Ex parte Argent

Board of Patent Appeals and Interferences

Sep 28, 1998

08332936 (B.P.A.I. Sep. 28, 1998)

Application for patent filed October 31, 1994. Accord-1
ing to appellant, the application is a continuation-in-part of
Application 07/958,011, filed October 7, 1992, now U.S. Patent
5,360,242, issued November 1, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHAEL E. ARGENT
_____________
Appeal No. 97-3345
Application 08/332,9361
______________
ON BRIEF
_______________
Before COHEN, MEISTER and CRAWFORD, Administrative Patent
Judges.
Appeal No. 97-3345
Application 08/332,936
2
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner
to allow claims 14 through 20 and 33 through 35, as amended
(Paper No. 15) subsequent to the final rejection (Paper No.
11). Claims 2, 3, 9, 10, 12, 13, and 21 through 32, the only
other claims remaining in the application, stand allowed.
Appellant’s invention pertains to a method of
pipelaying by connecting two lengths of steel pipe without
welding the pipe. An understanding of the invention can be
derived from a reading of exemplary claim 14, a copy of which
appears in the APPENDIX to appellant's brief (Paper No. 14).
As evidence of obviousness, the examiner has applied
the documents listed below:
Kessler et al. (Kessler) 3,784,235 Jan. 8,
1974
Nemoto et al. (Nemoto) 4,091,630 May 30,
1978
Appeal No. 97-3345
Application 08/332,936
3
McGugan 4,298,221 Nov. 3,
1981
Roberts 4,865,359 Sept. 12,
1989
St. Onge 4,958,959 Sept. 25,
1990
Sweeney 5,015,014 May 14,
1991
Shibahara et al. (Shibahara) 5,104,263 Apr. 14,
1992
The following rejections are before us for review.
Claims 14 through 18, 33, and 34 stand rejected
under 35 U.S.C. § 103 as being unpatentable over McGugan in
view of Sweeney and St. Onge.
Claim 19 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the art as applied to the claims
above, further in view of Roberts or Kessler.
Appeal No. 97-3345
Application 08/332,936
4
Claim 35 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the art applied to claims 14 through
18, 33, and 34 above, further in view of Shibahara or Nemoto.
The full text of the examiner's rejections and
response to the argument presented by appellant appears in the
answer (Paper No. 16), while the complete statement of
appellant’s argument can be found in the brief (Paper No. 14).

