Ex Parte Bianchi et al

Patent Trial and Appeal Board

Jul 31, 2018

14111081 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/111,081 01/30/2014
105968 7590 08/02/2018
Neal Gerber & Eisenberg, LLP - Studio Torta
Two North LaSalle Street
Suite 1700
Chicago, IL 60602
FIRST NAMED INVENTOR
Stefano Bianchi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
026347-0005 9917
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
amasia@ngelaw.com
habern@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP ANO BIANCHI, SERGIO BOGGE, and
MASSIMO PULICI
Appeal2017-009296
Application 14/111,081
Technology Center 3600
Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stefano Bianchi et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 23-25, 28--40, and 45-51.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appeal Brief, SAIPEM S.P.A. is the real party in interest.
Appeal Br. 2.
Appeal2017-009296
Application 14/111,081
THE CLAIMED SUBJECT MATTER
Claim 23, reproduced below, is illustrative of the claimed subject
matter.
23. A method of recovering a pipeline, said method
compnsmg:
winding a length of rope connected to the pipeline
utilizing a hauling machine to exert pull on the length of rope;
adapting a crawler pipeline tensioning device to grip the
length of rope by looping, on opposite sides of the length of
rope, two adapters, respectively, about two tracks of the crawler
pipeline tensioning device, each adapter including a chain
having a plurality of links which form a closed loop; and
exerting additional pull on a portion of the length of rope
using the adapted crawler pipeline tensioning device.
REJECTIONS
I. Claims 23-25, 32-35, 40, and 45--47 stand rejected under
35 U.S.C. § 102(b) as anticipated by Recalde (US 5,533,834, iss.
July 9, 1996).
II. Claims 28-31, 36-39, and 48-51 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Recalde.
DISCUSSION
Rejection I
Method Claims 23-25 and 46
Claim 23 is directed to "[a] method of recovering a pipeline" and
recites steps of "winding a length of rope connected to the pipeline utilizing
a hauling machine to exert pull on the length of rope," "adapting a crawler
pipeline tensioning device to grip the length of rope," and "exerting
additional pull on a portion of the length of rope using the adapted crawler
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pipeline tensioning device." Appeal Br. 29 (Claims App.) (emphasis added).
Claim 46, which is also directed to "[a] method of recovering a pipeline,"
recites these same steps. Id. at 33.
Appellants argue that Recalde does not exert any additional pull on
the A & R cable or the anchor cable, which are used to haul in the length of
pipe in the recovery operation. Id. at 22-23. Appellants are correct.
Recalde discloses using track units 420, 422, 424, and 426 to pull pipe
104/204 off main reel 102/202 and straighten the pipe as it is pulled off the
reel. Recalde 18:12-19:12; 21:31-39. Recalde also discloses track units
550 and 560 as alternative embodiments of track units 420, 422, 424, and
426. Id. 25:64--29:59; Figs. 28-32. However, Recalde does not disclose
using any of the track units to haul in a pipe in a recovery operation. Rather,
Recalde discloses using a ship-mounted winch to haul in the length of pipe
by winding an A & R cable and anchor cable supported on stinger rollers
526 and sheaves 1150 and 1240 until the end of the pipe lies over clamping
assemblies 1138 and 1134. Id. 37:27-35. Thus, Recalde does not disclose
"[a] method of recovering a pipeline" comprising steps of "winding a length
of rope connected to the pipeline utilizing a hauling machine to exert pull on
the length of rope," "adapting a crawler pipeline tensioning device to grip
the length of rope," and "exerting additional pull on a portion of the length
of rope using the adapted crawler pipeline tensioning device," as required in
claims 23 and 46. Accordingly, we do not sustain the rejection of
independent method claims 23 and 46, or claims 24 and 25, which depend
from claim 23, as anticipated by Recalde.
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Application 14/111,081
System and Device Adapter Claims 32-35, 40, 45, and 47
Appellants present arguments contesting the rejection of claim 32 and
do not present any separate arguments for claims 33-35, 40, 45, and 47.
Appeal Br. 22-26; see In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.3 7 ( c )( 1 )( vii) ( the predecessor to § 41.3 7 ( c )( 1 )(iv)) as requiring "more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art"). We decide the appeal of the rejection of these
claims on the basis of claim 32, with the remaining claims standing or
falling with claim 32. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Recalde discloses a pipeline recover system
as recited in claim 32 including, in pertinent part, a crawler tensioning
device (track unit 550) and two adapters each including a chain (endless
chain or track 622) including a plurality of links which form a closed loop.
Final Act. 2-3; Ans. 3--4. 2
Appellants argue that Recalde does not include any adapters to track
unit 550 which enable track unit 550 to haul in the A & R cable or the
anchor cable because Recalde uses a ship-mounted winch when hauling in
