Ex Parte Olivier

Patent Trial and Appeal Board

Aug 25, 2015

13121154 (P.T.A.B. Aug. 25, 2015)

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.
13/121,154 03/25/2011 Pierre L. Olivier P08197US (99108.6P) 5964
22920 7590 08/25/2015
GARVEY SMITH NEHRBASS & NORTH, LLC
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BLVD.
METAIRIE, LA 70002
EXAMINER
BERRY JR, WILLIE WENDELL
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
08/25/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PIERRE L. OLIVIER
________________

Appeal 2015-006056
Application 13/121,154
Technology Center 3600
________________

Before STEFAN STAICOVICI, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pierre L. Olivier (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 10, 31, 44, 82, 95, 100,
107, 110–118, and 133–136. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION under 37 C.F.R. § 41.50(b).

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THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a pipeline pig extractor and
transport apparatus. Spec. 1, l. 5. Claim 1 is illustrative of the claims on
appeal and is reproduced below.
1. A pipeline pig transport apparatus comprising:
a) a housing having a bottom wall providing a
foundation, side walls, an open top, and an interior;
b) a jacking mechanism contained within the housing
interior, the jacking mechanism resting upon the bottom wall
foundation;
c) a carriage that is supported by the jacking mechanism
for movement between upper extended and lower retracted
positions, the carriage having a concave surface that generally
cradles a pipeline pig to be transported, wherein in the extended
position, the carriage is placed above the side walls of the
housing;
d) a winch on the housing or carriage having a drum with
a wound cable;
e) wherein the winch drum and cable are positioned on
the housing to enable the cable to pull the pipeline pig from a
location outside the housing to a position on the carriage when
the carriage is in the upper, extended position.
Br. 11.

REFERENCES RELIED ON BY THE EXAMINER

Dilks US 5,522,582 June 4, 1996
Marrero US 2004/0062630 Al Apr. 1, 2004
Hepburn US 2009/0152520 Al June 18, 2009

THE REJECTIONS ON APPEAL
Claims 31 and 44 are rejected under 35 U.S.C. § 102(b) as anticipated
by Marrero.
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Claims 1, 10, 82, 95, 100, 107, 110–118, and 136 are rejected under
35 U.S.C. § 103(a) as unpatentable over Marrero and Hepburn.1
Claims 133–135 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Marrero, Hepburn, and Dilks.

ANALYSIS
The rejection of claims 31 and 44 as anticipated by Marrero
Claim 31
Independent claim 31 recites, in part, “a housing having an interior
and side walls capable of holding any fluids spilled within the interior.” Br.
12.
The Examiner finds that base 13 in apparatus 11 of Marrero is a
housing as recited in claim 31. Final Act. 2.
Appellant asserts that although Marrero, “does have side walls,
[Marrero] does not have walls that can contain liquid as claimed in claim
31.” Br. 8.
In reply to Appellant’s argument, the Examiner states, “fluids, such as
syrup, with thick viscosity are capable of being held if spilled in the interior
of Marrero because they have a resistance to flow.” Ans. 6.
As noted by Appellant, the ends of base 13 in Marrero are open.
Thus, base 13, on its open ends, provides no more containment of fluids than
would a purely flat surface. Accordingly, the Examiner’s finding that base
13 of apparatus 11 is capable of holding any fluids spilled within the interior

1 The Final Office Action (pages 4–5), mailed on June 17, 2014, and Answer
(pages 4–5) each provide a heading listing claims 1, 10, 95, 100, 107, 110–
115, 117, and 136 as unpatentable over Marrero and Hepburn, but the Final
Office Action and Answer discuss and reject claims 82, 116, and 118 in the
body of the rejection.
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is not supported by a preponderance of the evidence. Thus, we do not
sustain the Examiner’s rejection of claim 31.
Claim 44
Claim 44 recites:
A pipeline pig transport apparatus comprising:
a) a housing having an interior and a lifting mechanism
foundation;
b) a lifting mechanism contained within the housing
interior and supported by the foundation; and
c) a carriage that is supported by the lifting mechanism
for movement between upper extended and lower retracted
positions, the carriage having a surface that is shaped to
generally cradle a pipeline pig to be transported; and
d) the carriage surface extending above the housing in the
extended position.
Br. 12 (emphasis added).
Appellant argues that apparatus 11 in Marrero is not a pig transporter,
and there is no evidence that the apparatus in Marrero can hold or transport a
pipeline pig without damaging the pig. Br. 8. Appellant further argues that
Marrero does not disclose a housing interior as recited in claim 44.
In response, the Examiner states, “the recitation of ‘[a] pipeline pig
transport apparatus’ has not been given patentable weight because the
recitation occurs in the preamble.” Ans. 6.
We first note that because Marrero’s apparatus 11 is capable of
receiving and transporting items, we agree with the Examiner’s finding that
Marrero’s apparatus 11 includes a housing 13 having an interior. See Final
Act. 2.2 As is shown in Figure 2 of Marrero, base 13 includes side walls and

