Ex Parte Halvorsen

Patent Trial and Appeal Board

Jun 3, 2016

13509561 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/509,561 08/08/2012
70001 7590 06/07/2016
NIXON PEABODY, LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
FIRST NAMED INVENTOR
Halvor Halvorsen
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.
082223-000003USPX 6249
EXAMINER
TIJNGE, KRISTINA NS
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAL VOR HALVORSEN
Appeal2014-004388
Application 13/509,561
Technology Center 3600
Before: ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004388
Application 13/509,561
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
19.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to a device and method for attaching an
identification (ID) marker to a production pipe. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A device ( 101) for attaching an ID marker to a cylindrical
object (301) in the form of a production pipe or production
tubing (301), said device (101) comprising a fitting (101), said
fitting ( 101) has a cylindrical shape, said fitting ( 101) fits around
said cylindrical object (301) and said ID marker is placed in said
fitting ( 101) and further characterized by that said fitting ( 101)
has a continuous shape, said fitting (101) is shrunk to fit said
cylindrical object (301 ).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Argyle
Denny
us 5,253,674
US 7,389,205 B2
REJECTIONS
The Examiner made the following rejections:
Oct. 19, 1993
June 17, 2008
Claims 1-3, 5-13, and 15 stand rejected under 35 U.S.C §102(b) as
being anticipated by Denny.
1 We rely on the corrected listing of CLAIMS ON APPEAL included with
Appellant's Reply Brief. Reply Br. 1 Appendix A.
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Application 13/509,561
Claims 4 and 14 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Denny and Argyle.
Claim 16-19 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Argyle and Denny. 2
OPINION
Claims 1-3, 5-13, and 15
Claims 1 and 8 are independent claims, each rejected over Denny. The
Examiner finds that Denny discloses a device (Fig. 8, #90) for attaching an
ID marker (id., #38) to a cylindrical object (id., #66) in the form of a
production pipe (1 :22-25), said device comprising a fitting (Fig. 9, #94 and
#98), said fitting having a cylindrical shape, said fitting fits around said
cylindrical object, said ID marker is placed in said fitting (7:8-14) and
further characterized by said fitting has a continuous shape (Fig. 9) and said
fitting is shrunk to fit said cylindrical object (7:2-7). Final Act. 3.
Claim 1
Appellant argues that the two semi-cylindrical components of Denny
preclude his device from having a "continuous shape." Appeal Br. 11-14.
"Continuous" and "shape" are given no explicit definitions in the
Specification, and appear to have no special meaning in the art. We tum to
the dictionary for standard definitions.
Continuous: being in immediate connection or spatial
relationship: .... A continuous row of warehouses.
2 The Final Rejection included a rejection of claims 16-19 under 35 U.S.C
§ 112 second paragraph as being indefinite. See Final Act. 2-3. The
indefiniteness issue was resolved by an After-Final amendment and is not
part of this appeal. See Advisory Act. Summary Sheet and p. 2 (mailed July
11, 2013); see also Appeal Br. 6.
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Application 13/509,561
http://www.dictionary.com/browse/continuous?s=t (last viewed
Apr. 25, 2016).
Shape: the quality of a distinct object or body in having an
external surface or outlines of a specific form or figure.
http://www.dictionary.com/browse/shape?s=t (last viewed Apr.
25, 2016).
There is no requirement arising from the common meanings of
"continuous" and "shape" that a continuous shape be formed from a single
article, as opposed to being assembled from plural pieces. We agree with the
Examiner that the two-part device of Denny forms a "continuous shape" as
those words are reasonably understood. See Ans. 2.
Appellant argues that the Examiner improperly disregarded the
"shrunk to fit" limitation of claim 1. Appeal Br. 18. This feature is discussed
in the following two sentences of the Specification:
The method of connecting the metal ring 101 to the pipe
or tubing is to shrink the metal ring 101 so that it fits the pipe or
tubing. This can be done either thermally or mechanically.
Spec. 4: 19-22. Neither the Specification nor claim 1 contains a description
of a structural property of the "shrunk" ring compared to an "un-shrunk"
ring. Appellant cites cases for the proposition that where a claim limitation
could be construed as either structure or process, that structure is the
preferable and default interpretation the limitation. Appeal Br. 18-19. The
rule from the cited cases is that a structural interpretation is favored where
the limitation has both structural and process aspects and where the limitation
describes the product more by its structure than by the process used to obtain
it. Hazani v. USITC, 126 F.3d 1473, 1479 (Fed. Cir. 1997). In the present
case, "shrunk to fit said cylindrical object" is not susceptible of both
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Application 13/509,561
structural and process interpretations. The only way to obtain something
"shrunk to fit" is to start out with something large, and make it smaller. No
structural change beyond change is size is required or achieved. This is
quintessentially a process limitation, and after setting out the applicable rule,
Appellant has not provided any explanation of what the structural properties
of a shrunk ring might be or why we should not conclude that this limitation
describes the ring recited in claim 1 more by process than by structure. For
these reasons we are not persuaded by the Appellant's argument, and agree
with the Examiner that Denny discloses a fitting that is "shrunk to fit" a
cylindrical object. See Ans. 2-3.
