Ex Parte Swiatowy et al

Patent Trial and Appeal Board

Dec 9, 2016

12885717 (P.T.A.B. Dec. 9, 2016)

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.
12/885,717 09/20/2010 Jeffrey Swiatowy ITW01-040-US
(22951-US)
9222
109612 7590 12/13/2016
Klintwnrth & Rnzenhlat TP T T C anH
EXAMINER
Illinois Tool Works Inc. TOLEDO-DURAN, EDWIN J
19 North Green Street
Chicago, IL 60607 ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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):
docketing @ kandrip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY SWIATOWY,
JACOB WILLIAMS, and ALEXANDER GIBERMAN
Appeal 2015-002543
Application 12/885,717
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—20. Appeal Br. 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-002543
Application 12/885,717
CLAIMED SUBJECT MATTER
Claims 1 and 14 are independent. Claim 1 is reproduced below.
1. A device for preparing a submerged pipe, said
device comprising
a platform,
a clamp on said platform,
said clamp selectively clamping and releasing around a
circumference of said submerged pipe,
a frame moveably attached to said platform wherein said
frame is moveable in an arc of at least three hundred sixty
degrees around said submerged pipe and perpendicular to a
central longitudinal axis of said submerged pipe,
a first machine on said frame,
said first machine retaining a first tool rotatable about a
first axis extending generally perpendicular and radial to the
central longitudinal axis of said submerged pipe,
said first tool adapted to engage a first surface of said
submerged pipe,
a second machine on said frame,
said second machine retaining a second tool rotatable
about a second axis extending generally perpendicular and
radial to the central longitudinal axis of said submerged pipe,
and
said second tool adapted to engage a second surface of
said submerged pipe.
REJECTIONS
Claims 1—10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Motes-Conners (US 4,091,514, iss. May 30, 1978) and
Home (WO 2007/102744 Al, pub. Sept. 13, 2007).
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Motes-Conners, Home, Rose (US 5,199,226, iss. Apr. 6, 1993), and
van Voskuilen (US 4,552,594, iss. Nov. 12, 1985).
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Appeal 2015-002543
Application 12/885,717
Claims 14 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Motes-Conners and Lawler (US 2008/0135232 Al, pub.
June 12, 2008).
Claims 16 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Motes-Conners, Lawler, Rose, and van Voskuilen.
Claims 15 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Motes-Conners, Lawler, and Tucker (US 6,539,778 B2,
iss. Apr. 1, 2003).
ANALYSIS
Claims 1—10, 12, and 13 as unpatentable over Motes-Conners and Horne
Claim 1
The Examiner found that Motes-Conners teaches a device, as recited
in claim 1, except a second machine having a second tool rotatable about a
second axis and extending generally perpendicular and radial to a central
longitudinal axis of a submerged pipe. Final Act. 3^4. The Examiner found
that Home discloses a machine (beveling cutting tool 109) that rotates about
an axis perpendicular and radial to an axis of a submerged pipe. Id. at 4.
The Examiner found that a skilled artisan would understand that Home’s
milling tool 109 (Figure 8) is oriented to rotate perpendicularly and move
radially to the center longitudinal axis of the pipe. Ans. 16. The Examiner
determined it would have been obvious to add a second machine of Home to
Motes-Conners to mill the outer surface of a submerged pipe, remove pipe
coatings, simplify operations, and save time. Final Act. 4; Ans. 17. The
Examiner also determined it would have been obvious to duplicate the mill
of Motes-Conners using routine skill to provide a second machine for the
same reasons of time savings and simplification of operations. Ans. 16—18.
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Application 12/885,717
Appellants argue that Motes-Conners does not teach or suggest two
tools rotatable about two axes with both axes generally perpendicular and
radial to a central longitudinal axis of a submerged pipe, and Home does not
teach the orientation of the single tool 109. Appeal Br. 15. Appellants also
argue that even if Homer’s single tool 109 could be rotatable about an axis
that is perpendicular and radial to a longitudinal axis of a pipe, Home only
teaches one such tool and, therefore, is cumulative to Motes-Conners. Id. at
15—16. Appellants further argue that nothing in Motes-Conners or Home
teaches or suggests having two tools rotatable with both axes perpendicular
and radial to a central longitudinal axis of a pipe, as claimed. Id. at 16.
Appellants also argue that the Examiner’s reliance on generalized benefits
that may result from the modification is not sufficient. Id. at 17.