In the brief (page 11), appellant indicates that
claims 14 through 19 stand or fall together, and that claims
33 through 35 are separately patentable. In light of the
above, we
select claim 14 for review, with claims 15 through 19 standing
or falling therewith; 37 CFR 1.192(c)(7). Accordingly, we
focus upon claims 14, 33, 34, and 35, infra.
OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
Appeal No. 97-3345
Application 08/332,936
In our evaluation of the applied patents, we have2
considered all of the disclosure thereof for what it would
have fairly taught one of ordinary skill in the art. See In
re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account
not only the specific teachings, but also the inferences which
one skilled in the art would reasonably have been expected to
draw from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
5
considered appellant’s specification and claims, the applied
patents, and the respective viewpoints of appellant and the2
examiner. As a consequence of our review, we make the deter-
minations which follow.
The rejection of claims 14 through 18, 33, and 34
We affirm the rejection of claim 14 under 35 U.S.C.
§ 103. It follows that the rejection of claims 15 through 18
is
likewise affirmed since these claims stand or fall therewith,
as previously indicated.
Appeal No. 97-3345
Application 08/332,936
6
Claim 14 addresses a method of pipelaying by
connecting two lengths of steel pipe without welding the pipe
comprising, inter alia, forming first and second tubular
members of steel with each member having cylindrical exterior
and interior sur- faces with diameters that are the same as
exterior and interior diameters of the steel pipe to be
connected.
As evidence of obviousness, the examiner looked to
the combined teachings of McGugan, Sweeney, and St. Onge.
Having reviewed the applied evidence, we reach the
conclusion that it would have been obvious to one having ordi-
nary skill in the art, from a collective assessment thereof,
to form the tubular pin and box members (first and second
tubular members) 1, 3 of McGugan with cylindrical exterior and
interior surfaces having diameters that are the same as
exterior and interior diameters of the steel pipe to be
connected. As we see it, the motivation on the part of one
Appeal No. 97-3345
Application 08/332,936
7
having ordinary skill in the art for making this modification
would have simply been to
obtain the expected benefits of a known alternative uniform
diameter pipe configuration, as evidenced by the teachings of
Sweeney (Figs. 4 and 5) and St. Onge (Figs. 5, 7 and 8; column
4, lines 62 through 67 and column 5, lines 40 through 43).
For this reason, the rejection of claim 14 is determined to
be appropriate.
As to claims 33 and 34, we conclude that the
applied art would have been reasonably suggestive of the
content of claim 33, but not of claim 34.
A reading of the Sweeney document (Fig. 6) reveals
to us that it would have been clearly suggestive of a
technique (column 6, lines 24 through 51) for pushing pipe
sections together which uses a C-clamp 34 (clamp on right side
of Fig. 6) configured to pass over a male connector and engage
one end of a first tubular member 2N, as required by claim 33.
Appeal No. 97-3345
Application 08/332,936
8
On the other hand, we are of the opinion, as regards
the content of claim 34, that the applied patents to St. Onge
(protective plate 54 for pushing) and Sweeney (flanged plug 32
for pushing and technique shown in Fig. 6) would not have been
suggestive of a male push ring configured to “pass inside the
female connector” and engage one end of a second tubular con-
nector, as claimed.
The argument advanced by appellant fails to persuade
us that the examiner erred in rejecting claim 14 under 35
U.S.C. § 103. We are in basic agreement with the examiner’s
response to the argument presented (answer, pages 6 through
11) and add the additional commentary. The viewpoint (brief,
page 15) that the proposed modification would appear to weaken
the connectors and negatively “effect” [sic, affect] the
operability of the con- nectors if not rendering them entirely
inoperable for their intended purpose, is considered to be
unsupported attorney argument. From our perspective, the
evidence of obviousness is contrary to the view advocated.
Appeal No. 97-3345
Application 08/332,936
9
McGugan reveals uniformity for the pipe exterior (Fig. 1) and
in another embodiment (Fig. 8) uniformity for the pipe
interior. This teaching, with the knowledge in the art
(Sweeney and St. Onge) of uniform exteriors and interiors as
suitable for pipe arrangements, would clearly have been
suggestive of the alternative of an operable uniform exterior
and interior pipe arrangement, as proposed for the McGugan
method of pipelaying. Like the examiner, we are also
not in accord with appellant’s view of the Sweeney and St.
Onge documents as being directed to nonanalogous subject
matter (brief, pages 15 and 16). At the outset, we note that,
as acknowledged by appellant (specification, page 2), there is
simply a preference for using steel. This is certainly
consistent with the evidence of obviousness before us which
accurately reflects the alternatives of steel and plastic
material pipes and connections in the art. In our opinion, it
is fair to say that the teachings of Sweeney and St. Onge are
reasonably pertinent to the pipe connection and configuration
problems faced by both appellant and McGugan and, as such,
Appeal No. 97-3345
Application 08/332,936
10
would have logically commended themselves to one facing the
afore- mentioned problems. See In re Clay, 966 F.2d 656, 659,
23 USPQ2d 1058, 1061 (Fed. Cir. 1992). It is additionally
appellant’s position (brief, page 17) that the references do
not provide suggestion for their combination but have been
combined using impermissible hindsight. We disagree. As set
forth, supra, we have determined that the applied teachings
provide ample suggestion for their combination. Further, the
present rejection is not inappropriate as being based upon
impermissible hindsight since, as revealed above, it is
properly founded only upon knowledge which was within the
level of ordinary skill at the
time the claimed invention was made. Thus, the rejection of
claim 14 is sound. Relative to appellant’s comments regarding
claim 33 (brief, pages 17 through 19), we refer to our dis-
cussion, supra, wherein we concluded that the subject matter
of this claim would have been suggested by the evidence of
obviousness.
Appeal No. 97-3345
Application 08/332,936
11
The rejection of claim 19
The rejection of claim 19 is affirmed since it
stands or falls with claim 14, as earlier indicated.
The rejection of claim 35
We affirm the rejection of this claim under 35
U.S.C. § 103.
Claim 34 depends from claim 14 and requires, inter
alia, that the pipelaying method is trenchless excavation
pipelaying with the pipes advanced through a generally
horizontally bored hole.
It is significant to note that the patent to McGugan
(column 1, lines 7 through 11) expressly acknowledges that the
disclosed pipe connectors are particularly, “but not
exclusively” designed and adapted for use in connecting pipes
in the drilling and/or completion of off-shore oil and/or gas
wells. Further, the patents to Shibahara (plastic or cast
Appeal No. 97-3345
Application 08/332,936
12
iron pipes; column 8, lines 56 through 61) and Nemoto (cast
iron or steel pipes; column 1, lines 13 and 14) are viewed as
representative of the knowledge in the art of the known method
of trenchless excavation pipelaying, as acknowledged by
appellant (specification, pages 2 and 3).
Considering the applied teachings as a whole, we
conclude, as did the examiner, that it would have been obvious
to practice the invention of McGugan with the pipes being
placed horizontally in the earth. It readily appears to us
that the incentive on the part of one having ordinary skill in
the art for making this modification would have simply been
to gain the expected benefits of the well-known trenchless
excavation method.
The argument in the brief (pages 20 through 22) is
not convincing of the patentability of claim 35. Akin to our
analysis of the patents to Sweeney and St. Onge, supra, we
Appeal No. 97-3345
Application 08/332,936
We note that appellant contemplated not only horizontal3
pipe orientation, but also vertical orientation
(specification, page 8, lines 25 through 28).
13
readily perceive the teachings of Shibahara and Nemoto to be
reasonably pertinent to pipelaying problems and arrangements
of concern to McGugan as well as appellant, and hence3
analogous prior art. Further, assessed as a whole, and
contrary to appellant’s point of view, we consider the applied
teachings to be suggestive of the claimed invention, without
impermissible hindsight reliance upon appellant’s own
teaching.
In summary, this panel of the board has:
affirmed the rejection of claims 14 through 18, and
33 under 35 U.S.C. § 103 as being unpatentable over McGugan in
view of Sweeney and St. Onge, but reversed the rejection of
claim 34 on this same ground;
Appeal No. 97-3345
Application 08/332,936
14
affirmed the rejection of claim 19 under 35 U.S.C. §
103 as being unpatentable over the art as applied to the
claims above, further in view of Roberts or Kessler; and
affirmed the rejection of claim 35 under 35 U.S.C.
§ 103 as being unpatentable over the art applied to claims 14
through 18, 33, and 34 above, further in view of Shibahara or
Nemoto.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
Appeal No. 97-3345
Application 08/332,936
15
)
) BOARD OF
PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3345
Application 08/332,936
16
Joseph M. Rolnicki
Rogers Howell & Haferkamp
7733 Forsyth Boulevard
Suite 400
St. Louis, MO 63105