Ex parte Fawley

Board of Patent Appeals and Interferences

Jul 13, 2001

08781605 (B.P.A.I. Jul. 13, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NORMAN C. FAWLEY
____________
Appeal No. 1999-2145
Application No. 08/781,605
____________
ON BRIEF
____________
Before CALVERT, ABRAMS and FRANKFORT, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 33-51 and
53-63, as amended after the final rejection, which are all of the claims remaining of record
in the application.
We REVERSE.
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Application No. 08/781,605
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BACKGROUND
The appellant’s invention relates to a method for restoring the burst strength of a
pipe having an unbreached weakened region. An understanding of the invention can be
derived from a reading of exemplary claim 33, which appears in the appendix to the
appellant's Brief.
The references of record relied upon by the examiner in rejecting the appealed
claims are:
Shaw 2,924,546 Feb. 9, 1960
Stark 2,955,642 Oct. 11, 1960
Medkeff et al. (Medkeff) 3,358,898 Dec. 19, 1967
Schumacher 4,511,626 Apr. 16, 1985
Fawley 4,700,752 Oct. 20, 1987
Pipeline Reinforcement brochure (4 pages), Nov. 10, 1987
Reinforcement Digest No. 46, “A new family of composite products stops cracks in line
pipe, extends life of pipelines, improves safety,” pages 2-5, Jan. 1989
The admitted prior art set forth on pages 1 and 2 of the appellant’s specification
Claims 33-40, 43-50, 53-58 and 61-63 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Reinforcement Digest and Fawley in view of the admitted prior
art, Shaw, Stark and Medkeff, and optionally further in view of Pipeline Reinforcement.
Claims 41, 42, 51, 59 and 60 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the references cited against claim 33 et al., taken further with
Schumacher.
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Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 17) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 16) and the Reply Brief (Paper No. 18) for the appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The appellant’s invention is directed to the problem of restoring the burst strength of
a pipe(line) such as those used to transmit liquids and/or gases under pressure which has
an unbreached weakened area having at least one depression in the outer surface of the
pipe. As manifested in claim 33, the invention comprises the steps of detecting the
weakened region, providing a load-transferring filler material, filling the depression with the
filler material, and wrapping around the pipe in the weakened region a strip of high tensile
strength material comprising high tensile strength filaments in a cured matrix and defining
a coil band with a plurality of elastic convolutions, including placing a first elastic
convolution around the pipe and subsequent convolutions around underlying convolutions
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1CLOCK SPRING is a trademark of NCF Industries, Inc.
such that opposite side faces are in radial alignment, and securing the convolutions from
movement so that they do not move relative to one another when the pipe is pressurized.
In rejecting claim 33, the examiner has interpreted the teachings of the applied
references in the following manner. Reinforcement Digest discloses a CLOCK SPRING1
strip of high tensile strength memory matrix composite material that is wrapped around a
pipe for use as a crack arrestor, but also states on page 2 that it “can be wrapped around
deteriorated sections of line pipe” to allow it to be capable of operating at its original
design pressure. However, the reference does not describe the details of the material that
are recited in the claim nor does it teach that the deteriorated sections constitute
unbreached weakened sections or that filler can be used in depressions in the weakened
sections. Fawley, which appears to be directed to the crack arrestor described in
Reinforcement Digest, discloses the claimed material and explains that it is adhered to the
pipe by means of an adhesive. The admitted prior art recognizes that it was known at the
time of the appellant’s invention to restore a deteriorated pipeline by digging it up and
covering the damaged area with sleeves installed around the pipe. Shaw and Stark teach
that a repair can be made by applying filler to a depression and then wrapping it with resin
or plastic impregnated tape, and Medkeff that adhesive can be used in addition to tension
to secure a repair strip to a pipe and subsequent convolutions of the strip to one another.
