Ex Parte WalkerDownload PDFPatent Trial and Appeal BoardDec 22, 201613257962 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/257,962 09/20/2011 Stephen John Walker OTD-031352US (CMRN:0100) 3888 64833 7590 12/23/2016 FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER TOLEDO-DURAN, EDWIN J ART UNIT PAPER NUMBER 3678 MAIL DATE DELIVERY MODE 12/23/2016 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 STEPHEN JOHN WALKER ____________________ Appeal 2015-001234 Application 13/257,962 Technology Center 3600 ____________________ Before LINDA E. HORNER, THOMAS F. SMEGAL, and GORDON D. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims 1, 2, 4, 6–9, 11–14, 16–24, and 26–34. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as Cameron Int'l Corporation. Appeal Br. 2. Appeal 2015-001234 Application 13/257,962 2 CLAIMED SUBJECT MATTER The claims are directed to aluminum auxiliary lines for a drilling riser and to systems and methods using such auxiliary lines. Spec. 1, Title; Appeal Br. 26–31 (Claims App.). Claims 1, 13, 20, and 26 are independent. Claim 1, reproduced below illustrates the claimed subject matter: 1. A system, comprising: a joint of a drilling riser, comprising: an auxiliary line, comprising: an aluminum tube having first and second ends; a first coupling portion disposed on the first end of the aluminum tube; and a second coupling portion disposed on the second end of the aluminum tube, wherein the first and second coupling portions each comprise steel or a corrosion resistant coating, wherein a tube length of the aluminum tube is substantially greater than lengths of the respective first and second coupling portions. Appeal Br. 26 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: de Saint Palais Watkins Deul Venkataraman Sele Evans US 4,058,137 US 4,183,562 US 6,415,867 B1 US 6,467,545 B1 US 6,837,311 B1 US 7,086,669 B2 Nov. 15, 1977 Jan. 15, 1980 July 9, 2002 Oct. 22, 2002 Jan. 4, 2005 Aug. 8, 2006 Appeal 2015-001234 Application 13/257,962 3 REJECTIONS The Examiner made the following rejections: 1. Claims 1, 4–6, 9, 11–14, 16, 18, 20, 21, 23, and 29–34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Watkins, Deul, and Evans. 2. Claims 2, 17, 24, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Watkins, Deul, Evans, and Venkataraman. 3. Claims 7, 19, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Watkins, Deul, Evans, and de Saint Palais. 4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Watkins, Deul, Evans, and Sele. 5. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Watkins, Deul, Evans, and Venkataraman. 6. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Watkins, Deul, Evans, Venkataraman, and de Saint Palais. OPINION Rejection 1 Appellant makes separate arguments for claims 1, 13, 18, 20, 23, 31, and 33 (Appeal Br. 6–17), leaving the remaining claims subject to Rejection 1 to stand or fall with representative claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We discuss each separately argued claim infra. Claim 1. Appellant argues that the first rejection should be reversed because the references “fail to teach or suggest an aluminum tube with first and second coupling portions comprising steel or a corrosion resistant coating, wherein a Appeal 2015-001234 Application 13/257,962 4 tube length of the aluminum tube is substantially greater than the lengths of the respective first and second coupling portions.” Appeal Br. 7 (emphasis omitted). Appellant does not challenge the Examiner’s finding (Final Act. 4–5, 16) that Watkins discloses the structure but not the materials of the claimed joint. Appeal Br. 6–9. Appellant also does not question the Examiner’s finding (Ans. 3, 16) that Deul discloses an auxiliary line made of aluminum. Id. However, Appellant challenges the Examiner’s reliance on Evans as teaching the claimed materials because “Evans appears to utilize a configuration of materials that is opposite to those set forth in the instant claim, i.e., a steel tube 25 and 26 and aluminum couplings 27.” Id. at 7, see Ans. 16. Evans discloses a joint of a drilling riser formed with carbon steel pipe bodies 14 and 15 having end portions 25, 26 (also called “pins”) joined by an aluminum coupling 11 surrounding the ends. Evans Figs. 1 and 2; 5:43– 51; 6:21–28. In Evans the connection between the aluminum and steel is made secure by plastically deforming the steel radially outward, which deformation elastically deforms the surrounding aluminum with the resulting stress in the aluminum holding it tight against the steel. Id. at 6:21–34. Appellant argues that because of the manner in which the steel is connected to the aluminum in Evans, one of ordinary skill in the art would not think to use aluminum and steel as materials in the joint of Watkins. Appeal Br. 8–9. The Examiner finds that “Evans discloses that it is well-known in the art to provide joint connections comprising an aluminum tube (Figure 2, #27 and column 6, lines 21–22), a first coupling portion made of steel (Figure 2, #26 and column 6, line 23) and a second coupling portion made of steel (Figure 2, #25 and column 6, line 23).” Ans. 3. The Examiner further finds: Appeal 2015-001234 Application 13/257,962 5 The disclosure of Evans refers to elements 25 and 26 as pins. These pins are threaded and are used to couple parts together. Therefore, they also can be properly interpreted as “coupling portions”. The coupling portions 25 and 26 are