Ex Parte Kinert et al

Patent Trial and Appeal Board

Mar 21, 2017

12322348 (P.T.A.B. Mar. 21, 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.
12/322,348 01/31/2009 Nathan Kinert 1814-66500 6128
92297 7590 03/23/2017
Pnnlp.v Rose P P EXAMINER
P.O.Box 3267
Houston, TX 77253
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN KINERT, LEON ELLISON,
RHEINHOLD KAMMANN, MANFRED WORMS,
CLIVE LAM, and GUY L. MCCLUNG, III
Appeal 2015-005338
Application 12/322,348
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Nathan Kinert et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 5, 6, 8—19, and 21—26. See
Appeal Br. 5. Claim 7 has been canceled, and claims 1—4 and 20 have been
withdrawn. See id. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is National Oilwell
Varco, L.P. Appeal Br. 3.
Appeal 2015-005338
Application 12/322,348
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “systems and methods for
identifying risers used in wellbore operations.” Spec. 12. Claims 5, 17, and
18 are independent. Claim 5, reproduced below, is illustrative of the subject
matter on appeal.
5. A subsea riser comprising
a tubular subsea riser body having an interior surface, an
exterior surface, and two spaced-apart ends,
at least one identification assembly on the riser body,
the identification assembly having an assembly body
releasably secured around the exterior surface of the riser body
and having a plurality of wave-energizable apparatuses
embedded within the assembly body and circumferentially
spaced around the riser body,
the assembly body comprising a single integral piece and
having an interior surface, an exterior surface, and a channel
therethrough in which is positioned part of the riser body,
wherein the assembly body has at least a first annular
projection extending radially from the exterior surface of the
assembly body and encircling the assembly body and encircling
the riser body,
wherein the identification assembly is disposed at a
position outside the exterior surface of the riser body.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
appeal:
Kammann US 2005/0230109 A1 Oct. 20, 2005
Dagenais US 2005/0248334 A1 Nov. 10, 2005
McAllister US 2006/0080819 A1 Apr. 20, 2006
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Appeal 2015-005338
Application 12/322,348
REJECTIONS
The following rejections are before us for review:
I. Claims 5, 6, 8—19, 21, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kammann and Dagenais.2
Final Act. 3—9.3
II. Claims 22—25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kammann, Dagenais, and McAllister. Id. at
15-17.
ANALYSIS
Independent claim 5 recites, in relevant part, a subsea riser comprising
“a first annular projection extending radially from the exterior surface of the
assembly body.” Appeal Br. 25, Claims App. (emphasis added). Each of
independent claims 17 and 18 recites a similar limitation. Id. at 27, Claims
App. Appellants argue that the combined teachings of Kammann and
Dagenais do not render obvious this recited limitation. See id. at 14—22;
Reply Br. 2—10. We agree.
2 Although the Examiner’s statement of this rejection on page 3 of the
Final Action includes claims 23 and 25 in the listing of rejected claims, the
body of the rejection includes analysis only for claims 5, 6, 8—19, 21, and 26.
See Final Act. 3—9. As such, we understand that claims 23 and 25 (which
are subject to Rejection II) are not included in Rejection I.
3 We note that pages 9-14 of the Final Action appear to include a
duplicate copy of Rejection I. We treat this duplication as an inadvertent
and harmless error. For the purpose of this Appeal, citations regarding
Rejection I are limited to the copy of the rejection appearing on pages 3—9 of
the Final Action.
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Appeal 2015-005338
Application 12/322,348
The Examiner found that Kammann discloses a subsea riser including,
inter alia, an “assembly body (#30) ha[ving] at least a first annular
projection (#20) extending radially from the exterior surface of the assembly
body.” Final Act. 4 (underlining omitted); see also id. at 7, 8 (the Examiner
citing Kammann, Fig. 17A, || 59, 68, 70, 95, 96). In the Answer, the
Examiner explains that “[t]he identification assemblies feature[] a
transceiver with an antenna 235 that projects radially.” Ans. 3, 5 (citing
Kammann 194). According to the Examiner, “these assemblies are
arranged circularly, they are annular, and as the antenna project outward
from annularly arranged identification device, they project annularly.” Id.
The Examiner adds that figures 8E and 8F of Kammann disclose “a series of
ridge projections annularly sited on the assembly housing the plurality of
wave energizeable devices, reading on an additional paradigm of annular
projections.” Id. at 4.
Although we agree with the Examiner that Kammann discloses an
annular antenna (see Ans. 3, 5; Kammann, Figs. 8D, 17A, || 94, 111), the
Examiner’s rejection does not establish that the antenna is a projection4 (i.e.,
a jutting out) from the assembly body. With reference to Figures 8C and
8D, Kammann discloses that “antenna 235 is disposed within one o[f]. . .
rollers 232.” Kammann 194 (emphasis added). With reference to
Figure 17A, Kammann similarly discloses that “body 532 encases an
RFIDT 537 which has an IC 538 and an antenna.” Id. 1111. In this regard,
4 An ordinary meaning of “projection” is simply “a jutting out” or
“a part that juts out,” which is consistent with the use of this term within
Appellants’ Specification. See Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003); see, e.g., Spec. H 139, 174, 190, 234, Figs. 33A-D, 40A-C.
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Appeal 2015-005338
Application 12/322,348
we agree with Appellants that, although Kammann’s antennas may be
annular, they are disclosed as being embedded or encased within the
assembly body, and, therefore, do not project from the assembly body. See
Reply Br. 4.
The Examiner’s reliance (see Ans. 4) on Figures 8E and 8F of
Kammann is also unavailing. To the extent that each of ribs 242 shown in
these figures may be a projection that extends from the exterior surface of
centralizer body 241, Kammann does not disclose that these projections are
annular5 (i.e., ring shaped). See Kammann, Figs 8E, 8F, 195. Thus, the
Examiner has not established by a preponderance of the evidence that
Kammann, as relied upon in the rejection presented, teaches or suggests an
annular projection, as required by the claims.
The Examiner did not rely on Dagenais or McAllister in any way that
would cure the deficiency discussed supra with respect to the disclosure of
Kammann as applied in the rejection of independent claims 5, 17, and 18.
See Final Act. 4—9, 15—17.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a prima facie case of obviousness. On this basis,
we do not sustain the rejection of independent claims 5, 17, and 18, and of
dependent claims 6, 8—16, 19, 21, and 26, as being unpatentable over
Kammann and Dagenais. Because each of dependent claims 22—25 depends
directly or indirectly from independent claim 5, we likewise do not sustain
5 An ordinary meaning of “annular” is simply “of, relating to, or
forming a ring,” which is consistent with the use of the synonymous term
“ring” within Appellants’ Specification. See Merriam-Webster’s Collegiate
Dictionary (11th ed. 2003); see, e.g., Spec. 10, 16, 138—48, Figs. 2A—M,
17A-E.
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Appeal 2015-005338
Application 12/322,348
the rejection of claims 22—25 as being unpatentable over Kammann,
Dagenais, and McAllister.
DECISION
We REVERSE the Examiner’s decision rejecting claims 5, 6, 8—19,
21, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Kammann
and Dagenais.
We REVERSE the Examiner’s decision rejecting claims 22—25 under
35 U.S.C. § 103(a) as being unpatentable over Kammann, Dagenais, and
McAllister.
REVERSED
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