Ex Parte Lamison

Board of Patent Appeals and Interferences

Mar 23, 2012

10907041 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte CRAIG W. LAMISON
____________________

Appeal 2010-001429
Application 10/907,041
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, PHILLIP J. KAUFFMAN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001429
Application 10/907,041
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-12, 18-32, and 37-47. Appellant’s representative presented oral argument
on Mar. 20, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. A pipeline segment for use in constructing a thin-walled
underwater pipeline, comprising:
a main pipe section comprising two or more joints of
pipe;
terminal pipe sections at either end of the main pipe
section wherein the terminal pipe sections are more resistant to
external-pressure collapse relative to the main pipe section; and
at least one pressure isolation device in each terminal
pipe section to maintain internal pressure in the main pipe
section above a set shut off pressure.

REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-12, 18-32, and 37-46 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.1
2. Claims 1-12, 18-32, and 37-472 under 35 U.S.C. § 103(a) as
unpatentable over Beaujean (US 6,540,440 B1; issued Apr. 1, 2003),

1 The rejection of claim 47 for failing to comply with the written description
requirement has been withdrawn. Ans. 3.
Appeal 2010-001429
Application 10/907,041
3
Watanabe (US 4,603,806; issued Aug. 5, 1986), and Shillito (US 6,830,069
B2; issued Dec. 14, 2004).

OPINION
Claims 1-12, 18-32, and 37-46 under 35 U.S.C. § 112, first paragraph
Independent claim 1 is directed to a pipeline segment for use in
constructing an underwater pipeline that comprises “a main pipe section
comprising two or more joints of pipe.” Similarly, independent claims 37
and 41 are directed to a pipeline segment for an underwater pipeline that
comprises a first pipe section that comprises two or more joints of pipe. The
Examiner concluded these claims fail to comply with the written description
requirement because the Specification does not reasonably convey to a
person of ordinary skill in the art that Appellant possessed a main pipe
section (or first pipe section) comprising two or more joints of pipe as
claimed. Ans. 4.
We agree with Appellant’s explanation that the Specification makes
clear that the main pipe section (or first pipe section) can comprise two or
more joints of pipe (e.g. stalks 100) as called for in independent claims 1,
37, and 41.3 App. Br. 12-13; see also Spec. Abstract; paras. [0056]-[0058];
fig. 7 (showing stalks 100). This disclosure reasonably conveys to a person

2 Appellant acknowledges that the omission of claim 47 from the heading of
the rejection in the office action that is the subject of this appeal was a
typographical error and claim 47 is included in this rejection. App. Br. 6.
3 The Examiner’s finding, discussed infra, that it was known in the art to
make pipeline segments of a plurality of pipe sections, further supports that
the written description requirement was met. See Manual of Patent
Examining Procedure § 2163 II.A.3(a) (8th ed., Rev. 8, July 2008); see also
Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005) (it is appropriate to
rely on “the existing knowledge in the particular field” in making a written
description determination).
Appeal 2010-001429
Application 10/907,041
4
of ordinary skill in the art that Appellant possessed a main pipe section or
first pipe section comprising two or more joints of pipe as claimed. See
Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (“the test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date”).
As such, we cannot sustain the rejection of independent claims 1, 37,
and 41 or their dependent claims 2-12, 18-32, 38-40, and 42-46 under § 112,
first paragraph, as failing to comply with the written description
requirement.

