Ex Parte Legaignoux et al

Patent Trial and Appeal Board

Oct 11, 2017

13000150 (P.T.A.B. Oct. 11, 2017)

United States Patent and Trademark Office
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.
13/000,150 05/24/2011 Herve Jean Francois Legaignoux 1000035-000103 1917
21839 7590 10/13/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERVE JEAN FRANCOIS LEGAIGNOUX,
MICHEL PIERRE BAYLOT, EMMANUEL HUOT,
and KIMON TULLIO ARDAVANIS
Appeal 2016-001208
Application 13/000,1501
Technology Center 3600
Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1, 3—13, 15—17, 20, and 23—26 under 35 U.S.C.
§ 103(a) as unpatentable over Frijns et al. (US 6,592,297 B2, iss. July 15,
2003, hereinafter “Frijns”). We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Saipem S.p.A. App.
Br. 1.
Appeal 2016-001208
Application 13/000,150
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to “a pipe-laying vessel and to a method of
laying a pipeline.” Spec. 1:4—5. Claims 1, 8, 13, 17, and 23—26 are
independent. Claim 1 reproduced below, is illustrative of the claimed
subject matter:
1. A pipe-laying vessel comprising:
a deck;
a tower extending upwardly from the vessel;
a pipe loading arm for raising a length of pipe from the
deck to a position aligned with the tower;
a travelling clamp assembly mounted for movement along
the tower; and
a fixed clamp assembly mounted on the tower at a lower
region, wherein at least one of the travelling clamp assembly and
the fixed clamp assembly includes both a friction clamp and a
collar clamp, each of the friction clamp and the collar clamp
being movable between an operative position, in which it is
adjustable between a clamping position, where the clamp clamps
the length of pipe on a pipe-laying path, and a released position
where the clamp is released from the length of pipe on the pipe­
laying path, and an inoperative position where the clamp is
located off the pipe-laying path, each of the friction clamp and
the collar clamp is independently movable between the operative
position and the inoperative position.
App. Br. (Claims App. 1).
2
Appeal 2016-001208
Application 13/000,150
OPINION
Claim 1
The Examiner rejects claim 1 stating, among other things, that Frijns
discloses “[a] travelling clamp assembly [having] a collar clamp (LC) and
friction clamps (R).” Final Act. 2. Further, the Examiner finds “clamps (EC
and R) are part of the tower (T).” Id. at 7. Appellants contend that the
rejection of claim 1 should not be sustained because the Examiner
improperly relied on Frijns’s tower as both part of the claimed clamp
assembly and as a separate component to which the clamp assembly is
mounted. App. Br. 9. According to Appellants, because tower T links
rollers R and clamp LC together to work as a unit, they all form an
assembly. Id. at 8—9 (citing Final Act. para. 52). The Examiner explains the
rejection by citing to a dictionary definition and stating “[a]n assembly is ‘a
collection of manufactured parts fitting together into a complete machine,
structure or unit of a machine.’” Ans. 2. Further, the Examiners states “As
described the clamps R and [the] clamp LC are fitted together to complete
the structure of a machine to handle the pipe sections. Pursuant to the plain
language of the claim, the clamps R and LC are part of the same clamp
assembly.” Id. at 3.
We agree with Appellants that the Examiner’s finding as to Frijns’s
disclosure of the claimed clamp assembly is unreasonable. In accordance
with the rejection, the tower would have to be attached to itself to meet the
language of claim 1. Such a reading of Frijns is incorrect and illogical.
Furthermore, it is not proper to use the tower to create the assembly as called
for by claim 1 and to use the tower again as a separate claim element.
“Where a claim lists elements separately, ‘the clear implication of the claim
3
Appeal 2016-001208
Application 13/000,150
language’ is that those elements are ‘distinct components] ’ of the patented
invention.” Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d
1284, 1288 (Fed. Cir. 2004)). Nothing in the claim language or the
Specification suggests that the clamp assembly and the tower can be the
same structure. Moreover, in the “Response to Arguments” section, the
Examiner does not appear to squarely address Appellants’ argument. See
Ans. 2—3. Accordingly, the rejection of claim 1 is not sustained.
Claims 3—7 and 20
Claims 3—7 and 20 are dependent upon and incorporate all of the
limitations of claim 1. Thus, the rejection of claims 3—7 and 20 based upon
Frijns is likewise not sustained.
Claim 8
Independent claim 8 recites a tower and a travelling clamp assembly,
which includes both a line-up clamp and a pipeline tension bearing clamp,
mounted along the tower similar to claim 1. Appellants advance the same
argument in support of the patentability of independent claim 8 as discussed
above for claim 1. App. Br. 12, Reply Br. 5. The rejection of claim 8
suffers the same deficiency as the rejection of claim 1 and accordingly, the
rejection of claim 8 is not sustained.
4
Appeal 2016-001208
Application 13/000,150
Claims 9—12
Claims 9-12 are dependent upon and incorporate all of the limitations
of claim 8. Thus, the rejection of claims 9—12 based upon Frijns is likewise
not sustained.
Claim 13
Independent claim 13 recites a pipe-laying vessel comprising “three or