the end of the first length of pipe, and is silent regarding using any other
mechanism. Appeal Br. 22-23. This argument is unavailing because claim
32 does not require that the crawler tensioning device or the adapters be used
to haul in the A & R cable, anchor cable, or length of pipe. See Appeal Br.
30 (Claims App.) (reciting "a crawler tensioning device configured to
2 The Examiner clarifies that the claimed "chain" reads on element 622
(Ans. 4), and not on element 650, as previously indicated (Final Act. 3).
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Application 14/111,081
tension the pipeline as the pipeline is laid"). As for the additional limitation
in claim 32 that the adapters be "configured to adapt the crawler tensioning
device to exert additional pull on a portion of the length of rope using the
crawler tensioning device" (id.), each of Recalde' s endless chains or track
units 622 is "surmounted by pipe-engaging/line-engaging V-blocks or pads
824 to 834," thus adapting track unit 550 to exert pull on either a length of
pipe or a length of rope. Recalde 26: 10-11 (boldface omitted). Appellants
do not persuasively explain why this does not satisfy the "configured to
adapt ... " language of claim 32.
Appellants also argue that each of Recalde's V-blocks or pads 824 to
834 "does not have a separate chain including a plurality of links which form
a closed loop." Appeal Br. 23. This argument does not apprise us of error in
the Examiner's finding that Recalde discloses the subject matter of claim 32.
Claim 32 requires two adapters each including a chain including a plurality
of links which form a closed loop, and Recalde's endless chains or track
units 622 satisfy this requirement. See Recalde 26:27-28 ( disclosing track
unit 550 comprising a "series of tracks 622, each in the form of an endless
chain" (boldface omitted)); see also Fig. 28 (illustrating one such endless
chain or track unit 622).
Appellants point out that "the idler rollers themselves (i.e., the
interpreted adapters) do not include any chains." Reply Br. 4. Although we
appreciate Appellants' point that the idler rollers (elements 802, 806) are
elements distinct from Recalde' s chains/track units 622, this does not
undermine the Examiner's finding that Recalde's track unit 550 includes two
adapters each including a chain (i.e., chains/track units 622). See Ans. 3--4.
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For the above reasons, Appellants do not apprise us of error in the
rejection of claim 32. Accordingly, we sustain the rejection of claim 32, as
well as claims 33-35, 40, 45, and 47, which fall with claim 32, as anticipated
by Recalde.
Rejection II
Method Claims 28-31
In rejecting claims 28-31, which depend from claim 23, under
35 U.S.C. § 103(a) as being unpatentable over Recalde, the Examiner does
not articulate any reasoning that would cure the deficiency in the rejection of
claim 23 as anticipated by Recalde. See Final Act. 5-6. Thus, we do not
sustain the rejection of claims 28-31.
System and Device Adapter Claims 36-39 and 48-51
Appellants present arguments for independent claim 48, and rely on
these same arguments for claims 36-39 and 49-51. Appeal Br. 27-28. We
decide the appeal of the rejection of these claims on the basis of claim 48,
with claims 36-39 and 49-51 standing or falling with claim 48. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants begin by relying on the arguments presented against the
rejection of claim 32. Appeal Br. 27. For the reasons set forth above, these
arguments also fail to apprise us of error in the rejection of claim 48.
Notably, claim 48 is directed to "[a] crawler tensioning device adapter
configured to adapt a crawler tensioning device configured to tension a
pipeline on a laying vessel," and, like claim 32, does not require that the
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adapter be used to haul in the A & R cable, anchor cable, or length of pipe.
Appeal Br. 35 (Claims App.).
Aside from relying on the arguments asserted against the rejection of
claim 32, Appellants merely recite the limitations of claim 48 and baldly
assert that "Recalde does not render obvious (without the benefit of
improper hindsight reconstruction)" the claimed subject matter. Id. at 27.
Appellants do not specifically address the Examiner's reasoning or
determination that it would have been obvious "to modify the shapes of the
inner and outer faces of each link [ of Recalde] to include a convex inner face
... with a curvature based on a curvature of the pipleine, and a concave
outer face ... with a curvature based on a curvature of the rope" (Final Act.
5). See Appeal Br. 27-28; cf In re Lovin, 652 F.3d at 1357.
Thus, Appellants do not apprise us of error in the rejection of claim
48. Accordingly, we sustain the rejection of claim 48, as well as claims 36-
39 and 49-51, which fall with claim 48, as unpatentable over Recalde.
DECISION
The Examiner's decision rejecting claims 23-25, 28--40, and 45-51 is
affirmed as to claims 32--40, 45, and 47-51, and reversed as to claims 23-
25, 28-31, and 46.
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)(l )(iv).
AFFIRMED-IN-PART
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