David Hill et al.

Patent Trials and Appeals Board

Jul 7, 2020

13059795 - (D) (P.T.A.B. Jul. 7, 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.
13/059,795 02/18/2011 David John Hill 11-373 2955
20306 7590 07/07/2020
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
HULKA, JAMES R
ART UNIT PAPER NUMBER
3645
MAIL DATE DELIVERY MODE
07/07/2020 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 DAVID JOHN HILL and MAGNUS McEWEN-KING

Appeal 2020-000149
Application 13/059,795
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 12. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
According to Appellant, “[t]he present invention relates to conduit
monitoring and inspection, and more particularly to subterranean pipeline
monitoring.” Spec. 1.

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
“OPTASENSE HOLDINGS LIMITED.” Appeal Br. 1.
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CLAIMS
Claims 1 and 12 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A method for monitoring a fluid carrying conduit
comprising a pipeline the method comprising the steps of:
interrogating an optic fibre positioned along the path of
said conduit to provide distributed acoustic sensing;
passing a pig through the pipeline, the pig generating
(inducing) at least one acoustic pulse as it passes through the
pipeline;
measuring by distributed acoustic sensing the response to
said at least one acoustic pulse at each of a plurality of discrete
longitudinal sensing portions; and
deriving from said plurality of measurements a conduit
condition profile.
Appeal Br. 13.
REJECTIONS
1. The Examiner rejects claims 1–7 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Weir2 in view of Brown.3
2. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Brown and Hayward.4
3. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Brown and Li.5

2 Weir, US 4,747,309, iss. May 31, 1988.
3 Brown et al., US 5,549,000, iss. Aug. 27, 1996.
4 Hayward et al., US 2008/0088846 A1, pub. Apr. 17, 2008.
5 Li et al., “Recent applications of fiber optic sensors to health monitoring in
civil engineering,” Engineering Structures, 2004.
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4. The Examiner rejects claims 1–7 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Weir in view of Russell.6
5. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Russell and Hayward.
6. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Russell and Li.
7. The Examiner rejects claims 1–7 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Weir in view of Short.7
8. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Short and Hayward.
9. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Short and Li.
10. The Examiner rejects claims 1–7 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Weir in view of Marsh.8
11. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Marsh and Hayward.
12. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Weir in view of Marsh and Li.
DISCUSSION
As an initial matter, we note that we previously issued a decision with
respect to this application. Decision, mailed June 21, 2017. In that decision
we did not sustain the Examiner’s rejections of the claims, including an