2 We note that in contrast to claim 31, which requires “a housing having
an interior and side walls capable of holding any fluids spilled within the
interior,” claim 44 is broader in that it merely requires a “housing having an
interior.” See Br. 12.
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therefore provides an interior between these walls. Regarding Appellant’s
assertion that Marrero does not disclose a pig transporter and that there is no
evidence that the apparatus can hold or transport a pipeline pig without
damaging the pig, we are not convinced that an apparatus that is configured
to hold a missile as is disclosed by Marrero is not also capable of holding a
pipeline pig. Marrero states, “[t]he munitions handler is designed to receive
and transport a wide range of munitions having weights up to approximately
6000 pounds.” Marrero ¶ 45; see also ¶ 36 (stating that apparatus 11 is
capable of supporting a number of different devices and applications).
Appellant does not direct our attention to any evidence that apparatus 11 of
Marrero cannot hold and transport a pipeline pig. See Br. 8. Accordingly,
although we do not agree that the term “pipeline pig apparatus” should be
given no patentable weight, we nonetheless sustain the rejection of claim 44
as anticipated by Marrero because a preponderance of the evidence supports
a finding that apparatus 11 is capable of holding and transporting a pipeline
pig.
The rejection of claims 1, 10, 82, 95, 100, 107, 110–118, and 136 as
unpatentable over Marrero and Hepburn
Appellant argues that Marrero is not a pipeline pig transporter and
therefore does not disclose features required by independent claims 1, 10,
95, and 107. Br. 8.
We addressed this argument above and remain unconvinced that
apparatus 11 of Marrero is incapable of holding and transporting a pipeline
pig.
Appellant next argues that, in relation to claims 1, 10, 95, and 107,
Marrero does not disclose a housing with an interior. Br. 8. Rather,
Appellant asserts, Marrero discloses a tray. Id.
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The Examiner relies on base 13 for the housing recited in claims 1,
10, 95, and 107. Final Act. 4. We are not convinced that base 13 of
apparatus 11 is not a housing with an interior as recited in claims 1, 10, 95,
and 107. Even assuming, arguendo, that base 13 is a tray, Appellant
provides no explanation supporting the assertion that the base 13 in Marrero
does not also qualify as a housing with an interior. See Br. 8. As is shown
in Figure 2 of Marrero, base 13 includes side walls and therefore provides an
interior between these walls.
In support of the above-noted arguments, Appellant asserts that the
present Application is the national stage of a PCT application, and the
Korean Intellectual Property Office indicated, in a Written Opinion, that
claims 1–131 of the PCT application are novel and non-obvious. We note,
however, the Written Opinion of the International Searching Authority (ISA)
is not binding on the USPTO. 37 C.F.R. § 1.484(a) and (e); see also MPEP
§ 1845.01(V). Further, notwithstanding the results of the above-noted
Written Opinion, we remain unpersuaded that Marrero does not disclose a
housing with an interior.
Claims 82 and 116
Claim 82 recites, “[t]he pipeline pig transport apparatus of claim 107
further comprising plugs that seal the lower section to make it fluid tight.”
Br. 12–13.
The Examiner finds that Marrero and Hepburn disclose all the features
of claim 82 except for the recited plugs. Final Act. 4. Addressing this
deficiency, the Examiner states:
However, the prior art element performs the function
specified in the claim in substantially the same manner as the
function is performed by the corresponding element described
in the specification, and such structure are considered art
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recognized equivalent structures and would have functioned at
least equally as well. It would have been obvious to modify the
device in this way for the purpose of providing an alternative
arrangement that would have functioned at least equally as well.
Id. at 4–5.
Appellant contends that there would be no reason to add plugs to
Marrero inasmuch as none of the prior art is concerned with a fluid-tight
chamber. In other words, Appellant asserts that the Examiner has not
provided an adequate rationale for modifying Marrero.
The reasoning provided by the Examiner does not identify what
structures in the prior art are “art recognized equivalent structures,” or how
modifying Marrero to include these structures would provide “an alternative
arrangement that would have functioned at least equally as well” as the
claimed apparatus. Specifically, the Examiner does not identify what
specific structures lead to the determination that it would have been obvious
to add plugs to a lower section of a housing as disclosed by Marrero.
Moreover, it is not clear how providing plugs to the apparatus of Marrero, as
modified by Hepburn, would form a fluid tight lower section in view of the
open sided housing 13 of Marrero. Accordingly, the Examiner’s rationale
for modifying Marrero and Hepburn to arrive at the apparatus recited in