more line-up clamps spaced along the tower.” App. Br. (Claims App. 3).
The Examiner determines that “Frijns discloses one line up clamp, [and] it
does not disclose three or more line up clamps spaced along the tower.”
Final Act. 4. However, the Examiner determines that “it would have been
obvious to one of ordinary skill in the art at the time of the invention to
replicate the line up clamp of Frijns to have three line up clamps as in the
claim as a mere duplication of parts.” Id., Ans. 6.
Appellants argue that Frijns only discloses one line-up clamp and that
having three clamps allows the pipe being joined to be “align[ed] especially
well.” App. Br. 12, Reply Br. 6. Appellants’ argument is not well taken. In
this instance, we, like the Examiner, find that increasing the number of line­
up clamps is an obvious modification. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). Appellants provide no evidence or
convincing arguments that duplicating the number of clamps is beyond the
level of ordinary skill in the art. Furthermore, Appellants’ proffered
reasoning is not persuasive of error in the Examiner’s rejection since, as they
note, it would logically follow that the alignment of the pipe would improve
5
Appeal 2016-001208
Application 13/000,150
with more line-up clamps spaced along the tower. App. Br. 12.
Accordingly, the rejection of claim 13 is sustained.
Claims 15 and 16
Appellants do not separately argue claims 15 and 16, which depend
from claim 13. App. Br. 12—13. Accordingly, we also sustain the rejection
of claims 15 and 16.
Claim 17
Claim 17 incorporates all of the limitations of claim 1. Thus, the
rejection of claim 17 based upon Frijns will likewise not be sustained.
Claims 23—25
Claims 23—25 are independent claims and also recite a clamp
assembly including both a friction clamp and a collar clamp, wherein the
clamp assembly is mounted on the tower similar to claim 1. The Examiner
does not offer a different reading of Frijns. Final Act. 5—7, Ans. 2—3.
Appellants’ advance the same convincing argument as that for claim 1.
App. Br. 5—11, Reply Br. 2—5. Thus, the rejection of claims 23—25 suffer the
same deficiency as the rejection of claim 1 and accordingly, the rejection of
claims 23—25 is not sustained.
Claim 26
Appellants argue with respect to claim 26 that “[a]s discussed above,
with respect to claim 13, there is no motivation to modify the pipe laying
apparatus to have a further line-up clamp.” App. Br. 13, Reply Br. 7.
6
Appeal 2016-001208
Application 13/000,150
Appellants also state that “the rollers R are not arranged to be spaced around
a line-up clamp.” Id. In rejecting claim 26, the Examiner makes findings
and presents reasoning similar to that advanced for claim 13 and further
states that “Frijns discloses rollers (R) working the line up clamp.” Final
Act. 6. For the reasons stated above with respect to claim 13, Appellants
have not apprised us of error in the Examiner’s reasoning. Furthermore,
Appellants’ statement that Frijns’s rollers are not arranged to be spaced
around the line-up clamp does not show error in the Examiner’s position.
Appellants do not elaborate or offer any convincing explanation identifying
a deficiency in the Examiner’s rejection and we find none. Appellants’
arguments have been considered and they do not apprise us of error in the
Examiner’s rejection. Accordingly, we sustain the rejection of claim 26.
NEW GROUNDS OF REJECTION
We enter a new grounds of rejection of claim 17 under 35 U.S.C.
§ 112(2). A review of method claim 17 indicates that claim 17 fails to recite
any active positive steps delimiting how the method is practiced. See Ex
parte Erlich, 3 USPQ2d 1011, 1017 (BPAI 1986) (citation omitted). (“[A]
method claim should at least recite a positive, active step(s) so that the claim
will ‘set out and circumscribe a particular area with a reasonable degree of
precision and particularity,’ and make it clear what subject matter these
claims encompass, as well as making clear the subject matter from which
others would be precluded.”). Appellants’ claim 17 is thus indefinite under
35 U.S.C. § 112, second paragraph. See also Manual of Patent Examining
Procedure § 2173.05(q). (“Attempts to claim a process without setting forth
any steps involved in the process generally raises an issue of
7
Appeal 2016-001208
Application 13/000,150
indefiniteness.”). Appellants should note that the language of the instant
claim is different from that of Ex parte Porter, 25 USPQ2d 1144, 1147
(BPAI 1992), in which the claim recited a step of “utilizing the nozzle of
claim 7”. Id. (“Contrary to the examiner’s assertion that claim 6 has no
method step, the claim clearly recites the step of ‘utilizing.’”). Appellants’
claim 17 does not recite a step of “utilizing” or any step for that matter.
DECISION
The Examiner’s decision to reject claims 1, 3—12, 20, and 23—25
under 35 U.S.C. § 103 is reversed.
The Examiner’s decision to reject claims 13, 15, 16, and 26 under
35 U.S.C. § 103 is affirmed.
The Examiner’s decision to reject claim 17 under 35 U.S.C. § 103 is
reversed, but we enter a new ground of rejection of claim 17 under 35
U.S.C. § 112(2).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
8
Appeal 2016-001208
Application 13/000,150
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-fN-PART; 37 C.F.R, $ 41.50(b)
9