made of steel (Evans: Figure 2, #25, #26 and column 6, line 23) and the tube 27 is made of aluminum (Evans: Figure 2, #27 and column 6, lines 21–22). The teachings of Evans serve as evidence to show that coupling two parts, one made of steel and the other made of aluminum is known. Modifying the material of the tube of Watkins and making it of aluminum and modifying material of the coupling portions and making them of steel, results in the claimed configuration of materials of the instant claim. Ans. 16. Further, the Examiner finds: Changing materials [of Watkins] would be obvious to one of ordinary skill in the art in order to make the tubes lighter by using aluminum and make the couplings stronger by using steel. Such modification would not require substantial redesign and would be obvious to one of ordinary skill in the art since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of the material. Ans. 18–19. We are not persuaded that the Examiner erred in his findings. Appellant bases his argument on an interpretation of Evans that the steel conduits 14, 15, 25, and 26 can only correspond to the claimed “tube” and that the disclosed aluminum couplings 11, 27 can only correspond to the claimed “couplings.” Appeal Br. 8. We agree with the Examiner that the names used in a reference are not controlling. See Ans. 16. Appeal 2015-001234 Application 13/257,962 6 The Appellant also relies on the impossibility of wholesale incorporation of Evans into Watkins. Appeal Br. 8–9. Here, the Examiner is not suggesting using the structure of Evans, only the materials and their relative arrangement as tube and coupling. The Examiner has provided evidence of prior art use of aluminum tubes with steel couplings in an auxiliary line, and we agree that using those known materials in the structure of Watkins would have been obvious. Appellant never directly addresses the combination of teachings proposed by the Examiner, and therefore does not persuade us of error. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981)). Claim 13. Claim 13 is an independent claim directed to a system comprising a wellhead, a drilling riser coupled to the wellhead, a mainline and a plurality of auxiliary lines, each of which is the same as the auxiliary line described in claim 1. See Appeal Br. 27–28 (Claims App.). Appellant advances the same reasons for reversing the rejection of claim 13 as were advanced in favor of claim 1. Appeal Br. 9–11. We find them not persuasive for the same reasons stated above in connection with claim 1. Claim 18. Claim 18 depends from claim 13 and adds to claim 13 that “the first and second coupling portions each comprise the steel.” Appeal Br. 28 (Claims App.). In addition to arguing that claim 18 should be allowable based on its dependency from claim 13, Appellant makes the same arguments in connection with claim 18 that were made in connection with claim 1 concerning Evans (id. at 12), and we are not persuaded by them for the same reasons as stated above. Claim 20. Claim 20 is a method claim which includes positioning an aluminum tube and coupling it using coupling portions that are steel. Appeal 2015-001234 Application 13/257,962 7 Appeal Br. 28 (Claims App.). Appellant makes the same arguments for this claim as made in connection with claim 1 (id. at 13‒15), and we are not persuaded of Examiner error in the rejection of claim 20 for the reasons stated above in connection with claim 1. Claim 23. Claim 23 depends from claim 20 adding that “the first and second coupling portions each comprise the steel.” Appeal Br. 29 (Claims App.). Appellant argues claim 23 is patentable for the same reasons as claim 20 (id. at 15), arguments we find unpersuasive for the same reasons we found the arguments in favor of claim 20 unpersuasive. In addition, Appellant argues that claim 23 is independently patentable, however, Appellant provides no reason to support its argument beyond those advanced in connection with claim 20. Id. at 15–16. Accordingly, we are not persuaded the Examiner erred in rejecting claim 23. Claims 31 and 33. Claims 31 and 33 depend indirectly from claims 1 and 13, respectively. Appeal Br. 31 (Claims App.). Appellant advances the same arguments made in connection with the parent claims, namely that “Watkins is completely silent about the material of the flanges 37 and 38. . . . Deul discloses flanged couplings 36 and 37 and suggests that the couplings 36 and 37 are made from a material other than steel.” Id. at 17. We have already found above that Evans suggests the material selection covered by these claims, and for the reasons stated in connection with claims 1 and 13, we are not persuaded the Examiner erred in rejecting claims 31 and 33. The remaining claims, 4–6, 9, 11, 12, 14, 16, 21, 29, 30, 32, and 34 subject to Rejection 1, fall with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2015-001234 Application 13/257,962 8 Rejection 2. Claims 2, 17, 24, and 27. Appellant makes the same arguments in connection with claims 2, 17, 24, and 27 as made in connection with the claims from which they depend, namely claims 1, 13, and 20. Appeal Br. 17–18. We have already found these arguments unpersuasive of error, and so find no error in the rejection of these claims. Rejection 3. Claims 7, 19, and 22. In addition to incorporating the arguments for the independent claims, which we have already found not persuasive (Appeal Br. 18–19), Appellant argues that claims 7, 