewaite for the disclosure
of known methods of laying pipe. See Ans. 4—5.
Because the Appellants fail to meaningfully address that rationale, or
to otherwise contest the Examiner’s determination that Dowe’s pipe “would
necessarily have the same viscosity as instantly claimed,” Ans. 4, the
Appellants’ argument fails to apprise us of reversible error in the Examiner’s
rejection. Accordingly, we sustain the Examiner’s § 103(a) rejection of
claim 1.
CONCLUSION
We REVERSE the Examiner’s provisional nonstatutory double
patenting rejection of claims 1, 4, 5, 7—10, and 13.
We AFFIRM the Examiner’s § 103(a) rejections of claims 1, 4, 5, 7—
10, 13, and 17-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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