Claims 2, 3, and 5-7
Claims 2, 3, and 5-7, which depend directly or indirectly on claim 1,
were rejected as anticipated by Denny, and were not argued separately.
Appeal Br. 14, 19. These claims therefore stand or fall together with claim 1,
and the rejection of these claims is affirmed for the same reasons as the
rejection of claim 1 was affirmed. 37 CPR§ 41.37(c)(l)(iv) (2015).
Claim 8
In an argument similar to one made in connection with claim 1,
Appellant urges that claim 8 is improperly rejected because Denny does not
teach "placing a unitary cylindrical fitting around" a cylindrical object.
Appeal Br. 11-14. Claim 8 is a method claim, as follows:
8. A method of attaching an ID marker to a cylindrical
object (301) comprising the acts of placing a unitary cylindrical
fitting (101) around said cylindrical object (301), attaching said
fitting (101) to said cylindrical object (301 ), and attaching said
ID marker to said fitting.
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"Unitary" is not given any specific definition in the Specification, and
we tum to the dictionary.
Unitary: of, pertaining to, characterized by, or aiming toward
unity. http://www.dictionary.com/browse/unitary (last viewed
April 28, 2016).
Appellant relies on the same distinctions between Denny and the
claimed subject matter as where argued in connection with claim 1. Appeal
Br. 13, 14, 16-17 ("unitary cylindrical fitting"). We agree with the
Examiner's finding that Denny teaches placing a unitary cylindrical fitting
around a cylindrical object, as well as the other steps recited in claim 8,
which are not disputed by Appellant. Appeal Br. 13-14; see also Ans. 2;
Final Act. 4. Clearly, the two semi-cylindrical components of Denny when
joined around a pipe meet the definition of "aiming toward unity."
Appellant argues that the broadest reasonable interpretation of the
claims does not include the two-part arrangement shown in Denny. Appeal
Br. 14--15. To interpret the claims as Appellant would have us do would be
to read a limitation from the specification - which shows only one-piece
collars - into the claims. There is no requirement in the language of claim 8
that precludes interpreting the claims as encompassing the two-part device of
Denny, given the ordinary meanings of the words used in the claims.
Accordingly, we agree with the Examiner that Denny discloses a "unitary
cylindrical fitting," and we have not been apprised of error. See Ans. 2
Claim 9
Claim 9 depends from claim 8 and is not argued separately except to
be included in the same heading as claim 8. Accordingly we affirm the
rejection of claim 9. 37 CPR§ 41.37 (c)(l)(iv) (2015).
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Claim 10
Claim 10 depends from claims 8 and 9, adding that the fitting
"comprises a metal ring (101 )" (claim 9) and that the ring "has at least one
hole (102) into which said ID marker is placed" (claim 10). Reply Br.
Appendix A, 16. In connection with claim 10, Appellant argues that Denny
does not disclose a metal ring with a hole into which an RFID marker is
placed. Appeal Br. 19-20. The Examiner finds that the slot 116 (Denny,
Fig. 9) meets this limitation. In his Answer, the Examiner finds that the
fitting piece 94 of Denny is formed of a metal band 94b and a resilient
portion 94a, and that the band and resilient portion together form a fitting,
and that therefore the metal portion can be considered as "ha[ ving] . . . [a]
hole into which [the] ID marker is placed" as required by claim 10. Ans. 3-
4.
A review of Denny shows that his mount is formed with an inner
"frame" (Denny Fig. 9, #92, 94b ), preferably made of stainless steel, and
having an outer layer (id., #92a, 94a) of resilient material such as vulcanized
rubber. Id. 6:41-55. The RFID tag of Denny is fastened in a slot (id. Figs. 8,
9 # 116) formed in the resilient material and secured by a screw that appears
to reach but not penetrate the stainless steel inner frame. As we see the
question, it is whether the metal band 94b, that manifestly is free of openings
to receive an RFID chip, nevertheless "has" at least one hole for that purpose
because the resilient material bonded to the band includes such a hole. We
can find no definition of the verb "to have" that encompasses the Examiner's
position. To the contrary, the principal definition of the verb "to have"
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includes to hold, include, or contain as a part or whole. 3 Based on our
understanding, the claim language requires that the metal ring itself include a
hole, not that the metal ring be bonded to some other component which
includes a hole. Accordingly, we are persuaded that the evidence of record
does not support the Examiner's position that the subject matter of claim 10
is identically disclosed by Denny.
