Ex Parte Gard et al

Patent Trial and Appeal Board

Sep 24, 2018

13700744 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/700,744 11/29/2012 Eric Gard
22850 7590 09/26/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
406986US41X PCT 1608
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC GARD, ELIETTE PINEL, and MIKAEL PETIT
Appeal2017-011030
Application 13/700,744 1
Technology Center 1700
Before JEFFREY B. ROBERTSON, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 4--37. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Vallourec
Mannesmann Oil & Gas France and Nippon Steel & Sumitomo Metal
Corporation. Appeal Br. 1.
Appeal 2017-011030
Application 13/700,744
STATEMENT OF THE CASE2
Appellants describe the invention as relating to "a galling[3Lresistant
tubular component used for drilling and working hydrocarbon wells, and
more precisely to the threaded end of such a component." Spec. ,r 1. The
Specification explains that coatings are necessary to meet torque and
strength requirements. Id. at ,r 4; see also Appeal Br. 5. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A threaded end of a steel tubular component suitable for
drilling or working hydrocarbon wells, said threaded end
comprising a threaded zone on an external or internal peripheral
surface of the threaded end depending on whether the threaded
end is male or female,
wherein at least a portion of the threaded end is coated
with a dry film comprising an organic matrix in which 3% to 30%
by weight of ion exchange pigments are dispersed,
wherein the ion exchange pigments comprise at least one
cation exchange pigment selected from the group consisting of a
calcium ion exchange amorphous silica, a zinc ion exchange
amorphous silica, a cobalt ion exchange amorphous silica, a
strontium ion exchange amorphous silica, a lithium ion exchange
amorphous silica, a magnesium ion exchange amorphous silica,
a yttrium ion exchange amorphous silica, a calcium ion exchange
zeolite, a molybdenum ion exchange zeolite, and a sodium ion
exchange zeolite, and
wherein the ion exchange pigments comprise anion
exchange pigments constituted by vanadate ion exchange
hydrotalcite.
2 In this Decision, we refer to the Final Office Action dated August 31, 2016
("Final Act."), the Appeal Brief filed March 3, 2017 ("Appeal Br."), and the
Examiner's Answer dated May 3, 2017 ("Ans.").
3 Galling is wear caused by adhesion between sliding surfaces.
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Application 13/700,744
Appeal Br. 16 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Fletcher us 5,041,241 Aug. 20, 1991
Hirose US 2001/0022149 Al Sept. 20, 2001
Novak et al. US 6,485,549 B 1 Nov. 26, 2002
("Novak")
Ha et al. US 6,756,123 B2 June 29, 2004
("Ha")
Cheng et al. US 2007/0213429 Al Sept. 13, 2007
("Cheng")
Walters et al. US 2008/0090069 Al April 17, 2008
("Walters")
Wright et al. US 2009/0110833 Al Apr. 30, 2009
("Wright")
Pinel et al. WO 2008/139058 A2 4 Nov. 20, 2008
("Pinel")
Buchheit et al., Active corrosion protection and corrosion sensing in
chromate-free organic coatings, 47 PROGRESS IN ORGANIC COATINGS, 174--
182 (2003) ("Buchheit").
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 4--7, 9, 10, 15-25 and 30-32 under 35 U.S.C.
§ 103 as unpatentable over Pinel in view of Fletcher and Buchheit. Final
Act. 3.
Rejection 2. Claim 8 under 35 U.S.C. § 103 as unpatentable over
Pinel, Fletcher, and Buchheit in view of Hirose. Id. at 7.
4 We reference Pinel et al., US 2010/0167968 Al, July 1, 2010, as an
English translation of Pinel.
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Rejection 3. Claim 11 under 35 U.S.C. § 103 as unpatentable over
Pinel, Fletcher, and Buchheit in view of Wright. Id. at 7.
Rejection 4. Claim 12 under 35 U.S.C. § 103 as unpatentable over
Pinel, Fletcher, and Buchheit in view of Novak. Id. at 9.
Rejection 5. Claim 13 under 35 U.S.C. § 103 as unpatentable over
Pinel, Fletcher, and Buchheit in view of Ha. Id. at 10.
Rejection 6. Claim 14 under 35 U.S.C. § 103 as unpatentable over
Pinel, Fletcher, and Buchheit in view of Walters. Id. at 12.
Rejection 7. Claims 25-29 and 33-37 under 35 U.S.C. § 103 as
unpatentable over Pinel, Fletcher, and Buchheit in view of Cheng. Id. at 13.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellants argue all rejections together and argue all claims as a
group. See Appeal Br. passim. Therefore, consistent with the provisions of
37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and
all other claims on appeal stand or fall together with claim 1.
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Application 13/700,744
The Examiner rejects claim 1 as obvious over Pinel in view of
Fletcher and Buchheit. Ans. 3 ( citing Pinel). The Examiner finds that Pinel
teaches a tubular threaded joint with an adhesive lubricating composition
comprising a matrix. Ans. 3. In particular, the threaded end is coated with a
dry film comprising an organic matrix which further comprises corrosion
inhibitors. Id. at 3--4. The Examiner finds that Pinel does not disclose 3% to
3 0% by weight of ion exchange pigments wherein the ion exchange
pigments comprise at least one cation exchange pigment as listed in claim 1
and anion exchange pigments constituted by vanadate ion exchange
hydrotalcite. Id. at 4.
The Examiner finds that Fletcher discloses calcium ion exchange
amorphous silica in a polymer matrix with a percent overlapping that of
claim 1 's 3-30% recitation. Ans. 4--5 (citing Fletcher). The Examiner also
finds that Buchheit teaches anion exchange pigments "constituted by
