Ex parte Welker

Board of Patent Appeals and Interferences

Jan 6, 1999

08425261 (B.P.A.I. Jan. 6, 1999)

Application for patent filed April 18, 1995. According1
to appellant this application is a continuation of Application
No. 08/136,374, filed October 15, 1993, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT H. WELKER
____________
Appeal No. 96-4197
Application No. 08/425,2611
____________
ON BRIEF
____________
Before URYNOWICZ, JERRY SMITH, and FLEMING, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-4197
Application No. 08/425,261
In a July 14, 1995 amendment, applicant cancels claims2
12-18 and adds 11 additional claims numbered 17 through 27.
The Examiner has renumbered claims 17 through 27 to claims 19
through 29 respectively. We note that Appellant has provided
in the appendix claims 17 through 27. We have renumbered
these claims as claims 19 through 29 respectively to
accurately reflect the claims in the record.
2
This is a decision on appeal from the final rejection of
claims 19 through 29, all of the claims pending in the2
application. Claims 1 through 18 have been canceled.
Appeal No. 96-4197
Application No. 08/425,261
The invention relates to an insertion device used to
insert a measuring instrument or sensor into a pipeline. More
particularly, the invention relates to an insertion device
that is able to power the insertion rod without extending the
height of the structure. Appellant discloses on page 2 of the
specification that the invention provides a folded structure.
The folded structure assures the positioning of the power
cylinders parallel and adjacent to the insertion rod rather
than the prior art which positions the power cylinder axially
aligned with the insertion rod. On pages 4 and 5 of the
specification, Appellant discloses that Figure 1 shows the
invention in sectional view. In particular, Figure 1 shows
the insertion apparatus 10 having the hydraulic cylinders 25
parallel and adjacent to the insertion rod 21 such that the
insertion apparatus is able to power the insertion rod without
extending the height of the structure.
The independent claims 19 and 22 are reproduced as
follows:
19. A method of inserting a measuring instrument into
the central portions of a pipeline to thereby measure
aspects of fluid flow through the pipeline, and including
the steps of:
(a) positioning a measuring instrument on an end of
an insertion rod;
(b) positioning the insertion rod through a
stuffing assembly so that the end thereof is moveable
into or away from the interior of the pipeline;

