Ex Parte 6,402,201 et al

Patent Trial and Appeal Board

May 7, 2013

90010812 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,812 01/06/2010 6,402,201 W004 - Reexam 6402201 1748
35979 7590 10/16/2013
Bracewell & Giuliani LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
LEWIS, AARON J
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/16/2013 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 SUBSEA SERVICES INTERNATIONAL, INC.
____________________

Appeal 2013-002802
Reexamination Control 90/010,812
Patent 6,402,201 B1
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Reexamination Control No. 90/010,812
Patent 6,402,201 B1

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STATEMENT OF THE CASE
Subsea Services International, Inc. (Appellant and Patent Owner) has
filed a request for reconsideration and rehearing under 37 C.F.R. § 41.52
(hereinafter “Req. Reh'g.”), dated July 8, 2013, of our decision mailed May
8, 2013 (hereinafter “Decision”). Appellant requests rehearing of our
Decision sustaining the rejection of claims 1-12 under 35 U.S.C. § 103(a).
We do not modify our opinion.

THE REQUEST FOR REHEARING
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing. See 37 C.F.R.
§ 41.52(a)(1). Also, a request for rehearing is not an opportunity to merely
express disagreement with a decision without setting forth points believed to
have been misapprehended or overlooked. The proper course for an
Applicant dissatisfied with a Board decision is to seek judicial review, not to
file a request for rehearing to reargue issues that have already been decided.
See 35 U.S.C. §§ 141, 145.
Baker discloses that “if desired, high density foam material may be
injected into the annular space formed by the plastic sheet around the pipe P
and allowed to set-up or form in place.” Baker 4:21-24.
In rejecting the claims, the Examiner found that Baker teaches that the
“annular space between the exposed pipeline and the cover material [is]
filled with a joint filling material of a high density foam (col. 4, lines 21-
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24).” Final Rej. 4. The Examiner reiterated that Baker discloses “the
injection of high density foam material into the annular space formed by the
plastic sheet (30) around the pipe (P) and allowed to set-up or form in place
(col. 4, lines 20-24).” Adv. Act. 3.
Appellant seeks a rehearing arguing that the Board overlooked the
Examiner's erroneous finding regarding Baker which “improperly
broaden[ed] the scope of the Baker disclosure to imply that the injection of
high density foam material into the annular space is meant for an area
completely surrounding the pipe P (i.e., to fill an upper portion of the
annular space formed by the plastic sheet around the pipe P).” Req. Reh'g.
4.

