Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 20, 2018

13218095 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/218,095 08/25/2011
24280 7590 11/23/2018
CHOATE, HALL & STEWARTLLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
FIRST NAMED INVENTOR
J. David Smith
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.
0492611-1166 7218
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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@choate.com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. DAVID SMITH, KRIP AK. V ARANAS!,
GARETH H. MCKINLEY, ROBERT E. COHEN, ADAM J. MEULER,
and HARRISON L. BRALOWER
Appeal2017-010620
Application 13/218,095
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and JANEE. INGLESE,
Administrative Patent Judges.
Opinion for the Board by INGLESE, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to reject claims 1--4, 6, 9-11, and 13-192. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Appellants identify the Massachusetts Institute of Technology as the real
party in interest. Appeal Brief filed April 21, 2016 ("App. Br."), 2.
2 Appellants cancelled claim 5 in an amendment filed November 23, 2015,
and the Examiner confirmed entry of the amendment in an Office
communication dated September 15, 2016.
Appeal2017-010620
Application 13/218,095
We REVERSE.
STATEMENT OF THE CASE
Appellants' invention "relates generally to preventing the formation of
hydrates in oil and gas pipelines." Spec. ,r 2. "Hydrates are crystalline
structures consisting of a lattice of cages of water molecules that entrap
hydrocarbon molecules at elevated pressures and low temperatures." Spec. ,r
4. Hydrates can plug oil lines, and can form dangerous projectiles within an
oil line if subjected to large differential pressures. Id. According to the
Specification, "hydrates were a key reason for the failure of the containment
box approach to oil recovery after the 2010 Gulf spill as they clogged the
opening of the box near the sea floor and prevented oil from being siphoned
to boats on the surface." Id. The article of Appellants' invention "reduc[es]
the adhesive strength between a hydrate and the interior surface of a deep
sea pipeline or portions thereof," preventing "catastrophic failures in deep-
sea oil and gas operations." Spec. ,r 2, see also ,r 7.
Independent claims 1 and 10 illustrate the subject matter on appeal
and are reproduced below with contested language italicized:
1. An article for use in a deep sea oil and/or gas recovery
operation, the article comprising
a surface having receding contact angle of water, Bree of
no less than 100°,
wherein the article is a fuel gas line or instrument gas
line and
wherein the surface is a hydrate-phobic surface that
inhibits hydrate adhesion thereupon in the presence of oil
and/or gas.
10. An article for use in a deep sea oil and/or gas recovery
operation,
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Appeal2017-010620
Application 13/218,095
the article having a surface comprising fluorodecyl
polyhedral oligomeric silsesquioxane,
the surface having receding contact angle of water, Bree of
no less than 100°,
wherein the article is a fuel gas line or instrument gas
line and
wherein the surface is a hydrate-phobic surface that
inhibits hydrate adhesion thereupon in the presence of oil
and/or gas.
App. Br. 11-12 (Claims Appendix) (emphasis and indentations
added).
The Examiner sets forth the following rejections in the Non-Final
Office Action entered August 21, 2015 ("Office Act."), and maintains the
rejections in the Examiner's Answer entered June 8, 2017 ("Ans."):
I. Claims 1, 2, and 9 under 35 U.S.C. § I02(b) as anticipated by
Extrand 3 as evidenced by Luzinov4 and Hatton 5;
II. Claims 3, 4, 6, 10, and 11 under 35 U.S.C. § I03(a) as
unpatentable over Extrand as evidenced by Luzinov and Hatton in view of
Y amahiro 6; and
III. Claims 13-19 under 35 U.S.C. § I03(a) as unpatentable over
Extrand as evidenced by Luzinov and Hatton in view of Y amahiro and
Filho 7 .
DISCUSSION
3 (U.S. 2004/0206410 Al, published October 21, 2004).
4 (U.S. 7,985,451 B2, issued July 26, 2011).
5 (WO 2011/163190 Al published December 29, 2011).
6 (U.S. 7,687,593 B2, issued March 30, 2010).
7 (U.S. 5,154,741, issued October 13, 1992).
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Appeal2017-010620
Application 13/218,095
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we reverse the Examiner's rejection of
claims 1, 2, and 9 under 35 U.S.C. § 102(b), and the Examiner's rejections
of claims 3, 4, 6, 10, 11, and 13-19 under 35 U.S.C. § 103(a), for the reasons
set forth in the Appeal Brief and below.
Rejection I
Claim 1 recites, inter alia, a fuel gas line or instrument gas line for use
in a deep sea oil and/or gas recovery operation.