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From these teachings, the examiner concludes that the applied prior art would have
suggested to one of ordinary skill in the art that it would have been obvious to construct the
coiled band disclosed by Reinforcement Digest of the material required by claim 33 and to
utilize it in conjunction with filling depressions in a weakened region of a pipe to restore the
burst strength of the pipe in the manner of the method recited in the claim. The examiner
further points out, in support of this conclusion, that Pipeline Reinforcement, which also
discloses the CLOCK SPRING crack arrestor, states on the last page that the coiled strip
can be used to restore a damaged region of a pipe to its original pressure capabilities.
We do not agree with the examiner’s conclusion, and to appreciate both the
appellant’s invention and the reasons why we have not sustained the rejection, it is
necessary to understand the evolution of the invention, as derived from the appellant’s
specification, the applied references, and the evidence submitted by the appellant in the
Fawley declarations and their accompanying exhibits.
In December of 1985, the appellant filed a patent application directed to crack
arrestors for stopping a propagating ductile fracture in pipes such as those used in
pipelines, which matured into the Fawley patent that has been applied as a reference
against the claims in the present application. The disclosed pipe arrestor was in the form
of a spiral band of an elastic high tensile strength material. It is described in the patent as
being made of a composite material containing high tensile strength fibers arranged
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parallel to one another along the length of the web and encapsulated in a resin mix which,
when cured in a coil spring configuration, returns to the same configuration after being
uncoiled (columns 3 and 4). The crack arrestor is installed around the pipe in such a
manner as to provide several layers of wrapping, which layers are biased into frictional
contact with one another over their entire areas by the “memory” present in the spiral band.
Installation is facilitated by securing with adhesive the inner end of the spiral to the pipe
and the outer end to the next inner layer, and by the application of globs of adhesive at a
few discrete points along the length of the spiral. It is explained that the device is
prevented from expanding when exposed to a propagating crack in the pipe by the friction
developed between the adjacent layers, which could be enhanced by utilizing a resin that
remained tacky even after being cured. See column 5. There is no mention in the patent
of using the device to solve the problem to which the present application is directed, that
is, reinforcing a pipeline which carries gas or liquid under pressure and has deteriorated to
the point where it has an unbreached but weakened region that has reduced its ability to
withstand the pressure of the fluid within. In this regard, in the declaration dated October
30, 1995, Mr. Fawley stated it was not obvious to him to use the coil band crack arrestors
of his ‘752 patent to take the place of conventional steel sleeves in reinforcing weakened
sections in pipelines but that he did think it was possible that these devices might be
adapted to do so, and that experiments began to explore this use, the task being
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accomplished after three years of work and the expenditure of millions of dollars (pages 1
and 2).
The Pipeline Reinforcement brochure, which was disseminated in 1987, not only
described the CLOCK SPRING crack arresting device as being capable of stopping
propagating cracks in pipelines, but also stated that it could be used to repair or reinforce
pipe segments that had been damaged by corrosion or other forces and could restore a
damaged area to its original pressure capabilities (page 4). No additional method was
set forth by which this use was to be accomplished. Reinforcement Digest, published in
1989, contains similar statements regarding the use of the crack arrestor for repairing
deteriorated sections of pipeline. In the declaration of Mr. Fawley dated January 9, 1997,
the inventor states on page 2 that although Reinforcement Digest says that the CLOCK
SPRING crack arrestor also could be used to enable a damaged pipeline to operate at its
original design pressure, he believed at the time of the publication that such could not be
accomplished when installed in the manner disclosed for use as a crack arrestor, but that
the device itself could be utilized to repair an unbreached but weakened pipe (page 7).
The declaration explains that tests conducted with the device being secured by adhesive
on each end and with discrete globs between adjacent layers, that is, in accordance with
the instructions for its use as a crack arrestor, did not secure the convolutions from
movement relative to one another under simulated pipeline burst conditions, and thus this
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method failed to restore a damaged section of a pipeline to its original burst strength. The
apparent causes were failure of the adhesive, compression of the adhesive allowing the
pipe to expand, and breaking of certain layers due to inadequate transfer of force between
layers. See pages 5-7. It is our view that the information provided in this Fawley
declaration also is applicable to the device and method as disclosed in Pipeline
Reinforcement.