Claim 11
Claim 11 depends from claim 10. Our disposition of claim 10 also
disposes of the rejection of claim 11.
Claims 12-13
Claims 12 and 13 depend from claim 9 and include the step of
"attach[ing said metal ring (101 )] to said cylindrical object (301) by
shrinking." Appellant argues that tightening a set screw to hold the two-part
collar disclosed in Denny in place is not the same as "shrunk to fit." Appeal
Br. 22-24. However, these claims merely call for the metal ring to be
attached "by shrinking," (Reply Br. Appendix A, 17), and so the argument
that Denny does not teach "shrunk to fit" is not commensurate with the scope
of the claims and therefore is not persuasive. Therefore, we affirm the
rejection of claims 12 and 13.
Claim 15
Claim 15 includes all the limitations of claims 8 and 9, adding
"wherein insulating material can be installed between the metal ring ( 101)
and an exterior wall of the cylindrical object." The Examiner notes that the
claim language is broad enough to encompass any fitting capable of having
3 See http://www.merriam-webster.com/dictionary/have (last viewed May
11, 2016).
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an insulating material in such a place. Ans. 5. Denny shows, as the
Examiner found, a fitting that could have insulating material between it and
the cylindrical member around which it is fitted. Id.; see also Denny 6:48-
52, Figs. 8, 9 #92a, 94a). Appellant argues that Denny does not show
insulating material between the device and the cylindrical object and so
Denny cannot anticipate. Appeal Br. 24. This argument is not persuasive
because the claim only calls for a device where insulation material can be put
between the device and the cylindrical object. This is the case with the
Denny fitting. See Ans. 5; see also Reply Br. Appendix A, 17. Accordingly,
Appellant has not apprised us of error.
Claim 16
Claim 16 is an independent claim rejected over Argyle and Denny. It
recites:
16. A device for marking a cylindrical object, the device
compnsmg:
a continuous cylindrical metal band fitted about said
cylindrical object, the continuous cylindrical metal band defining
a first opening configured to receive an ID marker and a second
opening configured to receive a galvanic anode;
an ID marker attached to the continuous cylindrical metal
band via the first opening; and
a galvanic anode attached to the continuous cylindrical
metal band via the second opening.
The Examiner finds that Denny teaches an opening in a fitting into
which an identification marker is placed and that Argyle teaches an opening
in a fitting into which a galvanic anode is placed. Final Act. 5---6. The
Examiner concludes one of ordinary skill in the art, when faced with these
two teachings, would be able to combine them to arrive at a fitting with two
openings, one for an identification marker, as identifying pieces of equipment
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is universally a desired quality, and one for a galvanic anode, as desired in
the environment susceptible to corrosion. Ans. 7.
Appellant argues Argyle: (1) does not show a device for marking a
cylindrical object; and (2) does not form a continuous cylindrical band fitted
about a cylindrical object. Appeal Br. 32. Appellant repeats his arguments
about the disclosure of Denny that we addressed above and further argues
that the two references are unrelated to each other in problem, form, function,
purpose and industry. Appeal Br. 34. Appellant argues that a general
citation to "versatility" is not sufficient motivation to make a combination of
prior art references and that the rejection is tantamount to hindsight
reconstruction. Appeal Br. 35. In addition, Appellant argues that Argyle
requires an opening into the interior passage of the pipe around which the
band covered by the claims is to be attached, and that no such opening is
suggested by Denny. Appeal Br. 35. Appellant also argues the Examiner has
not established that the system of Argyle, as modified by the Examiner,
would have a reasonable expectation of success because Denny discloses
absolutely nothing about using the ID marker as a pressure boundary in a
closed system. Reply 13-14.
We agree with the Examiner that the proposed combination of Argyle
and Denny would result in the claimed invention. Adding the threaded
opening with anode from Argyle to the metal band of Denny, or, conversely
the slot and an RFID tag from Denny to the band of Argyle, would produce
the device described in claim 16. Either way the combined teachings of
Argyle to Denny result in a device for marking a cylindrical object. Such a
combination would not expose the RFID tag to the fluid in the cylindrical
object, as asserted by Appellant (Appeal Br. 35) because the added opening
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would be following the teaching of Denny's slot 116 in Figure 9. Our earlier
comments concerning "continuous" apply equally to claim 16.