The Examiner finds that Extrand discloses a pipe having an
ultraphobic surface for conveying fluids. Office Act. 3 ( citing Extrand ,r,r
48, 51 ). The Examiner finds that although Extrand does not explicitly
disclose that the pipe is a gas fuel line, a "fuel gas line" is an "intended use
of the claimed invention." Office Act. 3; Ans. 6. The Examiner finds that
Extrand's pipe for conveying a fluid "meets the structural limitations of a
pipe for conveying fuel gas" and "can accomplish the function" of
conveying fuel gas. Ans. 6. The Examiner also relies on Hatton's
disclosure that "a surface of a conduit [] that is hydrophobic inhibits hydrate
adhesion in the presence of gas because the wall will [prefer] hydrocarbons
to water." Office Act. 3 (citing Hatton pg. 2, 11. 27-29; pg. 3, 11. 6-15). The
Examiner finds that this disclosure in Hatton evidences that Extrand's pipe
having an ultraphobic surface "has utility as a gas fuel line." Office Act. 3.
Appellants argue that one of ordinary skill in the art would appreciate
that a fuel gas line or instrument gas line used in deep sea oil and/or gas
recovery operations possesses certain properties that make it particularly
suitable for the harsh operating conditions of the deep sea. Reply Br. 5.
Appellants assert that "those of ordinary skill in the art would appreciate that
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Appeal2017-010620
Application 13/218,095
not just any pipe may be used in deep sea oil and/or gas recovery
operations." Reply Br. 5. Appellants argue that Extrand does not disclose a
fuel gas line or an instrument gas line, much less "such a pipe for deep sea
oil and/or gas recovery operations." App. Br. 7; Reply Br. 5.
Because Appellants rely on the intended use recited in the preamble of
claim 1-"for use in a deep sea oil and/or gas recovery operation"-to
distinguish Extrand, we treat the preamble of claim 1 as a functional
limitation of the claim. Catalina Mktg. Int'! Inc. v. Coo/savings.com, Inc.,
289 F.3d 801, 808---09 (Fed. Cir. 2002) (holding that "clear reliance on the
preamble during prosecution to distinguish the claimed invention from the
prior art transforms the preamble into a claim limitation because such
reliance indicates use of the preamble to define, in part, the claimed
invention").
The initial burden of proof during ex parte patent examination rests
with the Examiner "to produce the factual basis for[] rejection of an
application under sections 102 and 103." In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984). Although claims directed to an apparatus must be
distinguished from the applied prior art in terms of structure rather than
function, to satisfy the functional limitations in an apparatus claim, the
Examiner has the burden of establishing that an apparatus taught by the prior
art is capable of performing the recited function. See, e.g., In re Schreiber,
128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
Although the Examiner relies on Extrand's disclosure of a pipe for
conveying a fluid having an ultraphobic surface, the Examiner does not
identify any disclosure in Extrand indicating that the pipe is a fuel gas line,
or indicating that the pipe is suitable for use as a fuel gas line. Nor does the
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Appeal2017-010620
Application 13/218,095
Examiner provide sound technical reasoning grounded in objective evidence
establishing that Extrand's pipe is capable of being used as a fuel gas line in
deep sea oil and/or gas recovery operations. The Examiner's assertion that
Hatton evidences that Extrand's pipe having an ultraphobic surface "has
utility as a gas fuel line"-based on Hatton's disclosure that a hydrophobic
conduit surface inhibits hydrate adhesion in the presence of gas-amounts to
an assertion that any conduit having a hydrophobic surface could be used as
a gas fuel line in deep sea oil and/or gas recovery operations. The Examiner,
however, does not provide objective evidence or sound technical reasoning
to support this assertion.
Consequently, the Examiner does not provide a sufficient factual basis
to show that the pipe disclose in Extrand is capable of functioning as a fuel
gas line in a deep sea oil and/ or gas recovery operation. 8 Piasecki, 7 45 F .2d
at 1472. It follows that the Examiner does not establish that Extrand
anticipates the article of claim 1 within the meaning of35 U.S.C. § 102(b).
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability")
We accordingly do not sustain the Examiner's rejections of claims 1,
2, and 9 under 35 U.S.C. § 102(b).
8 Although the Examiner asserts that "Appellant has not demonstrated that
the pipe of Extrand could not be used as a fuel gas line, and Appellant has
not demonstrated through the use of objective evidence that the pipe of
Extrand is incapable of functioning as a fuel gas line" (Ans. 6), the Examiner
bears the initial burden of providing a factual basis to support the rejection
under§ 102(b). Piasecki, 745 F.2d at 1472. Only if the Examiner meets this
initial burden of establishing a prima facie case of unpatentability does the
burden shift to the Appellants to show otherwise. Id.
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Appeal2017-010620
Application 13/218,095
Rejections II and III
Because the Examiner does not rely on any disclosure in the
additional prior art references applied in these rejections that cures the
deficiencies of the Examiner's reliance on Extrand discussed above (Office
Act. 4---6), we also do not sustain the Examiner's rejections of claims 3, 4, 6,
10, 11, and 13-19 under§ 103(a).
DECISION
We reverse the Examiner's rejection of claims 1, 2, and 9 under
35 U.S.C. § 102(b), and the Examiner's rejections of claims 3, 4, 6, 10, 11,
and 13-19 under 35 U.S.C. § 103(a).
