ArcelorMittal Tubular Products Luxembourg S.A.

Patent Trials and Appeals Board

Jun 15, 2020

2019006784 (P.T.A.B. Jun. 15, 2020)

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.
15/449,350 03/03/2017 Merle E. Evans 632.1003 9357
23280 7590 06/15/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MERLE E. EVANS and
JEROEN STIJN JULIAAN VAN WITTENBERGHE
____________

Appeal 2019-006784
Application 15/449,350
Technology Center 3600
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision objecting to Appellant’s amendment, filed Feb. 13, 2018 under 35
U.S.C. § 132(a), for introducing new matter into the disclosure, and rejecting
claims 16–24 under 35 U.S.C. § 112(a) for failing to comply with the written

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. ArcelorMittal Tubular Products Luxembourg S.A. is
identified as the real party in interest in Appellant’s Appeal Brief (filed June
11, 2019, hereinafter “Appeal Br.”) 2.
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Application 15/449,350

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description requirement.2,3 Final Action (dated June 13, 2018, hereinafter
“Final Act.”) 2–3. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates to “threaded pipes and connectors for
such pipes which may be used in the oil and natural gas industry.” Spec.
para. 1.4
Claim 16, the sole independent claim, is representative of the claimed
invention and reads as follows:
16. A threaded tubular connection comprising:
a pin, the pin having external threads, a concave pin seal
surface, and a pin torque shoulder at a free end; and
a box for receiving the pin, the box having internal
threads for interacting with the external threads, a convex box
seal surface contacting the concave pin seal surface and a box
torque shoulder for contacting the pin torque shoulder,
the pin and box defining a longitudinal axis,
the pin torque shoulder having at least one pin shoulder
surface having a pin radius, the at least one pin shoulder surface
being curved with respect to the longitudinal axis,

2 Claims 1–15 and 25–28 are canceled. Appeal Br. 2.
3 The rejection of claims 16–24 under 35 U.S.C. § 103 as being unpatentable
over Matsuki (US 3,870,351, issued Mar. 11, 1975) has been withdrawn.
Examiner’s Answer (dated July 22, 2019, hereinafter “Ans.”); Final Act. 4–
8.
4 We refer to the Substitute Specification filed Apr. 28, 2017.
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the box torque shoulder having at least one box shoulder
surface having a box radius, the at least one box shoulder
surface being curved with respect to the longitudinal axis.

ANALYSIS
Appellant does not present arguments for the patentability of claims
17–24 apart from claim 16. See Appeal Br. 3–4. Therefore, in accordance
with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 16 as the representative
claim to decide the appeal of the rejection of these claims, with claims 17–
24 standing or falling with claim 16.
The Examiner finds that Appellant’s original disclosure does not
support the limitations of “a concave pin seal surface” and “a convex box
seal surface,” as recited in claim 16. According to the Examiner, Appellant
elected to prosecute the embodiment illustrated in Figure 8 of the Drawings,
in which (1) “the seal surfaces are not even identified” and (2) “it is
impossible to discern . . . whether the pin seal surface is concave, convex,
frusto-conical or tapered, and likewise whether the box seal surface is
convex, concave, frusto-conical or tapered.” Advisory Action (dated Jan.
25, 2019, hereinafter Adv. Act.”) 2. The Examiner further notes that “there
is nothing in the [S]pecification which describes the shape or configuration
of the seal surfaces.” Id.
In response, Appellant provides annotated Figures 1A and 8 of the
Drawings as shown below:
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Appellant’s annotated Figure 1A of the Drawings illustrates “straight frusto-
conical [pin and box] seal surfaces” 1424, 1524. Reply Brief (filed Sept. 17,
2019, hereinafter “Reply Br.”) 3.

Appellant’s annotated Figure 8 of the Drawings illustrates a “convex box
seal surface” and “concave pin seal surface.” Appeal Br. 4. Thus, according
to Appellant, “Fig. 8 clearly shows the pin seal surface being concave and
the box seal surface being convex” and in conjunction with paragraph 34 of
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the Specification “describe pin 20 and box 120 similarly to . . . Fig. 2A with
pin seal surface 24 and box seal surface 124.” Id.; Reply Br. 2.
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Here, we agree with the
Examiner “there is nothing in the [S]pecification which describes the shape
or configuration of the seal surfaces.” Ans. 4. At best, the Specification
describes pin seal surface 24 and box seal surface 124 generically as
surfaces that are forced together to come into contact, i.e., wedged. See
Spec. Abstract, paras. 20, 22, 25, 26, 28. Paragraph 34 of the Specification,
to which Appellant cites to as support, refers to pin and box torque shoulders
26, 126 and does not mention in any manner the shape or configuration of
pin and box seal surfaces 24, 124. Hence, Appellant’s Specification
provides no details on the shape or configuration of pin seal surface 24 and
box seal surface 124, as recited by claim 16.
As to Appellant’s Drawings, we note that consistent with the
description in the Specification, at least each of Figures 2A, 3A, 5A, and 7
illustrates pin seal surface 24 and box seal surface 124 as contacting
surfaces. We appreciate that “drawings alone may be sufficient to provide
the ‘written description of the invention’ required by § 112, first paragraph.”
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
However, in this case, we agree with the Examiner that “it is unclear” to a
person of ordinary skill in the art, when viewing Appellant’s Figures 2A and
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8, that pin and box seal surfaces 24, 124 are concave and convex,
respectively. Ans. 4. In other words, a skilled artisan would not reasonably
observe from Appellant’s Figures 2A and 8 that contacting pin and box seal
surfaces 24, 124 are concave and convex, respectively. Moreover, we do not
discern any substantial visible difference in the contacting “straight” frusto-
conical sealing surfaces illustrated in Appellant’s Figure 1A and sealing
surfaces 24, 124 in Figure 8.
As such, for the foregoing reasons, we agree with the Examiner’s
conclusion that Appellant’s original disclosure does not reasonably convey
to those skilled in the art that Appellant had possession of the subject matter
of claim 16 as of the filing date of the present application. Accordingly, we
sustain the rejection of claim 16 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Claims 17–24
fall with claim 16.
The Examiner also objected under 35 U.S.C. § 132(a) to an
amendment to the Specification filed on Feb. 13, 2018 on the ground that the
amendment introduced new matter into the original disclosure. Final Act. 2.
Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181
and a rejection is appealable to the Patent Trial and Appeal Board. When
the issue of new matter presented is the subject of both an objection and a
rejection, however, the issue is appealable. Manual of Patent Examining
Procedure (MPEP) § 2163.06, II. Review of New Matter Objections And/Or
Rejections (9th Ed., Rev. 8, January 2018). See also MPEP § 608.04(c)
(“where the alleged new matter is introduced into or affects the claims, thus
necessitating their rejection on this ground, the question becomes an
appealable one, and should not be considered on petition even though that
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new matter has been introduced into the specification also.”). To the extent
that the objection to the Specification in the Final Rejection turns on the
same issues as the rejection under 35 U.S.C. § 112(a), our decision with
respect to the rejection is dispositive as to the corresponding objection.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
16–24 112(a) Written
Description
16–24

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