vanadate ion exchange hydrotalcite." Id. at 5 (citing Buchheit). The
Examiner determines that it would have been obvious to incorporate the ion
exchange materials of Fletcher and Bucchheit into the matrix of Pinel for
improved corrosion resistance. Id.
Appellants argue that Pinel does not teach that its film comprises 3 %
to 30% by weight of ion exchange pigments as specified in claim 1. Appeal
Br. 6. This argument does not identify error because the Examiner relies on
Fletcher and Buchheit as teaching the ion exchange pigments.
Appellants make various arguments regarding the Bohm reference:
Bohm et al, Novel environmental friendly corrosion inhibitor pigments
based on naturally occurring clay minerals, 52 Materials and Corrosion,
896-903 (2001) ("Bohm"). Appeal Br. 6-9. These arguments are
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inapposite because the rejection on appeal does not apply to Bohm as a prior
art reference.
Appellants argue that Bohm teaches away from use of a calcium (II)
exchanged silica pigment (i.e., tradename Shieldex). Appeal Br. 6-9. While
Bohm does teach that certain pigments have better performance than
Shieldex, the prior art references as a whole indicate that Shieldex was a
well-known additive for preventing corrosion. See, e.g., Fletcher Abstract
(referring to calcium cations as "preferred corrosion inhibiting cations");
Novak Table E (making use of Shieldex in corrosion resistant coating
formulation); Walters ,r 119 (referring to Shieldex as a conventional non-
chrome corrosion resisting particle); see also Spec. ,r 50 ("Applicant initially
carried out corrosion tests on ... synthetic calcium ion exchange amorphous
silica sold by the supplier GRACE DAVIDSON under the trade name
SHIELDEX ACS."). The preponderance of the evidence supports that,
despite Bohm teaching certain advantages of alternatives, a person of skill in
the art would have had reason to use calcium exchanged silica pigments /
Shieldex for corrosion resistance. See In re Young, 927 F.2d 588, 591 (Fed.
Cir. 1991) ("When prior art contains apparently conflicting references, the
Board must weigh each reference for its power to suggest solutions to an
artisan of ordinary skill.").
Appellants further argue that Pinel discloses a tubular steel threaded
joint and Buchheit discloses vanadate ion exchange hydrotalcite as an anti-
corrosion coating for an aluminum alloy substrate. Appeal Br. 11.
Appellants argue that a person of skill in the art would not look to Buchheit
to modify Pinel and would not have had a reasonable expectation of success
in combining these references because aluminum and steel have different
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mechanisms of corrosion. Id. at 11-12. Appellants refer to the March 25,
2016, declaration of Mr. Mikael Petit to support the argument.
The Examiner finds that Buchheit teaches "corrosion resistance
regardless of the mechanism of corrosion of the substrate." Ans. 14. In
particular, the Examiner finds that Buchheit's corrosion resistance is "based
on release of vanadates into an attacking electrolyte to stifle corrosion." Id.
The Examiner's position is supported by the preponderance of the evidence.
Buchheit 175 ("The ion exchange characteristic of HTs [hydrotalcite] is
being used to release vanadates into an attacking electrolyte to stifle
corrosion."). Appellants do not persuasively dispute the Examiner's position
in this regard. A person of ordinary skill in the art implementing Pinel
would have reason to look to a variety of corrosion resistance additives
because Pinel teaches that its organic matrix comprises corrosion inhibitors
(Ans. 4; Pinel ,r 45), and as the Examiner finds (Ans. 13-15), a person of
ordinary skill in the art would have had reasonable expectation of success in
combining Buchheit's teachings with the Pinel's steel to prevent corrosion
because Buchheit indicates that its solution to corrosion attacks the
electrolyte rather than being substrate dependent.
Appellants also argue that the "calcium ion exchange amorphous
silica provides outstanding results in the present invention" and that the
results are "surprising and unexpected." Appeal Br. 14. A party asserting
unexpected results as evidence of nonobviousness has the burden of proving
that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed.
Cir. 1997). Appellants do not meet that burden here. Appellants do not
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explain what result is unexpected and do not identify evidence5 that the cited
results are unexpected. Appellants also do not explain what evidence (if
any) establishes that the results are unexpected as compared to the closest
prior art and do not explain why allegedly unexpected results are
commensurate with the scope with claim 1 or. See In re Baxter Travenol
Labs., 952 F.2d 388,392 (Fed. Cir. 1991) ("when unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art"); In re Peterson, 315 F.3d
1325, 1330-31 (Fed. Cir. 2003) (explaining that applicant may overcome a
prima facie case of obviousness by showing unexpected results but the
showing of unexpected results "must be commensurate in scope with the
claims which the evidence is offered to support") (internal quotes and
citation omitted).
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1 and 4--37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
5 Appellants refer to Bohm's alleged teaching away (Appeal Br. 14), but
that issue is addressed above.
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