19, and 22 should not be rejected because the additional reference relied on, de Saint Palais, teaches an anticorrosion coating on inner and outer polished surfaces of a riser pipe, while the claims at issue call for a corrosion resistant coating on threaded couplings. Appeal Br. 19. Appellant does not explain why it would not have been obvious to apply the anticorrosion coating used on a riser pipe by de Saint Palais to the couplings recited in claims 7, 19, and 22, and we agree with the Examiner that, motivated to avoid corrosion, one of ordinary skill in the art would have added a corrosion resistant coating to the couplings as an obvious improvement. Final Act. 13. Accordingly, we are not persuaded of error in the rejection of claims 7, 19, and 22. Rejection 4. Claim 8. Claim 8 depends from claim 4 and adds the limitation that one of the threaded couplings or mating couplings comprises one or more sacrificial anodes. Appeal Br. 27 (Claims App.). The Examiner rejects this claim on the same combination relied on to reject the claims (1 and 4) from which claim 8 depends, and in addition on Sele’s claim 4. Final Act. 14, Appeal 2015-001234 Application 13/257,962 9 Ans. 12. Sele, claim 4, is directed to a hybrid riser configuration “wherein the riser configuration is protected by sacrificial anodes.” Sele, 6:8–10. The Examiner concludes that, based on Sele, “it is well known in the art of risers to place sacrificial [a]nodes to protect the riser system.” Final Act. 14. Appellant argues that Sele’s quoted statement does not teach coupling portions having sacrificial anodes because it is only a “generic statement”. Appeal Br. 20. We are not persuaded by Appellant’s argument. Corrosion is a well-known problem and constant concern in ocean installations in general and in underwater drilling in particular. See, e.g., Venkataraman 3: 58–67; Sele 3:66–4:1, 4:14–17; Evans 4:4–10; and Deul 2:32–36. It is elementary chemistry that a structure formed of aluminum and steel, submerged in water, will corrode if left unprotected, and a sacrificial anode, as taught by Sele, is an obvious solution. We perceive no error in the rejection of claim 8. Rejection 5. Claim 26. Independent claim 26 covers a mineral extraction system comprising a wellhead, a rig, a drilling riser connected to the wellhead and the rig, the riser comprising a main line and a plurality of auxiliary lines disposed at different angular positions around the circumference of the main line. Appeal Br. 29 (Claims App.). The auxiliary lines have steel coupling portions which are joined with steel flanges on the drilling riser. Id. at 29‒ 30. The Examiner relies on Watkins in combination with Evans and Deul as in the rejection of claim 1, with additional reliance on Venkataraman for its teaching of steel flanges on marine riser joints. Final Act. 15–16; Ans. 13– 14. Appellant repeats his arguments concerning the Watkins/Evans combination that were made in connection with claim 1. Appeal Br. 21‒23. Appeal 2015-001234 Application 13/257,962 10 We are not persuaded by them here for the same reasons as stated above. Appellant also notes that in Evans there are no flanges at all. Id. at 23. However, Deul and Watkins both show risers with flanges to connect joints to each other, and the Examiner’s stated rejection proposed to modify the flanges of Watkins to make them of steel, as taught in Venkatamaran. Final Act. 16. Appellant’s arguments about the lack of flanges in Evans is not responsive to the modification proposed by the Examiner. Further, it would be a mere matter of design choice whether to use flanged coupling or a pinned coupling between auxiliary lines and the riser. In view of the foregoing, we find no error in the rejection of independent claim 26. Rejection 6. Claim 28. Claim 28 depends from claim 1 and adds “at least one of the first or second coupling portions is made of aluminum with the corrosion resistant coating that engages steel of a flange disposed about a main line.” Appeal Br. 30 (Claims App.). The Examiner rejects claim 28 on the same combination of Watkins, Evans, and Deul as applied to claim 1. Final Act. 16‒17; Answer 14‒15. In addition, the Examiner relies on de Saint Palais for its teaching of providing corrosion resistant coatings in mineral extraction systems (citing 2:37–39). The Examiner further relies on Venkataraman for his disclosure of marine riser joints that have steel flanges (citing Figure 3, #102). Id. Appellant repeats the arguments made in connection with claim 1, and further argues that de Saint Palais only teaches that an upper and lower section of the riser pipe has polished inner and outer surfaces that are provided with anticorrosion coating. Appeal Br. 24. This teaching is argued not sufficient to suggest to one of ordinary skill in the art coupling portions Appeal 2015-001234 Application 13/257,962 11 having a corrosion resistant coating, much less coupling portions having a corrosion resistant coating that are configured to engage with the steel flange. Without an explanation supporting this argument, and for reasons similar to those set forth above in our analysis of rejection 3, we are not persuaded that the Examiner erred by rejecting to reject claim 28 as being obvious to one of ordinary skill in the art. DECISION For the above reasons, the Examiner’s rejection of claims 1, 2, 4, 6–9, 11–14, 16–24, and 26–34 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation