Ex Parte Hartmann et al

Patent Trial and Appeal Board

Nov 17, 2017

13443453 (P.T.A.B. Nov. 17, 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.
13/443,453 04/10/2012 Markus HARTMANN 395601US99X 2657
22850 7590 11/21/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
FIORELLO, BENJAMIN F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
11/21/2017 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 MARKUS HARTMANN, CLAUDIA BEHRENS,
REINHARD BEUTH, JOERN WINKELS, HANS-JUERGEN KOCKS,
and KONRAD THANNBICHLER
Appeal 2016-007629
Application 13/443,453
Technology Center 3600
Before DANIEL S. SONG, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-007629
Application 13/443,453
THE INVENTION
Appellants’ invention relates to structural steel tubes sheathed by an
extruded layer made of a polyamide molding composition for use in the
foundation of offshore structures.1 Spec. 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An offshore structure comprising a foundation structure
wherein a steel tube sheathed by an extruded layer is
incorporated into the foundation structure, wherein said
extruded layer comprises a polyamide moulding composition.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Vos US 4,155,671 May 22, 1979
Crawford US 5,087,154 Feb. 11, 1992
Marzola US 5,565,051 Oct. 15, 1996
Usui US 6,030,672 Feb. 29, 2000
Murakami US 2005/0206168 A1 Sept. 22, 2005
Dowe US 2006/0183869 A1 Aug. 17, 2006
The following rejections are before us for review:
1. Claims 9 and 18 are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 1—6, 9—10, 12, and 18—19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dowe and Crawford.
1 Claim 1 recites the word “moulding.” Claims App. This decision will use
the spelling of “molding,” except where using a direct quote that contains
the alternative spelling.
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Application 13/443,453
3. Claims 7, 8, 11, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dowe, Crawford, and Marzola.
4. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dowe, Crawford, and Murakami.
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dowe, Crawford, and Usui.
6. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dowe, Crawford, and Vos.
OPINION
Indefiniteness — Claims 9 and 18
Claims 9 and 18 depend, directly or indirectly, from claim 1 and each
claim adds the following limitations:
a) mixing the polyamide moulding composition and a
molecular-weight increasing additive to form a mixture,
b) extruding the mixture, and
c) condensing the mixture, wherein the condensation process to
increase molecular weight is delayed until extrusion has
begun.
Claims App. The Examiner takes the position that the foregoing limitations
are product-by-process limitations that do not patentably distinguish over
prior art and, therefore, cannot impart patentability to the product. Final
Action 3, citing In re Stephens, 145 USPQ 656 (CCPA 1965). The
Examiner concludes that these claims do not further limit the parent claims
from which they depend.
Appellants argue that there is nothing indefinite about the process
limitations. Appeal Br. 6. In response, the Examiner reiterates the position
taken in the Final Action, namely, that product-by-process claims are limited
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Application 13/443,453
to the recited process steps and that the claims do not add any structure.
Ans. 4.
The Examiner is technically correct that the patentability of a product
does not depend on its method of production. In re Thorpe, 111 F .2d 695,
697 (Fed. Cir. 1985). Therefore, “if the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” Id. However, this is an issue of patentability over the prior art, not
an issue of indefiniteness.
In the case of Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed.
Cir. 2009), the Federal Circuit held that process terms limit the scope of
product-by-process claims. Id. at 1293, expressly overruling Scripps Clinic
& Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir.
1991). We conclude, therefore, that claims 9 and 18, by virtue of the
product-by-process limitations contained therein, differ in scope from the
product claims from which they depend. The Examiner has not otherwise
persuaded us that these claims are indefinite and, consequently, we do not
sustain the indefiniteness rejection of claims 9 and 18.
Unpatentability of Claims 1—6, 9—10, 12, and 18—19
over Dowe and Crawford
Claim 1
The Examiner finds that Dowe discloses the invention substantially as
claimed except for an offshore foundation structure. Final Action 3. The
Examiner relies on Crawford as disclosing a polyamide coating on an
offshore foundation structure. Id. at 4. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to use the polyamide extruding process taught in
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Dowe with an offshore foundation as taught in Crawford. Id. According to
the Examiner, a person of ordinary skill in the art would have done this to
protect the offshore structure from corrosion.
Appellants argue that Crawford is directed to polyamine, not
polyamide, coatings for use in a marine environment. Appeal Br. 4. In
response, the Examiner concedes that the alleged improvement disclosed in
Crawford is directed to polyamine coatings. Ans. 3. However, the
Examiner directs our attention to the Background of the Prior Art section in
Crawford as disclosing that it was known to use a polyamide composition on