claim 82 is inadequate, and we do not sustain the Examiner’s rejection of
claim 82.
The Examiner also relies on the rationale quoted above in our
discussion of the rejection of claim 82 for the rejection of claim 116. Br. 4–
5. This rationale for modifying the combination of Marrero and Hepburn to
include “latches operably connect[ing] the lower section and the upper
section” of the housing is inadequate because the rationale does not identify
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the “art recognized equivalent structures.” Accordingly, we do not sustain
the Examiner’s rejection of claim 116.
Claims 113 and 114
Appellant argues, “[r]egarding claims 113 and 114, the prior art in
combination does not provide a walled reservoir and cannot contain fluid
material (as in claim 113) or solid material (as in claim 114).” Br. 9.
Under the heading for the rejection of claims 1, 10, 95, 100, 107, 110–
115, 117, and 136, the Examiner states, “Marrero discloses the claimed
invention except for the winch/pulling device,” but the Examiner makes no
specific findings regarding the containment of fluid material or containment
of solid material recited in claims 113 and 114, respectively. Final Act. 4;
Ans. 4.
We agree with Appellant regarding the rejection of claim 113. As we
discussed above with respect to the rejection of claim 31, a preponderance of
the evidence does not support a finding that base 13 of Marrero is capable of
containing fluid. Accordingly, we do not sustain the Examiner’s rejection of
claim 113.
Claim 114, in contrast, recites “the housing provides a walled
reservoir that enables containment of solid material.” Br. 14. Appellant
characterizes base 13 as a tray. Br. 8. Appellant does not explain how a tray
such as base 13 is unable to contain solid material. Figure 2 of Marrero
makes clear that base 13 can contain solid material. Accordingly, we sustain
the Examiner’s rejection of claim 114.
Claim 118
Appellant argues that the Examiner erred in finding that Hepburn
discloses forklift tine receptacles as recited in claim 118. Br. 9.
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The Examiner finds that “Hepburn discloses fork lift tine receptacles
(not numbered, but shown in fig. 2; note: openings in lift mechanism are
fork lift tine receptacles).” Final Act. 5.
We agree with Appellant on this point. We construe the term “forklift
tine receptacles” to require some relationship to the shape of forklift tines.
The Examiner does not identify any particular opening in the lift mechanism
as having a shape related to the shape of a forklift tine (configured to receive
a forklift tine). Accordingly, we do not sustain the Examiner’s rejection of
claim 118.
The rejection of claims 133–135 as unpatentable over Marrero, Hepburn,
and Dilks
Appellant argues these claims as a group, stating, “in order for there to
be a remote control, the pulling device/winch needs to be motorized, and
there is no motivation in the prior art of record to convert the non-motorized
equipment of Marrero to motorized equipment.” Br. 10.
The Examiner relies on the remote control 50 of Dilks as disclosure of
a remote control winch. Br. 5. Thus, Appellant’s argument regarding the
absence of a motor in Marrero does not address the Examiner’s rejection of
claims 133–135, which do not hinge on whether Marrero includes a motor.
Accordingly, we are unpersuaded by Appellant’s argument. In any event,
Appellant is incorrect in asserting that Marrero discloses only “non-
motorized equipment.” Rather, Marrero states, “[e]ach of the devices used
to drive, rotate, elevate, and pivot the various elements of the invention can
include motors, hydraulic actuators, pneumatic systems, or any other device
that one skilled in the art can choose for such an application.” Marrero ¶ 42
(emphasis added). Accordingly, we sustain the Examiner’s rejection of
claims 133–135.
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DECISION
We reverse the Examiner’s decision to reject claim 31 as anticipated
by Marrero.
We affirm the Examiner’s decision to reject claim 44 as anticipated by
Marrero.
We affirm the Examiner’s decision to reject claims 1, 10, 95, 100,
107, 110–112, 114, 115, 117, and 136 as unpatentable over Marrero and
Hepburn.
We reverse the Examiner’s decision to reject claims 82, 113, 116, and
118 as unpatentable over Marrero and Hepburn.
We affirm the Examiner’s decision to reject claims 133–135 as
unpatentable over Marrero, Hepburn, and Dilks.
Because in some instances the fact finding and reasoning relied on by
the Board to sustain the rejections of claims 1, 10, 95, 100, 107, 110–112,
114, 115, 117, and 133–136 differs from the facts and reasoning relied on by
the Examiner, we designate our affirmance of the rejections of these claims
as NEW GROUNDS OF REJECTION so as to provide Appellant with a full
and fair opportunity to respond to the thrust of the rejections.
Regarding the affirmed rejections that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides that “Appellant
may file a single request for rehearing within two months from the date of
the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, 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)
mls