Ex Parte Kinnari et al

Patent Trial and Appeal Board

Sep 27, 2013

10561151 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEIJO J. KINNARI,
KJELL MORISBAK LUND, ATLE HARALD BORNES, and
CATHERINE LABES-CARRIER
____________________

Appeal 2011-013641
Application 10/561,151
Technology Center 3700
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Keijo J. Kinnari et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 2, 5, 8-12, and 14. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claims 5 and 10 are independent. Claim 5 reads:
5. A method for removing plugs of at
least ice in a subsea pipeline, which is electrically
conductive, exhibits ohmic resistance, and is a
conduit for a fluid, the method comprising:
directly heating the pipeline electrically to a
temperature above the melting point of ice, but
below the melting point of a hydrate;
applying an electrical voltage over the
pipeline between two electrical contacts, thereby
causing an electric current to pass through the
pipeline to resume or maintain flow of fluid
through the pipeline; and
subsequently applying a second plug-
counteracting procedure to remove any ice or
hydrate plug from within the pipeline.

REJECTIONS
Claims 2, 5, 8-11, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Holen (US 2002/0028070 A1; pub. Mar. 7, 2002)
and Firmin (US 2004/0253734 A1; pub. Dec. 16, 2004) or Agee (US
2003/0178195 A1; pub. Sep. 25, 2003).
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Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Holen, Firmin or Agee, and Ness (US 6,328,583 B2; iss. Dec. 11,
2001).

ANALYSIS
Rejection of claims 2, 5, 8-11, and 14 – Holen and Firmin or Agee
Claims 2, 5, 8, 9, and 14
Claim 5 recites, inter alia, “directly heating the pipeline electrically to
a temperature above the melting point of ice, but below the melting point of
a hydrate” and “subsequently applying a second plug-counteracting
procedure to remove any ice or hydrate plug from within the pipeline.”
Emphasis added.
The Examiner found that Holen discloses direct electric heating of a
subsea pipeline to a desired temperature, but does not disclose a heating
temperature that is above the melting point of ice, but below the melting
point of hydrate. Ans. 4-5. The Examiner also found that Holen does not
disclose subsequently applying a second plug-counteracting procedure to
remove ice or hydrate plug, as claimed. Id. at 5. The Examiner relied on
Firmin for the disclosure of using chemical injection and a pressurization
system to remove a hydrate plug, and relied on Agee for disclosure of
depressurization to remove ice or a hydrate plug. Id. at 5. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to modify Holen to include heating and application of chemical injection or
depressurization to enhance removal of a hydrate plug or ice in the pipeline
to facilitate more-effective flow in the pipeline. Id. The Examiner also
found that Holen discloses varying current and voltage levels (see Holen,
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para. [0010]), and reasoned that it would have been obvious to set the
temperature at the recited range as a matter of routine experimentation. Id.
Holen discloses a heating system for crude oil transportation tubes.
Holen discloses that when oil flow is stopped in undersea pipelines, oil
inside the pipelines may form “viscosity forming plugs.” Holen, para.
[0003]. Holen also states:
If for any reason the crude oil transportation has to
be stopped the formation of hydrate plugs or wax
deposits may occur. When starting transportation
again the plugs and remaining cold crude oil in the
section 6 will block new oil transportation because
of its higher viscosity inspite of the thermal
insulation of the metallic tube 1.
Id. at para. [0014]; emphasis added. Holen discloses that the metal tube 1 in
section 6 is heated to “avoid such a problem.” Id. at para. [0015]. Holen
states “[t]he section 6 heated by an AC current flow secures that at the time
of oil transportation starting the remain[ing] crude oil will have sufficiently
low viscosity.” Id. at para. [0018].
While Holen does not disclose a particular temperature to which
section 6 of tube 1 is heated to avoid the problem of blockage by a hydrate
plug or wax deposits in the pipeline, we agree with Appellants that the
temperature used would need to be sufficiently high to prevent formation of
such hydrate plugs and wax deposits. See Br. 8. We also agree with
Appellants that Holen does not disclose or suggest that the temperature to
which section 6 is heated could be limited to a maximum temperature that is
below the melting point of a hydrate and still avoid the problem of hydrate
plug or wax deposit formation in the pipeline. See Br. 5-6. Rather, heating
the section 6 to a temperature that is above the melting point of the hydrate
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and/or wax deposit would be effective. Such heating would also melt ice
having a lower melting temperature than the hydrate. In contrast, the
claimed method uses a maximum heating temperature that only melts ice,
and not hydrate, in the pipeline.
We also agree with Appellants that because Holen discloses that the
heating of the section 6 is effective to avoid the problem of hydrate plug or
wax deposit formation in the pipeline, one skilled in the art would have no
reason to subsequently apply “a second plug-counteracting procedure to
remove any ice or hydrate plug from within the pipeline,” as claimed. At the
very least, the Examiner has not made a finding that there would be ice or
hydrate plug in Holen’s heated pipe that would need to be removed. Absent
the presence of ice or hydrate plug in the pipe, we agree with Appellants that
applying the procedure of either Firmin or Agee in Holen would be
unnecessary as the problem of plug formation is already effectively
prevented by the heating. See Br. 7. Thus, we find that the Examiner did
not articulate an adequate reason with rational underpinning for modifying
Holen to result in the claimed method. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds 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.”). Therefore, we do not sustain the rejection of claim 5, and
dependent claims 2, 8, 9, and 14.
Claims 10 and 11
Claim 10 is directed to “[a] system for removing plugs of at least ice
in a subsea pipeline . . . which pipeline can be blocked by plugs of ice and
hydrates,” and recites the limitation:
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wherein the electrical current source is
provided for generating current sufficient to cause
heating of the pipeline to a temperature above the
melting point of ice, but below the melting point of
a hydrate, such that the permeability through the
pipeline is resumed or maintained, and so as to
enable a second plug-counteracting procedure for
plug removal or hindrance of ice and hydrate plug
formation.
Emphasis added. Claim 10 calls for an electrical current source that “is
provided for generating” a current sufficient to cause heating of the pipeline
to the specified temperature, “such that the permeability through the pipeline
is resumed or maintained.” Claim 10 defines the electrical current source
functionally, that is, by what it does, not by what it is.
Similarly, Holen’s heating system includes a power supply 7
supported on the platform 5 to generate electrical current to heat the section
6 of tube 1 to address the problem of plug formation. See Holen, para.
[0015]; fig. 1. The power supply 7 provides voltage and current via the riser
cable 8 and electrical conductors and connectors to heat the section 6. See
Holen, para. [0010], [0016]; fig. 1. We find that Holen’s power supply 7 is
capable of operating to provide the claimed function of the electrical current
source. Holen is not required to disclose that function as “it is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (citations omitted). Appellants have not provided any
persuasive argument or evidence to show why Holen’s power supply is not
capable of providing the recited function of the electrical current source.
Where, as here, the Patent and Trademark Office (PTO) “has reason to
believe that a functional limitation asserted to be critical for establishing
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novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art,” the PTO can require Appellants “to prove that
the subject matter shown to be in the prior art does not possess the
characteristic relied on.” In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977)
(citation omitted).1
Claim 10 does not call for any additional structural element(s) to
perform the second plug-counteracting procedure, or even require that the
procedure actually be performed by the system. Rather, the electrical
current source providing the claimed generating of current “enables” the
procedure. By providing the claimed current generating and heating
function in Holen’s heating system, Holen’s power supply also “enable[s] a
second plug-counteracting procedure for plug removal or hindrance of ice
and hydrate plug formation.” Emphasis added. Appellants have not
challenged the Examiner’s findings for Firmin and Agee regarding their
disclosures of “a second plug-counteracting procedure.” Nor have
Appellants provided any persuasive argument why the claimed “second
plug-counteracting procedure” could not be used in Holen’s system in
addition to heating. Thus, we sustain the rejection of claim 10 based on
Holen, Firmin, or Agee.
Claim 11 depends from claim 10 and recites “the electrical current
source is provided for generating current sufficient to melt a zone of ice
having thickness of at least 5 mm closest to an inner wall of the pipeline,
such that flow of the fluid through the pipeline is resumed or maintained.”