ANALYSIS
Appellant “submits that Baker clearly describes injection of the high
density foam into the annular space beneath the pipes, in a manner similar to
that formed by the high impact material 16 placed beneath the pipes.” Req.
Reh'g. 4. Appellant contends that Figures 2 and 3A of Baker “illustrate the
only orientations for the high impact material 16 (or the high density foam
material) contemplated by Baker at the time of the invention.” Req. Reh'g.
5. Despite these contentions directed to the high density material being
limited to a location beneath the pipe as shown, Appellant nevertheless
acknowledges that Baker’s “high density foam material possibly could
expand into the upper portion of the annular space” as well but contends that
one skilled in the art would understand “that the foam material of Baker
would not have completely filled the annular space.” Req. Reh'g. 8.
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Appellant’s acknowledgement of other areas (rather than just beneath the
pipe) into which the foam could expand is consistent with Baker’s express
teaching that “[t]he fill material may be configured in a “C” shape or some
other configuration to substantially fill the area.” Baker 2:9-11.
Hence Baker’s teaching is, as Appellant acknowledges, not limited to
“only” the orientations or configurations depicted in Figures 2 and 3A (i.e.,
“beneath” the pipe), but that Baker’s fill may also “expand into the upper
portion of the annular space.” In essence, while Appellant acknowledges
that Baker’s foam is not limited to only being located beneath the pipe,
Appellant seeks this rehearing due to the Examiner “improperly
broaden[ing] the scope of the Baker disclosure to imply that the injection of
high density foam material into the annular space is meant for an area
completely surrounding the pipe P (i.e., to fill an upper portion of the
annular space formed by the plastic sheet around the pipe P).” Req. Reh'g.
4.
We note that the claims on appeal only specify that the annular space
be “filled with a joint filling material,” not that it be “completely” filled as
now asserted. We further note that in a different limitation within each of
the independent claims, Appellant specifically recites a pliable material
“completely enclosing” the pipe joint, but no such similar limitation of
“completely” is recited with respect to filling the annular space. As the
Examiner notes, “[a]lthough the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.”
Adv. Act. 4.
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Accordingly, and based on the recited claim limitation, we address
this rehearing to ascertain whether the Examiner's finding improperly
broadened Baker to satisfy the limitation of an annular space that is “filled
with a joint filling material.”
As indicated supra, Baker discloses that “high density foam material
may be injected into the annular space formed by the plastic sheet around the
pipe P and allowed to set-up or form in place.” Baker 4:21-24, see also
Final Rej. 4, Dec. 4. Baker also provides instruction as discussed above that
“[t]he fill material may be configured in a “C” shape or some other
configuration to substantially fill the area.” Baker 2:9-11.
In view of Baker’s disclosure of injecting foam into the annular space,
and Appellant’s acknowledgement that Baker’s high density foam can
extend into the upper portion of the annular space, Appellant’s contentions
that Baker’s teaching is restricted to only such filler being located “beneath”
the pipe are not persuasive. Req. Reh'g. 4-8. As such, the Examiner did not
improperly broadened Baker to satisfy the limitation of an annular space that
is “filled with a joint filling material” as claimed. Appellant does not
persuade us of Examiner error or of any error in our Decision.
Even assuming arguendo that filling of the annular space means
complete filling as Appellant contends, Appellant’s own Background
indicates that it was already known to one skilled in the art to fill the space
between the pipe and the sheet. Spec. 1:48-50 (“[t]he space between the
pipe and sheet metal was then filled.”). Thus, in view of (a) Baker’s
teaching of fill shapes other than “C” shaped “to substantially fill the area,”
(b) Appellant’s acknowledgement that Baker’s fill can expand into an upper
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portion of the annular space, and (c) Appellant’s discussion regarding the
known procedure of filling the annular space, Appellant does not persuade
us of error in the obviousness rejection, especially when one skilled in the
art was already aware of injecting foam around the pipe.
Appellant also contends that Baker’s high density foam material is
injected around the pipe “prior to” forming the sealed annular space. Req.
Reh'g. 7-8. However, this contention of injection prior to annular space
formation conflicts with Baker’s clear teaching that the fill material is
injected into an already existing annular space. Baker 4:21-24. Further, as
we previously stated, “[t]he Examiner’s rejection relies on injection of the
foam through an aperture in the sheet which forms an annular space” (Dec.
7) and Appellant does not show how this assessment is incorrect.
Appellant’s contention is not persuasive.
Appellant also references “comparative experimental results” that
were submitted for review by the Examiner. Req. Reh'g. 8. However, the
unpersuasiveness of these exhibits was discussed in the Decision. Dec. 12-
13. Appellant presently contends that the submitted exhibits indicate that
“the foam material of Baker would not have completely filled the annular
space” as evidenced by these experiments. Req. Reh'g. 8. However, this
contention is not persuasive because one such test was conducted employing
100% fill with the comment being that the foam “expanded out of the sleeve
which prevented the sleeve from being sealed after the injection”. App. Br.
Exhibit 1, pg. 2. Hence, if anything, the experiment shows (a) that the
sleeve was completely filled, and then some and, (b) as addressed in the
Decision, that the experiment did not involve injection into an annular space
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in accordance with the Examiner’s combination of Baker and Isherwood.
Dec. 13, see also Adv. Act. 30. More succinctly, the Examiner found that
“[t]he abovementioned experiments did not include the placement of an
aperture in the plastic sheet (30) of Baker as modified by Isherwood;
therefore, the experimental protocol does not address the combined
teachings of the prior art that is being used to reject the claims.” Adv. Act.
30. We agree with the Examiner’s assessment (Dec. 13) and accordingly,
Appellant’s conclusion that “Baker is incapable of retaining a high density
foam material injected therein” is not persuasive. Req. Reh'g. 9.
Accordingly, in consideration of the evidence, we are not persuaded
that the Examiner’s reliance on Baker and the findings directed to the
location of the high density foam material are in err.

DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request,
but is denied with respect to our making any modification to the Decision.
No 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).

DENIED

Appeal 2013-002802
Reexamination Control No. 90/010,812
Patent 6,402,201 B1

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Patent Owner
Bracewell & Giuliani LLP
P.O. Box 61389
Houston TX 77208-1389

Third Party Requester

Barlow, Josephs & Holmes, LTD.
101 Dyer Street
5th Floor
Providence, RI 02903