3X Engineering

Patent Trials and Appeals Board

Aug 27, 2020

15703405 - (D) (P.T.A.B. Aug. 27, 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.
15/703,405 09/13/2017 Stanislas BOULET D'AURIA 3X-004-A 7950
32954 7590 08/27/2020
JAMES C. LYDON
P.O. Box 1406
North Springfield, VA 22151
EXAMINER
NGUYEN, XUAN LAN T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
jclydon@lydonipservices.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STANISLAS BOULET D’AURIA
Appeal 2019-005758
Application 15/703,405
Technology Center 3600
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, 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 12 and 15–17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as 3X
Engineering. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a device for protecting
mechanical parts likely to be exposed to a force, friction or vibrations.”
Spec. 1:4–5. Claim 12, reproduced below, is representative of the claimed
subject matter:
12. A system for bearing a pipeline, comprising
a support (20) for a pipe, and
a protective device (10) adapted to be placed between
said support (20) and said pipe, wherein said protective device
(10) comprises
a flexible area (12) including at least one woven layer,
and
at least one row of rectilinear pads (14) in direct contact
with said support, said row comprising a plurality of pads
(14-1, 14-2, 14-3) made of a plastic material, which are rigidly
connected to said flexible area and which are more rigid than
said flexible area,
wherein said pads (14-1, 14-2, 14-3) are rectangular in
shape, such that said pads (14-1, 14-2, 14-3) have a width
between 10 and 30 mm, and a length between 10 mm and 30
mm.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Muszynski US 5,069,255 Dec. 3, 1991
Obeshaw US 6,821,638 B2 Nov. 23, 2004
Henderson US 8,287,684 B2 Oct. 16, 2012
REJECTIONS
Claims 12 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Muszynski.
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Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Muszynski and Obeshaw.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Muszynski and Henderson.
OPINION
Obviousness—Muszynski
The Examiner finds that Muszynski discloses a system for bearing a
pipeline substantially as recited in claim 12, including, in pertinent part, a
protective device (insulator 1) including at least one flexible area (belt 10)
and at least one row of rectilinear pads (runners 20–34), wherein the pads
(runners) are rectangular in shape and have a width of 25.4 mm, which falls
within the claimed range of between 20 and 30 mm. Final Act. 2–3.
Muszynski discloses that, preferably, the runners are about 30.48 cm
long, which is about ten times the 30 mm upper end of the pad length range
recited in claim 1. Muszynski 3:64–67; Claims App. A-1. Muszynski
teaches that the dimensions of the sheet and runners set forth at the bottom
of column 3 “are preferred for the sake of economy of material and to allow
the formed casing insulator [to] be used with a variety of pipe and casing
sizes.” Id. 3:62–4:2. The Examiner notes that Muszynski teaches “that the
system is to be cut to size in the field” and determines it would have been
obvious “to have applied the teaching of Muszynski to cut the length of the
system to between 10mm to 30mm in order to fit a certain pipe and support
in the field.” Final Act. 3 (citing Muszynski 3:56–57).
Appellant notes that Muszynski “does not include any guidance as to
how the dimensions of its pipeline casing insulator may be reduced or
increased” and that “[t]here is no guidance given with respect to whether the
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width, height or length, or some combination of dimensions, should be
changed to accommodate a given pipe and casing combination.” Appeal
Br. 8–9. In particular, Appellant submits that “there is no teaching or
suggestion that the preferred length of Muszynski’s elongated runners
should be reduced by 90% from 30.48 cm down to 3 cm.” Id. at 9
(underlining omitted).
Despite acknowledging that Muszynski does not provide specific
guidance as to how the insulator would or should be cut in the field,
Appellant asserts a Declaration by inventor Stanislas Boulet D’Auria dated
July 20, 2019 (hereinafter “D’Auria Declaration” or “D’Auria Decl.”) in
support of the contention that those skilled in the art would change the space
between the runners or the width of the runners to adapt Muszynski’s
insulator to a different pipe radius and would change the thickness of the
runners to adapt the insulator to a different casing radius, but would not
change the length of the runners to that claimed. Appeal Br. 10–12 (citing
D’Auria Decl. ¶¶ 12, 13, 15–18). According to Appellant, “those skilled in
the art would not change Muszynski’s elongated runners to the much shorter
pads of the claimed system because such modification would eliminate an
advantage of Muszynski’s casing insulator.” Id. at 11 (underlining omitted).
In particular, Appellant contends that having elongated runners that are
much longer than they are wide “helps efficiently wrap Muszynski’s flexible
belt around the pipe’s outer surface because the elongated runner’s long
length allows easy positioning of the flexible belt parallel to the pipe’s
longitudinal axis” so “that no portion of the wrapped casing insulator
overlaps itself.” Id. (underlining omitted); see D’Auria Decl. ¶ 15.
Appellant also argues that shortening Muszynski’s runners to form pads with
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dimensions as recited in claim 12 would cause Muszynski’s belt to have
“several possible bending directions rather than a single preferred bending
direction,” which “means the flexible belt could be positioned around the
pipe in a different direction than parallel to the pipe’s longitudinal axis,
[such that] the wrapped belt would not perfectly cover the pipe’s surface
with no overlapping belt material.” Id. at 11–12 (citing D’Auria Decl.
¶¶ 15–18).
Appellant’s arguments, and the corresponding averments in the
D’Auria Declaration, regarding the need to use runners that are significantly
longer than they are wide in order to facilitate wrapping the belt around a
pipe with runners extending parallel to the longitudinal axis of the pipe
strike us as speculative. Muszynski gives no indication that wrapping the
belt with the runners extending parallel to the pipe’s longitudinal axis is
critical to the operation of the insulator, nor does Muszynski mention any
concern about a preferred bending direction or limiting the number of
bending directions. The purpose of Muszynski’s insulator is to “support[] a
coated pipe within a tubular metallic casing to electrically insulate the pipe
from the tubular casing and to prevent damage to the coated surface of the
pipe when the pipe is installed within the casing.” Muszynski 1:9–11.
Muszynski’s insulator performs this function by forming an intervening
layer between the casing and the pipe to separate the pipe from the casing.
Appellant does not persuasively explain why the runners must run perfectly
parallel to the longitudinal axis to achieve this objective. Further, to the
extent that extending Muszynski’s runners parallel to the pipe’s longitudinal
axis is necessary to avoid interference with preferred bending directions,
Appellant does not persuasively establish that proper positioning of the
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insulators with the runners extending parallel to the pipe’s longitudinal axis
would be uniquely challenging to a person having ordinary skill in the art if
the runners were shorter.
Appellant also fails to persuade us that runners having a length much
longer than their width is necessary to facilitate wrapping Muszynski’s belt
around the pipe without overlapping of the material. A person having
ordinary skill in the art would appreciate that Muszynski’s belt could be cut
along a direction parallel to the length of the runners (to reduce the 13.7 m
length dimension of the belt) to match the circumference of the pipe about
which it is to be wrapped. We do not find, and Appellant does not direct our
attention to, any teaching in Muszynski that the belt can be cut in only one
direction.
Moreover, the Examiner finds that Appellant has not established that
the claimed length “is a critical aspect of the invention” or serves any stated
purpose. Ans. 4. Appellant does not dispute this finding, nor does
Appellant assert, much less offer objective evidence or persuasive technical
reasoning to show, that the claimed dimensions (particularly the length) of
the pads is critical or solves any stated problem. With respect to the
dimensions of the pads, Appellant’s Specification discloses that, “[i]n some
embodiments, the pads have a width between 20 mm and 30 mm and a
length between 10 mm and 30 mm” and that, “[a]ccording to particular
embodiments of the invention, the pads . . . are rectangular and particularly
square in shape.” Spec. 2:18–19; 4:18–20. The Specification states that
“[p]referably, the pads are between 5 mm and 10 mm thick, 20 mm to
30 mm wide and 10 mm to 30 mm long,” but does not offer any reason for
this preference or any suggestion as to why a square shape would be
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important. Id. 4:20–21. In short, we do not find, nor does Appellant direct
our attention to, any disclosure in Appellant’s Specification as to why the
disclosed and claimed widths and lengths of the pads are critical or serve any
stated purpose.
The following quotation from In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990), is applicable here:
The law is replete with cases in which the difference
between the claimed invention and the prior art is some range
or other variable within the claims. [citations omitted] These
cases have consistently held that in such a situation, the
applicant must show that the particular range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range.