1 Appellants have the same burden of proof whether the rejection is based on
inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35
U.S.C. § 103. In re Best, 562 F.2d at 1255.
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Appellants correctly state that the Examiner did not address the similar
limitations of claims 2 and 14. See Br. 10. However, although Holen does
not explicitly disclose that the power supply generates current sufficient to
achieve the melting of ice called for by claim 11 to resume or maintain fluid
flow, Appellants have not provided any persuasive reason why Holen’s
power supply is not capable of providing the recited function of the claimed
electrical current source. As discussed supra, Appellants have the burden to
make this showing. Thus, we also sustain the rejection of claim 11.
Because our findings and reasoning for the affirmance of the rejection
of claims 10 and 11 is not identical to those of the Examiner, we designate
our affirmance as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) to provide Appellants with a full and
fair opportunity to respond to the rejection.2
Rejection of claim 12 – Holen, Firmin or Agee, and Ness
Appellants do not provide separate argument for the rejection of claim
12. Thus, we sustain the rejection of claim 12 and designate our affirmance
as a NEW GROUND OF REJECTION.

DECISION
We REVERSE the Examiner’s rejection of claims 2, 5, 8, 9, and 14.
We AFFIRM the Examiner’s rejection of claims 10 and 11 and
designate the AFFIRMANCE as a NEW GROUND OF REJECTION.

2 “Mere reliance by the Board on the same type of rejection or the same prior
art references relied upon by the examiner, alone, is insufficient to avoid a
new ground of rejection where it propounds new facts and rationales to
advance a rejection none of which were previously raised by the Examiner.”
In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011).

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We AFFIRM the Examiner’s rejection of claim 12 and designate the
AFFIRMANCE as a NEW GROUND OF REJECTION.
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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