SERIMAX HOLDINGS

Patent Trials and Appeals Board

Feb 17, 2021

2020005242 (P.T.A.B. Feb. 17, 2021)

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.
15/045,310 02/17/2016 Phil Bond 466817US41 5655
22850 7590 02/17/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
KITT, STEPHEN A
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
02/17/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHIL BOND,
CARL VINCENT, and TERENCE COTTRELL
Appeal 2020-005242
Application 15/045,310
Technology Center 1700

Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 9–11, 16, and 17. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Serimax Holdings. Appeal Br. 1.
Appeal 2020-005242
Application 15/045,310
2
CLAIMED SUBJECT MATTER
The claims are directed to a coating apparatus (see, e.g., claim 1) and
an assembly comprising the coating apparatus (see, e.g., claim 9). The
apparatus is especially useful for coating girth welds on oil and gas pipelines
on-site where the pipeline is laid. Spec. 1:1–7. It does so by spraying a
calibrated amount of coating material through a nozzle tip as the carriage of
the apparatus rotates around the pipe. Spec. 2:6–15.
According to the Specification, spray coating devices that rotate
around a pipe to spray coat the circumference of the pipe were known in the
art. Spec. 1:8–22 (discussing GB 2285592 and GB 2370800). Appellant’s
spray coating device includes a delivery head with a nozzle tip mounted
some distance from the rotating carriage. See, e.g., Fig. 1 (showing arm 15
separating delivery head 14 from carriage 8); Fig. 2 (showing the
components of arm 15 as including spray arm 24, upstand arm 23, and
strengthening arm 25); Spec. 8:13–22. The Specification describes spray arm
24 as “long enough to prevent the vortex created by the motion of the
motorized carriage along the guiding ring [from modifying] the calibrated
spray fan of the delivery head.” Spec. 9:13–15.
In this appeal, we will concentrate on the spacing of the delivery head
from the carriage as recited in claim 1. We reproduce claim 1, the only
independent claim, with the limitation at issue italicized:
1. A coating apparatus comprising:
a carriage configured to be mounted on a guiding ring,
the guiding ring being mounted on a tubular article to be
coated,
drive means for driving the carriage along the guiding
ring,
Appeal 2020-005242
Application 15/045,310
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at least one delivery head having a nozzle tip, the
delivery head being mounted on the carriage for applying a
coating to an article, wherein the delivery head is spaced from
any part of the carriage in a direction of the length of the
tubular article when the carriage is mounted on the guiding ring
by a distance sufficient that any air disturbance created by the
motion of the carriage along the guiding ring will not modify
the calibrated spray fan sprayed from the nozzle tip,
a supply reservoir of coating material and a
communication hose communicating between a supply port of
the reservoir and the delivery head such that, as the carriage is
rotated by the drive means, a supply of coating material is
provided to the delivery head and is sprayed from the nozzle tip
as a calibrated spray fan, to enable a coating to be applied to the
tubular article,
wherein the drive means comprises a motor, the motor
being enclosed into the carnage;
the carriage comprising:
adjustable means to be detachably mounted on the
guiding ring,
a roller, to help the running of the carriage along the
guiding ring, the roller acting either directly against the tubular
article or against the guiding ring itself, and a locker to adjust a
roller location in order to allow removal of the carriage from
the guiding ring
Appeal Br. 11 (emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Thompson US 4,205,694 June 3, 1980
Daykin US 6,881,266 B1 Apr. 19, 2005
Leiden US 2013/0214034 A1 Aug. 22, 2013

Appeal 2020-005242
Application 15/045,310
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REJECTIONS
Claims 1–3, 6–9, 11, 16, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Leiden in view of Thompson. Final Act. 2.
Claims 4, 5, and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Leiden and Thompson, and further in view of Daykin.
Final Act. 6.
OPINION
We agree with Appellant that the Examiner reversibly erred in finding
a reason to combine the teachings of Leiden and Thompson to achieve a
coating apparatus meeting claim 1’s spacing limitation. Thus, we reverse the
Examiner’s rejection.
Leiden teaches a coating apparatus that applies a polymer melt to a
pipe through a flat die (die 3 in Figs. 1–2). The Examiner finds that Leiden’s
flat die 3 is a nozzle assembly, but acknowledges that die 3 is not spaced
from the carriage as required by claim 1. Final Act. 2–3. To remedy this
deficiency, the Examiner turns to Thompson, finding that Thompson
“discloses a similar apparatus for spraying along a pipe in which a nozzle
(18) is provided on an arm (16) that extends away from a cage (12) serving
as the carriage in the length direction of the pipe jacket (14).” Final Act. 3.
Based on these findings, the Examiner concludes that it would have been
obvious for one of ordinary skill in the art to have spaced away the die 3 of
Leiden on an extending arm as taught by Thompson because Thompson
“teaches that this allows the nozzle to spray on the area on which the
carriage contacts the pipe after it has moved past that area, which ensures
that the area contacted by the carriage can be adequately coated or cleaned
(col. 6 lines 13-19).” Final Act. 3–4.
Appeal 2020-005242
Application 15/045,310
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We agree with Appellant that the Examiner’s finding of a reason for
making the modification to Leiden is not sufficiently supported by evidence
or technical reasoning. Appeal Br. 6; Reply Br. 3–4 (¶¶ 2 and 3).
Although Thompson discloses an apparatus with a spray head with a
nozzle tip (cleaning head 18) axially spaced from a carriage (cage 12),
Thompson’s apparatus is for a different use. It is constructed to descale and
clean the vertically disposed jackets of an off-shore oil rig or other off-shore
pipes. Thompson col. 2, ll. 36–40. It does so by forcing a jet of pressurized
water or cleaning fluid through a nozzle. Thompson col. 6, ll. 13–27.
Thompson’s nozzle is different from Leiden’s die. This is so even though
Leiden uses the word “nozzle.” Leiden uses the word “nozzle” to refer to a
flat die that extrudes polymer melt, see, e.g., Leiden ¶ 32, and not to a nozzle
that produces a jet of water or cleaning liquid. Evidence that the ordinary
artisan would have relied on the teachings of Thompson to reposition
Leiden’s die is lacking, as is evidence that the ordinary artisan would have
placed a coating nozzle a distance sufficient to preclude air disturbances
created by carriage movement in Leiden. The Examiner has not provided
sufficient evidence or technical reasoning to bridge the gap between the
teachings in a way that supports a finding that there is a suggestion within
the art to modify Leiden’s die coating apparatus with the extending arm 16
of Thompson such that the ordinary artisan would arrive at the structure
required by claim 1.
CONCLUSION
The Examiner’s decision to reject claims 1–6, 9–11, 16, and 17 is
REVERSED.
Appeal 2020-005242
Application 15/045,310
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–9,
11, 16, 17
103 Leiden, Thompson 1–3, 6–9,
11, 16, 17
4, 5, 10 103 Leiden, Thompson,
Daykin
4, 5, 10
Overall
Outcome
1–11, 16, 17

REVERSED