Ex Parte Balkanyi et al

Patent Trial and Appeal Board

May 28, 2013

11328686 (P.T.A.B. May. 28, 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.
11/328,686 01/10/2006 Szabolcs Roland Balkanyi TH1043 (US) 6578
23632 7590 05/29/2013
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
RIVELL, JOHN A
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
05/29/2013 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 SZABOLCS ROLAND BALKANYI, JAMES GEORGE BROZE,
JOSE OSCAR ESPARZA, GREGORY JOHN HATTON,
AJAY PRAFUL MEHTA, JOHNNY FRANK NIMMONS,
CHIEN KUEI TSAI, MOYE WICKS III, and GEORGE JOHN ZABARAS
____________

Appeal 2011-003728
Application 11/328,686
Technology Center 3700
____________

Before STEFAN STAICOVICI, HYUN J. JUNG, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 13-20. Claims 1-12 and 21 have been
withdrawn. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-003728
Application 11/328,686

2
CLAIMED SUBJECT MATTER
Claim 13 is the sole independent claim on appeal and it recites:
13. A method of transporting a produced liquid through a pipe
while limiting deposits at a desired pipe inner-wall location
comprising:
providing a pipe having an inner surface roughness Ra less than
2.5 micrometers at said desired pipe inner-wall location; and
forcing the produced liquid through the pipe, wherein the
produced liquid has a wall shear stress of at least 1 dyne per
centimeter squared at said desired pipe inner-wall location.

REJECTIONS
Claims 17-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 13-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Pipe D, Spec. page 10, lines 11-13 and Table 1 on page 11 (“Pipe D”).

ANALYSIS
The rejection of claims 17-20 as lacking written description
The Examiner rejects dependent claims 17-20 as lacking written
description because the Specification fails to provide support for the
embodiments claimed. Ans. 4. The Examiner acknowledges that the
Specification adequately discloses the claimed Ra values alone and the
claimed angle RMS values alone, but finds a lack of disclosure for the two
values together in one embodiment. Ans. 8. For example, claim 17 recites a
pipe with an inner surface roughness Ra of less than 2.5 micrometers and an
Appeal 2011-003728
Application 11/328,686

3
inner surface roughness angle root mean square (“angle RMS”) of less than
5 degrees1, and the Examiner finds that the Specification nowhere discloses
such an embodiment. Ans. 8.
In response, Appellants point out that ASME Section 1.4.4 was
incorporated by reference at page 9 of the Specification and defines Ra and
angle RMS. App. Br. 2-3. Appellants also point to a generalized description
of Ra and RMS. App. Br. 3 (citing Spec, 9, ll. 21-30). We find that neither
the portion of the Specification nor the ASME standard cited provide a
disclosure of the claimed embodiments.2 However, we do find that Table 1
of the Specification provides support as it discloses that Pipe D has an Ra
value of less than 2.5 and an angle RMS value of less than 2. Spec. 11.
Thus, the dependent claims 17-20 which recite angle RMS values less than
5, 6, 7, and 9 degrees, respectively find support in Table 1. Therefore, the
rejection of claims 17-20 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement is not sustained.

The rejection of claims 13-20 as unpatentable over Pipe D
The Examiner relies upon “Pipe D” disclosed in the Specification as
commercially available (and thus prior art under 35 U.S.C. § 103(a)) to
reject claims 13-20 as unpatentable. Ans. 5 (citing Spec. 10, ll. 11-13 and
11, Table 1). Specifically, the Examiner finds that Pipe D is lacking only in

1 The Examiner mistakenly stated that claim 17 recited an angle RMS value
of 9 degrees. Ans. 8.
2 Furthermore, for the purpose of providing a written description of the
claimed invention, the ASME is not an eligible source of support. 37 CFR
§ 1.57 (c) (“‘Essential material’ may be incorporated by reference, but only
by way of an incorporation by reference to a U.S. patent or U.S. patent
application publication . . .”).
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Application 11/328,686

4
that claim 13 recites “forcing the produced liquid through the pipe, wherein
the produced liquid has a wall shear stress of at least 1 dyne per centimeter
squared.”3 Ans. 6. The Examiner finds that it is was well known to use a
pipe to transport fluids, whether gas or liquid. Ans. 6, 9. The Examiner
notes that the Specification defines “wall shear stress” as a function of
pressure differential (P1-P2), the radius of the pipe (R), and the length
between the points of pressure measurement (L). Id.; see e.g., Spec., 13, ll.
1-8. And the Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to alter P1-P2, R, and/or
L to achieve the desired wall shear stress. Ans. 6.
Appellants submit that Pipe D is from Valex Corporation and intended
to be used for ultra-high purity gas delivery systems. App. Br. 3.
Appellants argue that Pipe D does not teach or suggest the desirability of
forcing a liquid through the pipe. App. Br. 3-4 (emphasis in original).
We agree with the Examiner that using Pipe D to transport liquid
rather than gas would have been obvious to one of ordinary skill in the art as
of the time of the invention because “the conduction of fluids in a pipeline”
constitutes “traditional knowledge [] extrinsically verified by prior art
patents cited in this application.” Ans. 9-10. Appellants have not come
forth with any persuasive evidence to show why Pipe D cannot be used to
transport liquids. We also agree that selecting the appropriate pipe
parameters to arrive at the desired wall shear stress values recited in the
claims would have been obvious because wall shear stress of a fluid flowing
through a pipe is merely defined by well-known variables in fluid mechanics

3 The Examiner’s findings apply equally to claims 14-16 which recite wall
shear stresses of 20, 100, and 400 dyne per centimeter squared, respectively.
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Application 11/328,686

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such as pipe geometry, i.e., pipe diameter and length, and pressure
difference. See Ans. 6. Appellants have not shown that the Examiner erred
in determining that the claimed wall shear stress can be arrived at by routine
optimization . See In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Finally, we do not agree that the Examiner is required in this case to
provide a declaration under 37 C.F.R. § 1.104(d)(2). App. Br. 3. As the
Examiner points out, “al[l] of the facts . . . have basis in either the disclosed
prior art as cited or as is well known and notoriously old or as provided by
applicant.” Final Rej., mailed November 13, 2009, at 7; see also Ans. 9-10.
Thus, for the foregoing reasons, the rejection of claims 13-20 under
35 U.S.C. § 103(a) as being unpatentable over Pipe D is sustained.

DECISION
We REVERSE the rejection of: claims 17-20 under 35 U.S.C. § 112,
first paragraph, as lacking written description.
We AFFIRM the rejection of claims 13-20 under 35 U.S.C. § 103(a)
as unpatentable over Pipe D.
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

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