Claims 1-12, 18-32, and 37-47 as unpatentable over Beaujean, Watanabe,
and Shillito
The Examiner found that Beaujean discloses a pipeline segment
comprised of terminal pipe sections at each end of a main pipe section. Ans.
5-6. The difference between Beaujean and the claimed subject matter, as
stated by the Examiner, is that Beaujean’s main pipe section is not disclosed
as comprised of two or more joints of pipe, and Beaujean’s terminal pipe
sections do not have a wall thickness greater than the main pipe section wall
thickness. Ans. 7, 6.
The Examiner found that it was known in the art to form segments of
pipe from a plurality of joints of pipe (as evidenced by Beaujean) and
concluded that modification of Beaujean’s main pipe section to be
comprised of two or more joints of pipe would have been obvious, further
the Examiner reasoned that such modification would have been a matter of
common sense as pipes are produced in lengths shorter than the total length
needed for an application. Ans. 5-6, 9-10. The Examiner found that
Appeal 2010-001429
Application 10/907,041
5
Watanabe discloses terminal pipe sections (heavier wall portion 3) having a
greater wall thickness than a main pipe section (lighter wall portion 2), and
concluded that modification of Beaujean’s pipeline segment to having
varying thickness as taught by Watanabe would have been obvious “to
increase the strength of the connections between pipe sections.” Ans. 5-6.
We address the claims in three groups.
Claims 1-4, 6-9, 11, and 18-30
Appellant argues claims 1-4, 6-9, 11, and 18-30 as a group, and we
select claim 1 as representative. App. Br. 14-16; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). Appellant argues that Watanabe discloses a single
pipe joint (pipe 1) of varying thickness and does not disclose two or more
pipe sections of various wall thickness joined together as called for in
independent claim 1. App. Br. 15-16; Reply Br. 4-5. The rejection does not
rely upon Watanabe for disclosing that the main pipe section is comprised of
two or more joints of pipe. Ans. 5-6. Rather, the Examiner found that it was
known or would have been a matter of common sense to form the main pipe
section of two or more joints of pipe. Ans. 5-6, 9-10. Thus, Appellant’s
argument is unpersuasive because it does not address the rejection as
articulated by the Examiner. As such, we sustain the rejection of claims 1-4,
6-9, 11, and 18-30.
Claims 37-45
Appellant argues claims 37-45 as a group, and we select claim 37 as
representative. App Br. 16-17; see 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appellant repeats the argument used for claim 1, and for the reasons
explained in the analysis of that claim, supra, that argument is unpersuasive
here as well. See App. Br. 16.
Appeal 2010-001429
Application 10/907,041
6
Appellant argues, “there is absolutely no motivation from the
references themselves to replace the terminal ends of Beaujean with only the
terminal/thicker portions 6 of the Watanabe pipe.” App. Br. 17. The
Supreme Court has rejected the rigid requirement that the rationale for the
proposed combination come from within the references. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (Rejecting the rigid requirement of a
teaching, suggestion or motivation to combine known elements in order to
show obviousness). Further, Appellant’s conclusory assertion that there is
“no motivation” ignores and fails to point out the error in the rationale
provided by the Examiner, namely, “to increase the strength of the
connections between pipe sections.” See Ans. 5-6. Given that Watanabe
discloses manufacturing methods that produce pipes of heavier wall
thickness at both ends to ensure adequate strength, the Examiner’s reasoning
has a rational underpinning. See Watanabe, col. 1, ll. 28-30.
Appellant argues that Watanabe repeatedly discusses the difficulties
encountered in forming its unitary pipe (e.g., alignment, deformation when
pressed into a tubular shape, and inaccurate diametrical specifications), and
that such disclosure would have discouraged a person of ordinary skill in the
art from the modification proposed by the Examiner. App. Br. 17-18 (citing
Watanabe, col. 4, ll. 59-66; and col. 6, ll. 22-24). Appellant’s assertion is a
mischaracterization of the reference, and is not based upon consideration of
the reference as a whole. While it is true Watanabe discusses the difficulties
encountered in forming unitary pipe, Appellant’s argument ignores that
Watanabe discloses how to overcome these difficulties. Col. 4, ll. 52-66 (the
transition zone 10 between longitudinal thickness variations should be
gradual to avoid alignment and deformation problems); col. 6, ll. 22-24 (the
shortcomings of ordinary tools that produce diametrical inaccuracies can be
Appeal 2010-001429
Application 10/907,041
7
overcome by the use of cramp-type dies shown in Figures 12(a) and 12(b)).
Such disclosure would not have led a person of ordinary skill away from the
proposed modification; rather, such disclosure would have been instructive.
See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed.
Cir. 1983) (A prior art reference must be considered in its entirety, i.e., as a
whole, including portions that would lead away from the claimed invention);
see also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“‘A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, . . . would be led in a direction divergent from the path that was
taken by the applicant.’” (citation omitted)). Contrary to Appellant’s
assertion, Watanabe does not teach away from the proposed combination.
As such, we sustain the rejection of claims 37-45.
Claims 5, 10, 12, 31, 32, and 46
Claims 5, 10, 12, 31, 32, and 46 further call for a pressure
compensation system in communication with the main pipe section. The
Specification describes that the pressure compensation system 35 can
introduce pressurized fluid into the main pipe section when internal pressure
drops below a set re-pressurization pressure. Spec. paras. [6], [32]; fig. 5.
The Examiner found that Beaujean discloses a pressure compensation
system. Ans. 5-6, 11 (citing Beaujean, col. 2, ll. 59-67 and col. 6, ll. 49-54).
We disagree. Beaujean does not explicitly disclose a pressure compensation
system. Beaujean, passim. Beaujean discloses that an elongated object,
such as a pipeline segment, can be given buoyancy by closing both ends and
filling the pipeline segment with a substance having a lower specific gravity
than seawater, and that a simple pressure meter can indicate the air-tightness
of the pipeline during storage and transportation. Col. 4, ll. 59-67. Beaujean
also discloses that in deep water operations it is preferred that the pipeline
Appeal 2010-001429
Application 10/907,041
8
segment is pressurized during the lowering operation to provide the pipe
with stiffness. Col. 6, ll. 49-54. In each case, Beaujean discloses filling the
pipe interior with a gas for buoyancy or stiffness and not a system that can
compensate for pressure loss, as claimed. Consequently, we agree with
Appellant that Beaujean does not disclose a pressure compensation system
as claimed. See App. Br. 19; Reply Br 5-6. As such, we cannot sustain the
rejection of claims 5, 10, 12, 31, 32, and 46.

DECISION
We reverse the Examiner’s decision to reject claims 1-12, 18-32, and
37-46 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement.
We affirm the Examiner’s decision to reject claims 1-4, 6-9, 11, and
18-30 under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision to reject claims 37-45 under 35
U.S.C. § 103(a).
We reverse the Examiner’s decision to reject claims 5, 10, 12, 31, 32,
and 46 under 35 U.S.C. § 103(a).

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-IN-PART

mls