In this case, in failing to even allege, much less show, that the claimed
range of pad length is critical, Appellant fails to establish a patentable
distinction between the claimed system and Muszynski’s casing insulator.
Thus, Appellant fails to apprise us of error in the Examiner’s conclusion that
the subject matter of claim 12 would have been obvious. Accordingly, we
sustain the rejection of claim 12, as well as claim 15, for which Appellant
does not present any separate arguments, as unpatentable over Muszynski.
Obviousness—Muszynski and Obeshaw or Henderson
In contesting the rejections of claims 16 and 17, Appellant relies
primarily on the arguments asserted against the rejection of claim 12 and
submits that Obeshaw and Henderson do not remedy the purported
deficiencies of Muszynski. Appeal Br. 14–15. For the reasons discussed
above, Appellant’s arguments do not apprise us of error in the rejection of
claim 12 and, likewise, fail to apprise us of error in the rejections of claims
16 and 17. Accordingly, we sustain the rejection of claim 16 as unpatentable
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over Muszynski and Obeshaw and the rejection of claim 17 as unpatentable
over Muszynski and Henderson.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 15 103(a) Muszynski 12, 15
16 103(a) Muszynski, Obeshaw 16
17 103(a) Muszynski, Henderson 17
Overall
Outcome
12, 15–17
TIME PERIOD FOR RESPONSE
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