offshore foundation structures. Id. at 3^4 (“Crawford is used solely for the
teaching of what is known in the art in ‘Background of the Prior Art.’”).
The Examiner further clarifies that it is “not the position of the Office,” that
it would have been obvious to use a polyamide as disclosed by Dowe in the
structures disclosed by Crawford. Id. at 4.
In reply, Appellants argue that Dowe fails to disclose a foundation
structure in which a steel tube is sheathed by an extruded layer. Reply Br. 2.
Appellants further argue that Crawford’s “Background of the Invention”
disclosure is limited to spot repair projects not the claimed extruded layer to
sheath a steel tube. Reply Br. 3.
Dowe discloses a process for producing moldings comprising a
polyamide composition. Dowe, Abstract. Exemplary product applications
disclosed in Dowe include gas pipes, offshore pipelines, supply lines, cable
conduits, filling station supply lines, ventilation lines, air intake pipes, tank
filling ports, storage vessels and fuel tanks. Id. 1 56. The polyamide
molding composition may form an outer layer where an inner layer is steel.
Id. 1 57.
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For example, offshore pipelines usually have a multilayer
structure; they generally comprise a steel structure which is
protected against media by polymer layers both on the inside
and on the outside of the pipe.
Id.
The Background of the Invention section of Crawford explains that
once an offshore production platform is subjected to prolonged exposure of
the marine environment during normal operating procedures, previously
coated steel surfaces tend to become slowly penetrated and eroded to a point
whereby the existing steel substrate is ultimately exposed. Crawford, col. 1,
11. 49-55. Crawford further explains that such steel support members,
without good repair procedures, will lose their structural integrity after about
seven to ten years of exposure. Id. at col. 1,11. 55—59. Crawford then
explains that:
The replacement cost of risers and other steel supports in situ
offshore are considered extremely expensive such that
replacement is preferred to be avoided.
Id. at col. 1,11. 59-62.
Within the foregoing context, Crawford then explains that coating
manufacturers have developed formulations that will “cure under water” and
that such compositions have been primarily developed for “spot repair
projects.” Id. col. 1,11. 63—67. With respect to such spot repair
formulations that cure underwater, Crawford identifies formulations based
on polyamide cured epoxy resins that are heavily filled with inert inorganic
compounds to produce increased viscosity and thixotropy, which properties
are considered “essential” to reduce the possibility of the material being
washed off by wave action. Id. col. 2,11. 3—5.
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Appellants’ Specification explains that, heretofore, steel tubes
required for structural elements have been designed with a wall thickness
greater than immediately necessary and that prior art coating compositions
are merely used for corrosion prevention but do not provide protection from
mechanical loads. Spec. 2. The Specification then states:
The invention is based on the object of providing structural
steel tubes for the foundation structure of offshore structures,
which are more effective than the relevant tubes known hitherto
in providing protection from mechanical loads, and also from
corrosion and UV irradiation.
Id. (emphasis added).
Based on the foregoing, it appears to us that Dowe does not
contemplate or is suggestive of incorporating polyamide layers into
foundational structural members, particularly with a view toward bearing
mechanical loads. It further appears to us that Crawford contemplates the
use of thickened polyamide coating compositions for purposes of underwater
“spot repair.” We are not persuaded by the Examiner’s evidence or analysis
that the proposed combination teaches or suggests the fabrication of
mechanical load bearing foundational support members made of steel
sheathed in a polyamide molding composition. Furthermore, based on the
combined teachings of Dowe and Crawford, we are not persuaded that a
person of ordinary skill in the art would have considered it obvious to
combine the two references to achieve the claimed invention.
Thus, for the foregoing reasons, we do not sustain the Examiner’s
unpatentability rejection of claim 1 over Dowe and Crawford.
Claims 2—6, 9—10, 12, and 18—19
Claims 2—6, 9—10, 12, and 18—19 depend, directly or indirectly, from
claim 1. Claims App. The rejection of these claims suffers from the same
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infirmity as the rejection of claim 1, which infirmity is not cured by the
recited secondary reference of Layne. Claims App. Consequently, we do
not sustain the unpatentability rejection of claims 2—6, 9-10, 12, and 18—19
over Dowe and Crawford.
Unpatentability of Claims 7, 8, 11, 13—17, and 20
These claims depend, directly or indirectly, from claim 1. Claims
App. They are rejected over Dowe and Crawford in combination with
various other references. Final Action 5—8. The additional references,
however, do not cure the deficiencies noted above with respect to the
combination of Dowe and Crawford and the rejection of claim 1.
Consequently, we do not sustain the unpatentability rejection of claims 7, 8,
11, 13-17, and 20.
DECISION
The decision of the Examiner to reject claims 1—20 is reversed.
REVERSED
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