We take notice that corrosion control is a recognized need in the oil
production industry. See, e.g., Extensive corrosion threatens BP pipelines
in Alaska, risking explosions, spills, The Washington Post (November 2,
2010) found at http://www.washingtonpost.com/wp-
dyn/content/article/2010/11/02/AR2010110207708.html. We further take
notice that the use of galvanic anodes in cathodic protection systems is old
and well known. See, e.g., U.S. Patent 4,038,168. We agree with the
Examiner's finding that the combination of Argyle and Denny would not
inhibit the function of either Argyle or Denny (Ans. 7), and further that one
of ordinary skill in the art, given the well-known needs of the industry to
keep track of inventory and to resist corrosion, would find combining Denny
with Argyle to be an obvious expedient, producing a more versatile device.
Final Act. 6.
"Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such reconstruction is proper." In
re McLaughlin, 443 F.2d 1392, 1313-1314 (CCPA 1971). Denny teaches the
importance of tracking the identification of various pieces of oil well drilling
equipment. Denny 1 :37--45. As noted above, the need to protect such
equipment from corrosion has also long been known, and Argyle teaches one
way to reduce corrosion potential. Argyle 2:22-58. One of ordinary skill in
the art would be familiar with both of these requirements, and would
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therefore have found it obvious to combine the teachings of Denny with
Argyle, and doing so would not have included knowledge gleaned only from
Appellant's disclosure. In view of the foregoing, we do not find Appellant's
arguments persuasive.
Claim 18
Claim 18 depends from claim 16 adding "an insulating material
[]disposed between the metal band and the cylindrical object." Reply Br.
Appendix A, 17. The Examiner rejected this claim asserting that Denny
showed an insulating layer between the metal band and the cylindrical object.
Final Act. 6. Appellant convincingly demonstrated that the metal band is
between the cylindrical object and the insulating layer. Appeal Br. 36.
Accordingly we do not sustain the rejection of claim 18.
Claims 17 and 19
Claims 1 7 and 19 were not separately argued, and our disposition of
claim 16, from which they depend, disposes of the appeal with respect to
these claims. 37 CPR§ 41.37(c)(l)(iv) (2015).
Claims 4 and 14
Claim 4
Claim 4 depends from claim 2 and together they add to claim 1 that the
fitting "comprises a metal ring" (claim 2) and "wherein said cylindrical
object is a metal pipe or a metal tubing and wherein said metal ring receives a
galvanic anode" (claim 4). After pointing to the relevant portions of Denny
and Argyle, the Examiner concluded that it "would have been obvious to one
of ordinary skill in the art at the time of the invention to incorporate the
teachings of Argyle into the invention of Denny in order to provide a
corrosion resistant pipe system." Final Act. 5. Appellant makes the same
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arguments made in connection with claim 16, which we find not persuasive
for the same reasons. Appeal Br. 27-30. We have not been apprised of error
in connection with claim 4.
Claim 14
Claim 14 depends from claims 8 and 9, adding to claim 8 that the
fitting "comprises a metal ring" (claim 9) and that the metal ring "comprises
a coupling between two pipes or pieces of tubing" (claim 14). The Examiner
rejected claim 14 based on the combined teachings of Denny and Argyle,
pointing out that Argyle teaches a method of using a coupling between two
pieces of tubing, citing Argyle, column 4, lines 28-32. Final Act. 5.
Appellant challenges the Examiner's proffered motivation to combine
the teachings of Argyle and Denny as being conclusory and concludes that
"the factual question of motivation [to combine references] is material to
patentability and cannot be dispensed with by a generalized assertion."
Appeal Br. 32.
The Supreme Court has held that courts "need not seek out precise
teachings directed to the specific subject matter of the challenged claim."
KSRint'l. Co. v Teleflex, Inc., 550 U.S. 398, 418 (2007). The Federal Circuit
has repeatedly held that "[ t ]he reason, suggestion, or motivation to combine
may be found explicitly or implicitly: 1) in the prior art references
themselves; 2) in the knowledge of those of ordinary skill in the art that
certain references, or disclosures in those references, are of special interest or
importance in the field; or 3) from the nature of the problem to be solved."
Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000); Perfect Web
Technologies, Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
"We therefore hold that while an analysis of obviousness always depends on
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evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion." Perfect Web Technologies, Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
We find the Examiner provided a reasoned basis for his conclusion
based on the prior art references, the knowledge of those of ordinary skill in
the art, and the nature of the problem to be solved, specifically, that Argyle
teaches how to attach an object to a pipe using a coupling between two pieces
of tubing, and that this teaching would obviously be combined with Denny to
achieve the claimed method. See Final Act. 5. Directing his challenge to the
alleged motivation to combine the teachings of references does not apprise us
of error post KSR.
DECISION
For the above reasons, the Examiner's rejection of claims 1-9, 12-17,
and 19 is affirmed. The Examiner's rejection of claims 10, 11, and 18 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv) (2015).
AFFIRMED-IN-PART
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