The Examiner’s reason for modifying Motes-Conners to include a
second machine and tool rotatable about a second axis extending generally
perpendicular and radial to a central longitudinal axis of a submerged pipe is
based on a rational underpinning. The Examiner proposes to add a second
machine based on Home’s teaching of a single tool 109 that provides milling
and beveling functionalities to remove coatings, simplify operations, and
save time. Final Act. 4; Ans. 17. The basis for this reason is supported by a
preponderance of evidence based on Home’s express teachings that movable
milling and beveling tool 109 mills outer pipe surfaces to remove coatings,
welding seams, and other defects, and also finishes and bevels end surfaces
of a pipe. Home, 6:6—10, claim 9, Fig. 8. This multi-functional tool would
increase efficiency, save time, and simplify operations, and thus provide the
motivation for the proposed change. E.g., DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
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Appeal 2015-002543
Application 12/885,717
The Examiner’s alternate reason for duplicating milling machine 92 of
Motes-Conners as an obvious duplication of parts is supported by rational
underpinning as well. Although per se rules of obviousness are disfavored,
here, the Examiner proposes to duplicate Motes-Conners’s milling machine
as a simple, obvious way to achieve the same objectives as adding a second
machine from Home. Ans. 16—17. This reasoning also is supported by a
rational underpinning for the reasons discussed above. A second machine
based on milling machine 92 and/or beveling and milling machine 109 of
Home improves the functionality and efficiency of Motes-Conners’s device
by reducing the need for multiple separate devices and extra time-consuming
steps, such as the preliminary cleaning of pipe coatings before milling, as
Motes-Conners must do in the absence of a second machine. Id. at 16—18.
The Examiner’s finding that Home’s milling and beveler 109 meets
the rotational axis and radial limitations of the second machine is supported
by a preponderance of evidence. See id. at 16. We agree with the Examiner
that a skilled artisan would understand Figure 8 of Home and accompanying
disclosure to teach a milling/beveling tool 109 with a rotational axis and a
radial orientation as claimed. Figure 8 shows tool 109 in a radial orientation
spaced away from an outer surface of pipe 101 so radial movement toward
pipe 101 would be required to engage the outer pipe surface for the milling
and beveling operations disclosed in Home. See Home, claim 9. Moreover,
Appellants admit that mills can rotate about a wide range of angles (Appeal
Br. 15), so that it would have been obvious to modify Home using routine
skill in the art where Appellants do not disclose any unexpected results or
criticality for the claimed orientation of the second (or first) machine.
Thus, we sustain the rejection of claim 1.
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Appeal 2015-002543
Application 12/885,717
Claims 2 and 3
The Examiner also determined that a modified Motes-Conners device
would render obvious a rotatable tool that includes a milling tool and a bevel
cutter (claim 2) and a tool with teeth and a frustoconical surface (claim 3)
because such tools and shapes are notoriously well-known in the art as
evidenced by Smith (U.S. Patent No. 2,429,375). Final Act. 4; Ans. 19—20.1
Appellants argue that Motes-Conners fails to teach a machine with “a
rotatable tool that includes both a milling tool and a bevel cutter,” as recited
in claim 2. Appellants also argue that none of the references cited by the
Examiner in taking Official Notice teach or disclose these limitations, so the
Examiner is relying on personal knowledge. Appeal Br. 18—19, 20—21.
Appellants’ arguments are not persuasive in view of Smith’s teaching
of a tool that includes drill “D” with teeth for milling and countersink 11 for
beveling a work piece and Home’s milling-beveling tool 109. Smith, 2:21—
47, Fig. 1; Home, claim 9. Appellants’ arguments that the Examiner relied
on personal knowledge (Reply Br. 9; Appeal Br. 18—20) are not persuasive
in view of this evidence. Appellants’ conclusory argument that none of the
references disclose claims 2 and 3 (Appeal Br. 19-21) are unpersuasive for
similar reasons. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Thus, we sustain the rejection of claims 2 and 3.
Claims 6 and 8
The Examiner found that Motes-Conners, as modified, teaches first,
second, and third machines with each performing different functions (claim
6) including the five preparation steps recited in claim 8. Final Act. 5—6.
1 The Examiner cited Smith to support the Examiner’s taking of Official
Notice that such features are well-known. See Ans. 19-20.
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Application 12/885,717
Appellants argue that Motes-Conners discloses two tools for pipe
preparation, and Home only discloses a single tool. Appeal Br. 22. Asa
result, Appellants argue that neither reference teaches or suggests a device
with three machines and three tools that perform five steps on a submerged
pipe as recited in claims 6 and 8. Id. at 22—24; see Reply Br. 11—12.
The Examiner’s findings that Motes-Conners and Home teach and
render obvious a device with three machines that perform five different pipe
preparation steps is supported by a preponderance of evidence. As discussed
above, Motes-Conners, as modified by Home or by obvious duplication, has
the claimed first and second machines. Motes-Conners also includes pipe
cutter 102, which is “a third machine.” These three machines can perform
five preparation steps. Appellants’ arguments that neither reference teaches
three machines or five steps do not address these modifications of Motes-
Conners, and thus do not persuade us of error in the Examiner’s findings or
determination of obviousness of claims 6 and 8. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice as set forth in Ex
Parte Frye of requiring appellants to identify error in a rejection); Ex Parte
Frye, 94 USPQ 2d 1072, *4 (BPAI 2010) (precedential) (a panel reviews
rejections for error based on the issues identified by an appellant). Merely
restating claim limitations and asserting that the limitations are not found in
the prior art does not identify error in a rejection. See Lovin, 652 F.3d at
1357; 37 C.F.R. § 41.37(c)(l)(iv).
Thus, we sustain the rejection of claims 6 and 8.
Claim 9
The Examiner found that a modified Motes-Conners device has three
machines moving independently radially, as recited in claim 9. Final Act. 6.
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Application 12/885,717
Appellants’ arguments that Home does not teach a radial orientation
of tool 109 and Motes-Conners lacks three such machines (Appeal Br. 25)
are not persuasive for the reasons discussed above for claim 1. Appellants’
conclusory argument that the Examiner’s reliance on a duplication of parts
rationale is deficient also is not persuasive of error for the reasons discussed
above for claim 1. See Reply Br. 12—13; In re Jung, 637 F.3d 1356, 1365.
In this regard, Motes-Conners teaches first and second machines 92, 102 that
move radially, as recited in claim 9. Motes-Conners, 4:38—68. Duplication
of milling machine 92, or adding Home’s tool 109, as proposed for claim 1,
provides a third machine that moves independently radially, as claimed.
Thus, we sustain the rejection of claim 9.
Claim 10
The Examiner found that Motes-Conners discloses a mechanical lock
for locking the clamp against movement in the event of loss of hydraulic
pressure from a source. Final Act. 6. The Examiner reasoned that release 35
functions as a lock and can be latched and unlatched by mechanical means
or hydraulic means. Id.
Appellants argue that Motes-Conners does not teach a mechanical
lock that locks the jaws of a clamp against movement in the event of loss of
hydraulic pressure from said source as recited in claims 10 and 14. Appeal
Br. 26—29. Appellants also argue that if the components relied on by the
Examiner as the mechanical lock are powered by hydraulic means, then the
components would not function with the loss of hydraulic means and would
not lock without hydraulic pressure. Reply Br. 13—14. Appellants further
argue that neither handles 38, 39 or toggle link 35 are mechanical locks.
Appeal Br. 29.
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Appeal 2015-002543
Application 12/885,717
The Examiner has established by a preponderance of evidence that
Motes-Conners includes a mechanical lock, as recited in claim 10. Motes-
Conners teaches that fixed handles 38, 39 may be used to manipulate toggle
link 35 manually, if desired, to disengage clamps 19, 20 from pipe 18.
Motes-Conners 3:7—10, Fig. 2. The Examiner reasonably found that these
mechanical elements function as a lock that can unlock and lock clamps 19,
20 against pipe 18 without reliance on hydraulic pressure and thus satisfies
the requirements of claim 10. Ans. 22, 24. Appellants do not point to any
recited structural or functional features that define the claimed “mechanical
lock” over the lock disclosed in Motes-Conners. Appellants’ recitation of
the language of claim 10 and bare assertion that Motes-Conners does not
teach these features does not provide effective argument, and thus does not
persuade us of error in the Examiner’s findings in this regard.2
Thus, we sustain the rejection of claim 10.
Claims 4, 5, 7, 12, and 13
Appellants do not present separate arguments for dependent claims 4,
5, 7, 12, or 13. See Appeal Br. 13—31. Therefore, we sustain the rejection of
those claims as unpatentable over Motes-Conners and Home.
2 Although Appellants disclose an embodiment where rodlock device 410
automatically clamps around rod 416 to prevent longitudinal movement of
rod 416, claim 10 recites a mechanical lock for locking the clamp against
movement. This intended use does not require a mechanical lock to lock
automatically or in a way that excludes the manually-activated locking
feature of Motes-Conners. Moreover, claim 10 does not specify how the
hydraulic pressure is applied to the device or even how the hydraulic
pressure affects the clamps. Therefore, claim 10 encompasses a mechanical
lock that locks a clamp against movement as in Motes-Conners.
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Appeal 2015-002543
Application 12/885,717
Claim 11 as unpatentable over Motes-Conners, Horne, Rose, and
van Voskuilen
Appellants do not present arguments for the rejection of claim 11. See
Appeal Br. 13—33. Therefore, we summarily sustain this rejection.
Claims 14 and 18 as unpatentable over Motes-Conners alone or with Lawler
The Examiner found that Motes-Conners discloses a submerged pipe
preparation device as recited in independent claim 14, having a plurality of
machines 92, 102 and a mechanical lock for locking the moveable jaw of the
clamp against movement in the event of loss of hydraulic pressure from the
source of hydraulic fluid. Final Act. 14. The Examiner found that the lock
is latched and unlatched by hydraulic means, and manually by handles 38,
39, and determined it would have been obvious to latch and unlatch the lock
mechanically because providing a mechanical or automatic means involves
routine skill in the art to achieve the same result. Id. at 14—15; Ans. 24—26.
The Examiner also found that Lawler discloses a machine (Figure 4)
that retains a second tool for rotation about an axis generally perpendicular
to the longitudinal axis of a submerge pipe as recited in claims 14 and 18,
which depends from claim 14. Final Act. 10—11. The Examiner determined
it would have been obvious to add Lawler’s machine to Motes-Conners to
increase the utility of Motes-Conners’s device to perform more preparation
tasks for submerged pipes. Id. at 11.
Appellants argue that Motes-Conners does not teach another machine
as the Examiner admits for claim 1. Appeal Br. 27. This argument is not
persuasive because claim 14 does not require the plurality of machines to
have a rotatable perpendicular axis, as does claim 1 for the first and second
machines. Thus, cutting machine 102 of Motes-Conners is another machine.
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Appeal 2015-002543
Application 12/885,717
The Examiner’s reliance on Lawler to teach a third machine with a
rotatable perpendicular axis, as recited in dependent claim 18, does not alter
or detract from the fact that Motes-Conners teaches two machines that move
radially and include rotatable tools. Thus, Motes-Conners satisfies claim 14,
which recites a plurality of machines that perform a different preparation
step to a surface of the submerged pipe, by teaching milling machine 92 with
cutting tool 95 that works on weld seam 90, and cutting machine 102 that
moves around a circumference of pipe 18 with cutting blade 106. Motes-
Conners, 4:39—68, Fig. 4. Appellants’ conclusory arguments that Motes-
Conners does not disclose “another machine” do not persuade us of error in
the Examiner’s supported findings that Motes-Conners does disclose another
machine, as recited in claim 14. Appeal Br. 27.
Appellants’ arguments that Motes-Conners does not disclose a
mechanical lock and Lawler does not remedy this deficiency (Appeal Br.
28—32) are not persuasive for the reasons discussed above for claim 10.
Thus, we sustain the rejection of claims 14 and 18.
Claims 16 and 19 as unpatentable over Motes-Conners, Lawler, Rose, and
van Voskuilen
Appellants do not present arguments for the rejection of claims 16 and
19. See Appeal Br. 13—33. Therefore, we summarily sustain this rejection.
Claims 15 and 20 as unpatentable over Motes-Conners, Lawler, and Tucker
Claim 20 recites “[t]he device of claim 14 and further comprising a
mechanical device operable from an independent submersible for rotating
the frame in the event of loss of hydraulic power.” The Examiner relied on
Tucker to teach this feature as submersible subsea vehicle 18 with its robotic
arm 19 used to operate undersea manifold 12. Final Act. 13—14.
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Application 12/885,717
Appellants argue that claim 20 requires the device of claim 14 further
to include a mechanical device, and does not recite a separate submersible as
the Examiner interpreted claim 20 to require an independent submersible
such as Tucker. Appeal Br. 32—33. We agree with the Examiner that a plain
meaning and the broadest reasonable interpretation of claim 14 recites a
separate mechanical device in addition to the device of claim 14. Claim 14
does not recite “the device of claim 14 further comprising” or “wherein the
device of claim 14 further comprises,” such that the mechanical device is
claimed as a part of the device of claim 14. Ans. 27. Instead, claim 20
recites the device of claim 14 “and further comprising a mechanical device,”
so that the broadest reasonable interpretation includes the device of claim 14
and another mechanical device in addition to the device of claim 14.
Thus, we sustain the rejection of claim 20. Because Appellants do not
present arguments for claim 15, we also sustain the rejection of that claim.
DECISION
We affirm the rejections of claims 1—20.
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
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