Ex Parte Kastelein et al

Patent Trial and Appeal Board

Apr 24, 2017

13784239 (P.T.A.B. Apr. 24, 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.
13/784,239 03/04/2013 Maarten Willem Kastelein 6049-01201 3228
35690 7590 04/26/2017
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
patent_docketing@intprop.com
ptomhkkg @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAARTEN WILLEM KASTELEIN and
GERARDUS MARIA KRAMER
Appeal 2015-0037021
Application 13/7 84,23 92
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 19—28. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Specification (“Spec.,” filed Mar. 4,
2013), Appeal Brief (“Appeal Br.,” filed Sept. 25, 2014), and Reply Brief
(“Reply Br.,” filed Feb. 12, 2015), as well as the Final Office Action (“Final
Action,” mailed Feb. 26, 2014) and the Examiner’s Answer (“Answer,”
mailed Dec. 15, 2014).
2 According to Appellants, “[t]he real party in interest is Allseas Group
S.A.” Appeal Br. 2.
Appeal 2015-003702
Application 13/784,239
According to Appellants, the “invention relates to a guide device for
use in the processing, in particular welding, of curved surfaces, in particular
pipe surfaces, and more in particular pipelines.” Spec. 1,11. 11—12.
Claims 19 and 25 are the only independent claims on appeal. Appeal Br.,
Claims App. We reproduce claim 19, below, as illustrative of the claims on
appeal.
19. Guide device for guiding a welding carriage for
welding of a pipe surface, comprising:
a flexible elongate body provided with a guide for the
welding carriage, said flexible elongate body having an
underside;
a tensioner for tensioning the flexible elongate body
around the pipe;
wherein the flexible elongate body is provided on said
underside with a plurality of spacers comprising a spring
mechanism;
wherein a spacer of said plurality of spacers comprises a
cup-shaped spring holder having a first open end directed
towards the flexible elongate body and a second end remote from
the flexible elongate body in the form of an annular foot having
an annular contact surface for making contact with the pipe
surface;
wherein the spring mechanism of the spacer is provided in
the cup-shaped spring holder; and acts between the spring holder
and the flexible elongate body.
Id.
REJECTION AND PRIOR ART
The Examiner rejects claims 19-28 under 35 U.S.C. § 103(a) as
unpatentable over Van Heuveln (US 5,944,248, iss. Aug. 31, 1999),
2
Appeal 2015-003702
Application 13/784,239
Kazlauskas (US 4,726,300, iss. Feb. 23, 1988), and Stewart
(US 6,345,593 Bl, iss. Feb. 12, 2002).
ANALYSIS
Independent claim 19, from which claims 20—24 depend, recites
a spacer of said plurality of spacers comprises a cup-shaped
spring holder having a first open end directed towards the
flexible elongate body and a second end remote from the flexible
elongate body in the form of an annular foot having an annular
contact surface for making contact with the pipe surface.
Appeal Br., Claims App. Independent claim 25, from which claims 26—28
depend, recites a similar limitation. Id.
The Examiner finds that “Kazlauskas clearly teach an annular foot.”
Answer 5; Final Action 5. The Examiner determines that although “it is not
known if the pad [(i.e., ‘foot’)] is solid [(i.e., cylindrical)] or hollow ([i.e.,
ring-shaped)]” in Kazlauskas, “the term ‘annular’ is [not only] defined as
ring-shaped, it is also defined as circular or round.” Final Action 6. We
note, however, that the Examiner does not provide any evidence that annular
is defined as circular or round. Rather, we note that relevant definitions of
annular include “of, relating to, or forming a ring,” and “having the form of
a ring.” Annular Definition, Meriam-Webster.com, https://www.merriam-
webster.com/dictionary/annular (last accessed Apr. 18, 2017); Annular
Definition 1, DICTIONARY.COM UNABRIDGED,
http://www.dictionary.com/browse/annular (last accessed Apr. 18, 2017).
Thus, we agree with Appellants’ argument that, when the phrase “annular
foot” is reasonably interpreted in view of their Specification and drawings,
the phrase is understood to refer to a ring-shaped foot but does not refer to a
foot that is solely circular or round. Appeal Br. 4—5, 7—8. Thus, inasmuch
3
Appeal 2015-003702
Application 13/784,239
as the Examiner does not support adequately the finding that Kazlauskas
discloses an annular foot, we do not sustain the rejection on this basis.
The Examiner determines that “[e]ven if [Van] Heuveln in view of
Kazlauskas fails to disclose the annular (ring) pad, this is merely a change in
shape of the pad and would have been obvious to do so as no advantage to
using an annular shaped pad is described.” Final Action 6; Answer 5.
However, Appellants’ Specification does, in fact, describe advantages that
are provided by the claimed annular foot. See Reply Br. 6 (citing Spec. 9,
11. 26—30). Thus, notwithstanding that the Examiner disagrees that the
discussed advantages would result from the claimed annular foot (see
Answer 6), we do not sustain the rejection on this basis.
The Examiner further determines that “[i]t would have also been
obvious to utilize an annular shape [of the pad or foot] to provide a surface
that is more adept for utilization on a cylindrical surface.” Answer 6. To the
extent that this determination is a rationale as to why it would have been
obvious to use Kazlauskas’s pad or foot in the Examiner’s proposed
combination of references, for the reasons discussed above, we do not agree
with the Examiner that Kazlauskas’s pad or foot is an annular foot as
required by the claims. To the extent that this determination is a reason for
modifying Kazlauskas’s pad or foot to be an annular foot that is a ring-
shaped foot, as recited by the claims, we determine that the Examiner’s
rationale lacks the required rational underpinning adequate to support the
rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[R]ejections on obviousness 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.”).
4
Appeal 2015-003702
Application 13/784,239
DECISION
We REVERSE the Examiner’s rejection of claims 19—28.
REVERSED
5