Ex Parte Nardo

Patent Trial and Appeal Board

Jan 29, 2018

13266151 (P.T.A.B. Jan. 29, 2018)

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.
13/266,151 11/04/2011 Marco Nardo 1000035-000107 2687
21839 7590 01/31/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO NARDO
Appeal 2017-004873
Application 13/266,1511
Technology Center 1700
Before MICHAEL P. COLAIANNI, AVELYN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’
rejections adverse to the patentability of claims 2-6, 8, and 19-39 under
35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellant identifies the real party in interest as Saipem S.p.A. Br. 2.
Appeal 2017-004873
Application 13/266,151
SUBJECT MATTER
Independent claim 2 is illustrative of the subject matter on appeal and
is copied below from the Claims Appendix of the Appeal Brief, with key
limitations at issue in this appeal italicized:
2. A method of laying a pipeline for the transportation of
hydrocarbons, wherein the pipeline is laid at sea from a pipe­
laying vessel having a work platform, said method using a heat-
delivery apparatus including at least two heater arrays, each
heater array comprising a plurality of heating elements, said
heater arrays being mounted for movement between an open
configuration in which the heat-delivery apparatus defines a
pipe entry region to allow passage of a pipe into or out of the
heat-delivery apparatus and a closed configuration in which the
pipe entry region is closed, the method including the following
steps:
arranging a heat-shrinkable sleeve around a portion of the
pipeline above the work platform,
arranging the heat-delivery apparatus around the portion
of the pipeline in the region of the sleeve, the step of arranging
the heat-delivery apparatus including
moving the heat-delivery apparatus relative to the pipe and
the work platform, with the heater arrays in the open
configuration such that the pipe passes into the heat-delivery
apparatus via the pipe entry region in a radial direction relative
to the pipe, and then moving the heater arrays to the closed
configuration such that the heater arrays are arranged above the
work platform, around the portion of the pipeline in the region of
the sleeve and the heating elements are maintained in a spaced-
apart relation with the heat-shrinkable sleeve wrapped around the
pipe,
the heat delivery apparatus further including at least three
heater devices, each heater device comprising heating elements
from at least two heating arrays, said heater devices being
arranged at different positions along the axis of the portion of the
pipeline, such that
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Application 13/266,151
a first heater device is positioned closer to the centre
of the sleeve, in the axial direction, than second and third
heater devices,
the second heater device is positioned in the region
of a first end of the sleeve, and
the third heater device is positioned in the region of
a second end of the sleeve opposite to the first end,
individually controlling at least two of the first,
second and third heater devices to apply heat to the heat-
shrinkable sleeve via the heat-delivery apparatus,
wherein each heater device is in the form of an infrared
heater device; and then laying out the pipeline relative to the
vessel and therefore the work platform.
Claims App’x. 1-2 (emphasis added).
STATEMENT OF THE CASE
The Examiner rejects claims 2-6, 8, and 19-39 under 35 U.S.C.
§ 103(a) over Nakahara,2 Kirby,3 and Cittadini Bellini,4 either with or
without Haley.5
The Examiner finds that Nakahara expressly or inherently teaches all
of the recited elements of independent claim 2, but “does not expressly
disclose that the heater arrays are configured in a lowerable, clamshell-type
arrangement.'1'’ Final Act. 2-3. The Examiner finds, however, that Kirby
evinces that such arrangement is a well-known design in the art. Id. at 3.
The Examiner concludes that it would have been obvious to the skilled
artisan to combine the teachings of Nakahara and Kirby “in order to provide
a multi-zone controllable infrared heater which can be placed according to
2 JP 2006-194368, published July 27, 2006 (as translated into English).
3 US 5,205,732, issued April 27, 1993.
4 WO 2008/071773 A2, published June 19, 2008.
5 US 5,434,387, issued July 18, 1995.
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Application 13/266,151
an alternate, lowerable design with predictable success.” Id. The Examiner
also finds that neither Nakahara nor Kirby exemplify an embodiment
wherein the pipes are joined on a vessel at sea, and then laid out relative to
the vessel, but that Cittadini Bellini teaches that such joining and laying of
pipe was a conventional practice at the time of the invention. Id. The
Examiner thus concludes that it would have been obvious for the skilled
artisan to employ Nakahara’s method, as modified by Kirby, “in order to
provide covering for undersea pipeline joints formed in the field.” Id.
OPINION
We have considered Appellant’s arguments (Br. 8-13) and are
unpersuaded that Appellant has identified any reversible error in the
Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring an Appellant to
identify the alleged error in the Examiner’s rejection). Therefore, we sustain
the obviousness rejections before us based on the findings of fact,
conclusions of law, and rebuttals to arguments well-expressed by the
Examiner in the Final Action and in the Answer. We add the following
comments for emphasis.
Appellant contends that neither of the prior art references relied upon
by the Examiner discloses the limitation requiring “moving the heat-delivery
apparatus relative to the pipe [] with the heater arrays in the open
configuration such that the pipe passes into the [] apparatus via the pipe
entry region in a radial direction relative to the pipe.” Br. 9-12 (emphasis
omitted). Specifically, Appellant urges that “Kirby teaches that the
apparatus moves along the pipe 16 on rollers 10.” Id. at 11 (emphasis
omitted).
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Application 13/266,151
This argument lacks persuasive merit, however, because it does not
address how the pipe first passes into the heat-delivery apparatus. In this
regard, we agree with the Examiner (Ans. 4) that the skilled artisan “would
not view a device with the design of Kirby as requiring that the pipe is only
inserted axially in precise alignment. . . with no relative radial movement
whatsoever, while employing this hinge-opening design having no other
discemable purpose.” Notably, Appellant does not challenge the Examiner’s
rationale as set forth in the Answer, i.e., no Reply Brief was filed.
Furthermore, Appellant has identified no other purpose for Kirby’s
clamshell design, and we discern none, other than that which has been
explained by the Examiner. Final Act. 3,7; Ans. 3-5.
Furthermore, “the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). “When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.” Id. at 421. Here, the skilled
artisan would have recognized that the axial and radial directions are the two
openings available to insert the section of pipe to be heat-treated. As
correctly stated by the Examiner (Final Act. 3), unchallenged by Appellant,
it would have been obvious for the skilled artisan would insert the pipe
“according to an alternate, lowerable design with predictable success.”
Appellant’s contention against claim 3 (Br. 12-13) is likewise
unpersuasive of reversible error. Appellant’s argument is skeletal at best
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and does not even address the Haley reference relied upon in the rejection.
In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (explaining that “the
Board [has] reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
DECISION
The Examiner’s final decision to reject claims 2-6, 8, and 19-39 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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