REVERSED
7
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. DAVID SMITH, KRIP AK. V ARANAS!,
GARETH H. MCKINLEY, ROBERT E. COHEN, ADAM J. MEULER,
and HARRISON L. BRALOWER
Appeal2017-010620
Application 13/218,095
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and JANEE. INGLESE,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, dissenting.
Because I disagree with the holding that the preamble recitation, "[ a ]n
article for use in a deep sea oil and/or gas recovery operation" gives life and
meaning to the claim, 9 and because I find in Appellants' arguments no
citation of evidence of record supporting their statements regarding the
understanding of a person having ordinary skill in the art of the terms "a fuel
gas line" or "instrument gas line," I would affirm the appealed rejections.
Claim I-Appellants offer distinct substantive arguments only on the
basis of recitations in claim 1----does not require that the article be used
9 Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951) (a preamble is limiting
when it is "necessary to give life, meaning and vitality to the claims or
counts.")
Appeal2017-010620
Application 13/218,095
under conditions at which hydrates form, or even under conditions at which
hydrates are stable or metastable. Rather, it only requires that some
unspecified surface of the article have a greater than a specified receding
contact angle with water, and that hydrate adhesion be inhibited "in the
presence of oil and/or gas." Without further express limitations, these are
merely characteristics of that surface of the article. Moreover, in my view,
on the present record, the Examiner's characterizations of the fuel gas line or
instrument gas line as mere intended uses is supported by the plain language
of the claim. It is improper to argue patentability on the basis of limitations
that are neither recited nor inherent in a claim. In re Hiniker, 150 F.3d 1362,
1368 (Fed. Cir. 1998) ("Although operational characteristics of an apparatus
may be apparent from the specification, we will not read such characteristics
into the claims when they cannot be fairly connected to the structure recited
in the claims. See In re Self, 671 F.2d 1344, 1348 ... (CCPA 1982).")
Furthermore, Appellants have not directed our attention to definitions
in the Specification or in the prior art of record of the terms "fuel gas lines"
or "instrument gas lines" that distinguish them from the "fluid handling
components" described by Extrand. 10 What a person having ordinary skill in
the art would have understood a term to mean is a question of fact.
E.g., In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) ("[w]hat a
reference teaches is a question of fact") ( citation omitted). Questions of fact
are resolved according to the preponderance of the evidence of record. In re
Epstein, 32 F.3d 1559, 1564 (Fed. Cir. 1994) ("Preponderance of the
evidence is the standard that must be met by the PTO in making rejections.")
10 See Extrand, ,r,r 3, 48, for general descriptions.
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Application 13/218,095
(internal quote and citation omitted). Mere attorney argument will not
suffice when supporting evidence is required. In re Walters, 168 F.2d 79, 80
( CCP A 1948) ("statements of counsel in a brief cannot take the place of
evidence.") (citations omitted). 11 Moreover, Appellants have not shown
good cause why the elaborated arguments in the Reply Brief were not made
in the principal Brief on Appeal. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
While it is of course true that the PTO-hence, the Examiner ( and the
Board}--must establish a prima facie case of unpatentability, it has long
been the practice, as before other administrative agencies, that on appeal
from a final decision by a Primary Examiner, the initial burden is on the
Appellants to demonstrate harmful error by the Examiner in that rejection.
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("even assuming that the
11 The reliance by the Majority on Catalina Mktg Int 'l, Inc. v.
Coo/savings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) (Op. 5) for the
proposition that statements made during prosecution are relevant to claim
interpretation is inapt, as that case concerned the interpretation of claims of
an issued patent, not claims in an original application. While reliance on the
prosecution history to interpret a patented claim may be appropriate, the
purpose of examination is to recognize ambiguities, explore the scope and
breadth of language, and to "fashion claims that are precise, clear, correct,
and unambiguous." In re Zietz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
However, when, as here, the prosecution history does not reveal evidence of
a definition of a disputed term, Appellants' mere reliance on their claim
interpretation is of little probative value because such statements do not
serve as evidence of what a person having ordinary skill in the art would
have understood a term to mean. Cf In re Morris, 127 F.3d 1048, 1057
(Fed. Cir 1997) (Plager, J.) (finding in that case "[t]he prosecution history
... unhelpful in divining the interpretation sought by appellants .... Never
do the appellants particularly distinguish their claimed invention ( as
compared with their 'inventive concept,' whatever that means) from the
prior art.").
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Appeal2017-010620
Application 13/218,095
examiner had failed to make a prima facie case, the Board would not have
erred in framing the issue as one of "reversible error.") ( citing Ex parte Frye,
Appeal 2009---006013, at 9--10, 2010 WL 889747 (BPAI Feb. 26, 2010)
(precedential), available at
http://www. uspto. gov /ip/boards/bpai/ decisions/prec/fd09006013. pdf).
In the present case, Appellants have failed to demonstrate harmful
error in the appealed rejection. I would therefore affirm, and I must, with
respect, dissent from the Decision of the Majority.
4