6 Russell et al., GB 2394549 A, pub. Apr. 28, 2004.
7 Short et al., GB 2305989 A, pub. Apr. 23, 1997.
8 Marsh et al., US 4,541,278, iss. Sept. 17, 1985.
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anticipation rejection of the independent claims. The independent claims
have not been amended since our previous decision was issued.
We are persuaded in the current appeal by Appellant’s argument that
the Examiner has not established that the proposed combinations would
result in a method or apparatus claimed.
With respect to independent claims 1 and 12 and Weir, the Examiner
finds:
Regarding Claims 1 and 12, Weir teaches a method and
apparatus for monitoring a fluid carrying conduit comprising:
interrogating an optic fiber [6 of Fig. 1; Col 2 Lines 40-45]
positioned along the path of said conduit to provide distributed
acoustic sensing; passing a pig through the pipeline, measuring
by distributed acoustic sensing the response to said acoustic
pulse at each of a plurality of discrete longitudinal sensing
portions [Abstract, Col. 3 Lines 10-20].; and deriving from said
plurality of measurements a conduit condition profile [Col. 1
Lines 40-60]. Weir implies, but does not explicitly teach the pig
generating at least one acoustic pulse as is passes through said
pipeline [Col. 2 Lines 50-60].
Final Act. 2 (brackets in original). These findings are the same for each of
the rejections of the independent claims on appeal. See id. at 4, 6–8. These
findings are also substantially similar to those addressed in our prior
Decision except that the Examiner acknowledges that Weir does not
expressly disclose that the pig generates at least one acoustic pulse. See
Decision 3.
The Examiner next relies on either Brown, Russell, Short, or Marsh as
teaching “the pig generating at least one acoustic pulse as it passes through
said pipeline.” Final Act. 2, 4, 6, 8. For each rejection, the Examiner
concludes that:
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It would have been obvious to modify the system and method of
Weir to pass a pig through a pipeline to generate an acoustic
pulse, and to use the pulse(s) generated by the pig to determine
speed, movement, or location of the pig, and detect flaws in the
pipeline by using sensors at different points along the pipeline to
monitor for flaws, cracks, or leaks.
Id. Further, the Examiner asserts that our previous decision found that “the
only thing that was not explicitly disclosed in primary reference Weir was
that the ‘pig is used to generate an acoustic signal’ as required by the
claim[s], thus requiring that the pig used in the pipeline be used as a
deliberate source of sound.” Ans. 3. The Examiner states that the Final
Action “included 4 separate secondary reference [sic] that each teach the
limitation . . . not explicitly disclosed in Weir.” Id.
In our previous decision, we determined that Weir does not disclose a
method as in claim 1 and that the Examiner failed to “point to any disclosure
in Weir indicating that a pig is used to generate an acoustic signal as
required by the claim, i.e., as a source of an acoustic pulse that is then used
to derive a conduit condition profile.” Decision 5. We did not, contrary to
the Examiner’s assertion noted above, find that the only element missing
from Weir was a pig used to generate an acoustic signal. And with respect
to claim 12, we determined that the Examiner had not established that Weir
discloses either “an optic fibre interrogator” or “a processor” as required by
the claim. Id. at 5–6.
With respect to claim 1 in the current appeal, we determine that each
of the rejections fails to explain adequately how the proposed combination
would result in a method as claimed. Specifically, Weir discloses a system
in which faults in a pipeline “may be determined by causing one or more
carrier signals to pass through one or more linear microphones in opposite
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directions and determining the time lag necessary to produce an optimum
correlation of the signal modulations produced in each direction,” and the
position of a fault may be calculated based on the time lag and speed of
propagation of the carrier signal. Weir col. 1, ll. 53–60. Thus, Weir
discloses a method in which faults are determined by passing a wave
through the elongated member of a linear microphone. See id. at col. 1,
ll. 47–52. The rejections of claim 1 do not explain how Weir’s system
would work with the presence of a pig used to generate an acoustic pulse
and it is not readily apparent without such explanation what modifications
would be required to use a pig as the source of an acoustic pulse that would
or could be measured by Weir’s linear microphones to determine the
location of a fault in a pipeline.
We note that the Examiner explains how each secondary reference
cited provides a teaching regarding using a pig to generate an acoustic pulse
that may be used to determine the physical condition of a pipeline. Ans. 3–
5. However, the Examiner does not explain how Weir would or could be
modified based on the teachings of each reference to teach the claimed
method, and without such explanation it is not clear whether one of ordinary
skill in the art would have had a reasonable expectation of success in making
such a combination.
Based on the foregoing, we are persuaded of error in each of the
rejections of claim 1. For the same reasons, and because the Examiner does
not provide further evidence or technical reasoning that would cure the
deficiency in the rejections of claim 1, we are persuaded of error in the
rejections of dependent claims 2–9. Accordingly, we do not sustain the
rejections of claims 1–9.
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With respect to claim 12, the Examiner relies on the findings quoted
above. As we determined in our previous decision, the Examiner does not
make separate findings regarding the specific elements required by claim 12.
We determine that the rejections of claim 12 here suffer from the same
deficiency discussed in our previous decision, i.e., the Examiner fails to
explain adequately how the art of record teaches the specific limitations
claimed. Further, as with the rejections of claim 1, the Examiner fails to
explain how Weir would or could be modified based on the teachings of
Brown, Russell, Short, or Marsh to teach the claimed apparatus, and without
such an explanation, it is not clear whether one of ordinary skill would have
had a reasonable expectation of success in making such a combination.
Thus, we also do not sustain the rejections of claim 12.
CONCLUSION
We REVERSE the rejections of claims 1–9 and 12.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–7, 12 103(a) Weir, Brown 1–7, 12
8 103(a) Weir, Brown,
Hayward
8
9 103(a) Weir, Brown, Li 9
1–7, 12 103(a) Weir, Russell 1–7, 12
8 103(a) Weir, Russell,
Hayward
8
9 103(a) Weir, Russell,
Li
9
1–7, 12 103(a) Weir, Short 1–7, 12
8 103(a) Weir, Short,
Hayward
8
9 103(a) Weir, Short, Li 9
1–7, 12 103(a) Weir, Marsh 1–7, 12
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Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
8 103(a) Weir, Marsh,
Hayward
8
9 103(a) Weir, Marsh, Li 9
Overall
Outcome
1–9, 12

REVERSED