3
(c) applying a force to a second end of said rod
wherein the second end is on the exterior of the pipeline so
that the second end is forced toward the pipeline to achieve
insertion into the pipeline;
(d) utilizing line pressure to form a pressurized
fluid applied to a motive means to thereby force movement of
said rod; and
(e) wherein the step of applying a force to the
second end of said rod is accomplished laterally of said rod
which precludes extending beyond said rod.
22. A pipeline insertion apparatus for making
measurements of conditions in a pipeline by inserting a
measuring mechanism through a stuffing assembly and blocking
valve extending outwardly from and in communication with the
pipeline and positioning the measuring mechanism at a
desired location within the cross sectional area of the
pipeline, the apparatus comprising:
(a) a laterally extending mounting member fixedly
attached to the stuffing assembly and blocking valve, the
mounting member having two opposing ends;
(b) an elongate insertion rod in sliding engagement
relative to said laterally extending mounting member having
Appeal No. 96-4197
Application No. 08/425,261
4
a measuring end and a distal end, the insertion rod being
axially aligned for insertion of the measuring end into the
pipeline through said extending mounting member, the
stuffing assembly, and the blocking valve, wherein the
measuring end is capable of supporting a measuring
mechanism;
(c) a laterally extending yoke connected with the
distal end of the insertion rod having two opposing ends
aligned with the opposing ends of said mounting member;
(d) a pair of parallel hydraulic cylinders, each
hydraulic cylinder having an elongate cylinder body
extending toward the pipeline adjacent to and aligned at the
side of the stuffing assembly and blocking valve, a piston
movably located in each of said cylinders, and a piston rod
extending from said piston for connection to relatively move
said yoke with respect to said mounting member wherein the
pipeline insertion apparatus extends from the pipeline
parallel to the insertion rod, and wherein the application
of pressurized fluid to the piston moves the piston rod to
move said yoke towards or away from the pipeline to insert
or retract the measuring end of the insertion rod into the
pipeline wherein the pair of hydraulic cylinders operate
jointly in response to a common pressurized fluid system to
provide movement of the rod without bending from said pair
of cylinders to the side of the stuffing assembly.
The Examiner relies on the following references:
Welker 4,387,592 Jun. 14,
1983
Kamrat 5,009,113 Apr. 23,
1991
Claims 19 through 29 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kamrat in view of Welker.
Rather than reiterate the arguments of Appellant and the
Appeal No. 96-4197
Application No. 08/425,261
The Examiner mailed a corrected Examiner's answer on 3
June 26, 1996, which we will refer to simply as the answer.
5
Examiner, reference is made to the brief and answer for the3
respective details thereof.
OPINION
We will not sustain the rejection of claims 19 through 29
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
Appeal No. 96-4197
Application No. 08/425,261
6
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appellant argues on pages 10 through 17 of the brief that
Kamrat and Welker, together or individually, fail to teach or
suggest applying a force lateral to the end of the insertion
rod which precludes extending beyond the insertion rod as
recited in claims 19 through 21 or a pair of parallel
hydraulic cylinders, each hydraulic cylinder extending toward
the pipe adjacent to and aligned at the side of the stuffing
assembly and blocking valve as recited in claims 22 through
29.
The Examiner argues on page 4 of the answer that it would
have been obvious to those skilled in the art to replace the
Kamrat threaded bars with two of the hydraulic cylinders of
Appeal No. 96-4197
Application No. 08/425,261
7
Welker such that the hydraulic cylinders are fully lateral to
the
Appeal No. 96-4197
Application No. 08/425,261
8
insertion rods to obtain Appellant’s invention as recited in
the claims. The Examiner further states that the other
details of the hydraulic system recited in the dependent
claims are all obvious for these kinds of systems. The
Examiner offer no showing of evidence to support the
Examiner's conclusions.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg., 73 F.3d at
1087, 37 USPQ2d at 1239, citing W. L. Gore, 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
On page 4 of the answer, the Examiner reasons that it
would have been obvious to those skilled in the art to make
the Examiner's proposed modification because hydraulic motive
means are the state of the art for force/pressure applications
Appeal No. 96-4197
Application No. 08/425,261
9
and provide automatic controlled operations without human
muscular force. Even if we agree with the Examiner's
rationale, we are then only left with reasons to substitute
the Welker probe insertion apparatus for the Kamrat device.
The Examiner has not offered any reason to modify the Kamrat
device in which the threaded bars 7 shown in figure 1 are
replaced with two hydraulic cylinders. Furthermore, the
Examiner has not offered any reason to modify the Kamrat
device further by redesigning the fastening means such that
the hydraulic cylinders are positioned adjacent to and offset
to the side of the stuffing and blocking value so that force
is precluded to extend beyond the insertion rod.
Upon a careful review of Kamrat and Welker, we fail to
find that either one of these references recognizes the
problem of providing the insertion power to the insertion rod
without extending the height of the structure. Furthermore,
we fail to find any suggestion or desirability disclosed other
than what is provided by Appellant's specification.
Therefore, we find that the Examiner has failed to establish
that the prior art suggested the desirability of the
modification as proposed in the rejection.
Appeal No. 96-4197
Application No. 08/425,261
10
Appeal No. 96-4197
Application No. 08/425,261
11
We have not sustained the rejection of claims 19 through
29 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-4197
Application No. 08/425,261
12
Donald Gunn
Gunn & Associates, P.C.
Five Greenway Plaza, Suite 2900
Houston, TX 77046
Shereece
Appeal No. 96-4197
Application No. 08/425,261
APJ FLEMING
APJ SMITH
APJ URYNOWICZ
REVERSED
Prepared: September 24, 1999