As the examiner has impliedly admitted in the Answer, none of these references
teach filling a depression in the weakened area with a filler material prior to installing the
CLOCK SPRING device on the pipe, which steps are present in the method of claims 33
and 47.
From our perspective, the evidence provided in the Fawley declarations
establishes that the crack arrestor disclosed in the Fawley patent, Pipeline Reinforcement
and Reinforcement Digest, when installed in accordance with the methods disclosed
therein, not only was not capable of restoring the burst strength of a pipe having an
unbreached weakened region to a level at which the pipe can withstand its original
pressure, but that the inventor believed prior to the testing that such was the case.
Accompanying the 1995 Fawley declaration are selected pages from a report by
Southwest Research Institute and Battelle Columbus Division regarding the testing that
was done, and which succeeded in developing a method whereby the CLOCK SPRING
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device could be utilized to restore the burst strength of a pipe having an unbreached
weakened area, the problem to which the present application is directed. As stated on
page 2 of that report:
Assuming a repair is feasible using the composite reinforcement technology,
the defect is filled with a filler that allows load transfer between the pipe and
the composite reinforcement. The composite is then wound around the pipe
over the defect. Adhesive is applied between the composite layers as
wrapping proceeds such that an essentially monolithic reinforcement is
formed after the adhesive has cured. The pipeline is then returned to its
approved operating pressure (emphasis added).
This is different from the method of placing discrete adhesive globs between the
convolutions which was disclosed as the method of installing the device as a crack
arrestor, and appears to be the reason that it can successfully be used to restore the burst
strength of an unbreached but weakened section of a pipe. We note that the date of this
report has not been stated on its face or in the declaration, but it can be presumed to be
prior to the filing date of the present application, in that the letter from Mr. Wilke of the Gas
Research Institute (Exhibit B to the 1995 Fawley declaration) congratulating Mr. Fawley on
developing this repair technique is dated March 20, 1995, and the waiver allowing the use
of the invention in the field granted by the Department of Transportation Research and
Special Programs Administration (Exhibit F to the 1995 Fawley declaration) was issued in
February of 1995. It also is noteworthy, in this regard, that in the Oct. 9, 1995, issue of Oil
& Gas Journal (Exhibit G to the 1995 Fawley declaration) there appears an article on the
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invention in which the method is explained as having “the individual layers . . . bonded to
each other . . . to form, upon curing, a monolithic unit” (page 68), and a photograph is
provided showing the installation crew applying the adhesive to the exposed surface of the
convolutions during wrapping.
The method recited in independent claims 33 and 47 includes wrapping the pipe
with the convolutions of the coil band such that an initial convolution is placed around the
pipe and subsequent convolutions are placed around underlying convolutions in radial
alignment therewith. This step further includes “securing the convolutions from movement
so that the convolutions do not move relative to one another when the pipe is pressurized”
(emphasis added). As explained on page 4 of the specification, in the summary of the
invention:
A coating of the adhesive is applied to the outer surface of each convolution
of the band as the band is wound around the pipe so that a continuous layer
of adhesive is defined between adjacent convolutions of the band (emphasis
added).
On page 9 of the specification, in the detailed description of the preferred embodiments of
the invention, it is stated with reference to Figure 7 that
after the first convolution is applied to the pipe 1, the outer surface of the
convolution is coated with the adhesive 9 for the reception of the next
convolution, and then that convolution is coated with the adhesive, and so on,
until the final convolution is reached. The final convolution need not be
coated. The adhesive coating 9 of each convolution is sprayed with water,
or a catalyst activated with water, for activation of the adhesive before the
next convolution is brought into contact with the adhesive. One or more
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bands of tape, for example, fiber tape, are placed around the reinforcement
band 10 to hold the band 10 tightly in place until the adhesive 9 cures.
(Emphasis added.)
In view of these passages from the specification, taken in the light of the evidence of the
failure of the discrete applications of adhesive to perform in the manner required by the
claimed method and which established that the claimed method was successfully
performed when the convolutions were bonded to one another to form a monolithic unit, we
interpret “securing” as used in claims 33 and 47 to mean secured to such an extent that no
slippage can occur between adjacent convolutions when the pipe is pressurized to the
degree required by the claims, for example, as is provided when the adjacent convolutions
are bonded together into a monolithic unit. Considering the rejection in the light of this
interpretation, it is our conclusion that the combined teachings of Reinforcement Digest,
Fawley, the admitted prior art and Pipeline Reinforcement, which we have discussed
above and which were combined by the examiner with regard to this feature of the
invention, fail to teach such “securing.”
Nor, in our view, would such have been suggested by the other references applied
against these claims. Shaw is directed to repairing a rigid hollow article such as a pipe by
placing a patch over a breach in the article and then wrapping it with multiple helical turns
of a flexible tape of glass fiber cloth which is impregnated with a self-curing resin as it is
being installed. When the resin cures, the material is converted to a hard, solidified state
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2See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
(column 3, line 49). Shaw further teaches that a filler can be used prior to tape installation
to repair irregularities in the surface. Medkeff discloses a similar method of repair, using
flexible copper tape and solder or the like, in which the tape may be spring loaded so it
attempts to conform to the surface of the pipe as it is wound thereon (column 2, lines 58-
65). Basic to the methods disclosed in both of these references is that an uncured flexible
tape be helically wrapped about the pipe, and that the resulting patch then be cured into a
hardened, solidified mass. Stark discloses a method of repairing structures, including
pipe, in which a filler is covered with a single layer of glass fiber cloth that is fused into the
surface of the structure after installation by the curing of an epoxy or the like.
The objective of all three of these references is to provide a hardened solidified
mass from a helically wrapped flexible material. None of them install on the damaged
article a material comprising unidirectional high tensile strength filaments in a cured resin
matrix, and none is concerned with securing convolutions that are arranged in radial
alignment against movement with respect to one another when pressure is applied from
within the repaired structure. The mere fact that the prior art structure could be modified
does not make such a modification obvious unless the prior art suggests the desirability of
doing so.2 In the present case, we fail to perceive any teaching, suggestion or incentive in
the applied references which would have led one of ordinary skill in the art to modify the
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3In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
4The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
method of installing the CLOCK SPRING device disclosed in Reinforcement Digest,
Fawley, and Pipeline Reinforcement by replacing the discrete globs of adhesive used to
facilitate the installation of the device with a continuous adhesive of sufficient strength and
presence to “secure” the convolutions to the extent that they do not move relative to one
another when the pipe is pressurized. From our perspective, suggestion for combining the
references in the manner proposed by the examiner is found only in the hindsight afforded
one who first viewed the appellant’s disclosure. This, of course, is not a proper basis for a
rejection under
35 U.S.C. § 103.3
It is our conclusion that the applied references fail to establish that the subject
matter recited in independent claims 33 and 47 would have been obvious under
35 U.S.C. § 103(a) to one of ordinary skill in the art,4 and we will not sustain the rejection of
these claims or of claims 34-40, 43-46, 48-50, 53-58 and 61-63, which depend therefrom.
Claims 41, 42, 51, 59 and 60 stand rejected on the basis of the references applied
against claim 33 et al., taken further with Schumacher, which was cited for its teaching of
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utilizing a moisture activated urethane adhesive. Be that as it may, Schumacher does not
alleviate the deficiency in the basic combination of references which was discussed
above. We therefore will not sustain the rejection of these claims.
SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
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REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
NEA:lbg
Appeal No. 1999-2145
Application No. 08/781,605
Page 16
JOHN P. SHANNON
LANE, AITKEN & McCANN
WATERGATE OFFICE BUILDING
2600 VIRGINIA AVENUE NW
WASHINGTON, DC 20037
APPEAL NO. 1999-2145 - JUDGE ABRAMS
APPLICATION NO. 08/781,605
APJ ABRAMS
APJ FRANKFORT
APJ CALVERT
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 20 Mar 02
FINAL TYPED: