Ex Parte White et al

Patent Trial and Appeal Board

Jul 28, 2016

12673005 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/673,005 02/10/2010 James Eden White
64833 7590 07/28/2016
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
OTE-031101
(CMRN:0045)
CONFIRMATION NO.
4790
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAILDATE DELIVERY MODE
07/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES EDEN WHITE and EDMUND PETER MCHUGH
Appeal2014-005201
Application 12/673,005
Technology Center 1700
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
N. WHITNEY WILSON, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005201
Application 12/673,005
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 17-25 and 27-37. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention "relate[ s] generally to systems for reducing heat loss from
subsea structures." App. Br. 2 (citing Spec.3 i-fi-f 14, 15). Claims 17, 19, and 35 are
representative of the invention:
17. A system, comprising:
a surface-rated insulative paint; and
a sub sea sealant configured to protect the surface-rated
insulative paint.
19. The system of claim 1 7, wherein the subsea sealant
comprises a subsea-rated paint.
35. A system, comprising:
a component of a subsea system configured to extract oil or gas
from a reservoir;
a surface-rated insulative paint disposed on the component,
wherein the surface-rated insulative paint is susceptible to break down
or reduce effectiveness in a subsea environment or a corrosive
environment; and
a protective structure to protect the surface-rated insulative
paint from the subsea environment or the corrosive environment,
wherein the protective structure is resistant to the subsea environment
or the corrosive environment.
1 Appellants identify the real party in interest as Cameron International
Corporation. Appeal Brief filed August 12, 2013 ("App. Br."), 2.
2 Final Office Action mailed March 12, 2013 ("Final Act.").
3 Specification filed February 10, 2010.
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Application 12/673,005
The Examiner maintains the following rejections:
1. Claims 17-25 and 27-29 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. Claims 19 and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. Claims 17-22, 24, 25, 28-32, and 34 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Lively (U.S. Patent No. 6,397,895 Bl, issued June 4,
2002).
4. Claims 23, 27, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lively in view of Kissel (U.S. Patent No. 5,166,248, issued
November 24, 1992).
5. Claims 35-37 are rejected under 35 U.S.C. § 102(b) as anticipated by
Gerholt et al. (U.S. Patent No. 3,992,237, issued November 16, 1976 ("Gerholt")).
Rejections under 35 U.S.C. § 112, 2nd paragraph
The Examiner finds the scope of the term "surface-rated," as used in claims
17-25 and 27-29, is unclear and, therefore, that the claims are indefinite under
35 U.S.C. § 112, 2nd paragraph. Ans. 2. The Examiner also determines claims 19
and 20 are indefinite due to the use of the term "subsea-rated." Id. at 3. The
Examiner contends "it is unclear how the paint or sealant is 'rated' and who does
the rating." Id. at 7.
Appellants argue the scope and meaning of "surface-rated" and "subsea-
rated" would be understood by one of ordinary skill in the art from Specification
paragraphs 14 and 23, respectively. App. Br. 7.
The Examiner, in response, acknowledges that the Specification describes
"one embodiment" in which the "insulation may be a paint not intended, designed,
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Application 12/673,005
or capable of enduring the harsh environment in seawater, below the sea, and/or
exposure to mineral deposits" (Spec. i-f 14). Ans. 6. The Examiner maintains,
however, that it is unclear whether the claims are intended to encompass only the
embodiment described in paragraph 14, and, further, contends
the term "intended" indicates that the only difference between a
"surface - rated" paint and a paint that is not "surface - rated" is the
intended uses of the paints, instead of a difference in the chemical
properties of the paints. As there is no[] difference in chemical
properties, the patentable difference between a "surface - rated" paint
and a paint that is not "surface rated" is unclear.
Id. The Examiner also acknowledges that the Specification describes subsurface
sealants as including "a sealant or paint that is rated for a subsea or corrosive
environment" (Spec. i-f 23). Ans. 7. The Examiner maintains, however, that "the
meaning of the term 'rated' is unclear because it is unclear how the sealant
is 'rated' and by whom the rating is done." Id.
Appellants argue that "by reading the term 'intended' [in Specification
paragraph 14] in context with the rest of the application; one of ordinary skill in the
art would clearly recognize that the terms 'surface-rated' and 'subsea-rated' refer[]
to paints with different physical properties." Reply Br. 2.
"[T]he definiteness of the [claim] language employed must be analyzed-
not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235
(CCP A 1971 ). General principles of claim construction apply when determining
indefiniteness. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332-33
(Fed. Cir. 2010).
According to the Specification, an example of a "surface-rated insulation" is
"a paint not intended, designed, or capable of enduring the harsh environment in
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Application 12/673,005
seawater, below the sea, and/or exposure to mineral deposits." Spec. if 14. The
Specification discloses that "[a] thin layer of ... thermal insulating paint may
provide insulation equivalent to several inches of traditional insulation. For
instance, less than a millimeter of thermal insulating paint may provide insulation
comparable to six inches of foam insulation." Id. f 21. An example of a "surface-
rated thermal insulating paint [is] a resin containing highly porous particles
obtained by drying a wet sol-gel, such as Nansulate®, available from Industrial
Nanotech, Inc." Id. if 22. The Specification discloses that when components
coated with a surface-rated thermal insulating paint are used in a subsea
environment,
the paint may be applied and then sealed off from the seawater,
chemicals, oil and gas, and other harsh substances that may break
down or reduce the effectiveness of the paint. The sealing may be
provided by concrete, cement, casings, housings, or other subsurface
sealants (e.g., paints). Other subsurface sealants may include, for
example, a sealant or paint that is rated for a subsea or corrosive
environment. The subsurface sealant may be insulative or merely
resistant to the surrounding environment, such as, for example,
seawater, chemicals, oil, gas, etc .... Accordingly, the surface-rated
thermal insulating paint may be utilized in a location where its use
would otherwise be precluded.
Id. if 23. According to the Specification, "[t]raditional insulating techniques are
not generally useful in this application as molded insulation, such as foam,
polymer, and resin, cannot, for example, support the load of the surrounding
casings." Id. if 24.
A claim is considered indefinite under 35 U.S.C. § 112, second paragraph, if
it does not reasonably apprise those skilled in the art of its scope. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005).
Having considered the claim language in light of the Specification, we agree with
Appellants that one of ordinary skill in the art would understand the term "surface-
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Application 12/673,005
rated" refers to an insulative paint having a composition that is capable of
withstanding exposure to environmental conditions above ground, but would
deteriorate (i.e., break down or become less effective) in a period of time
considered unacceptable in the art if used on components that are underground or
below the sea due to continuous exposure to corrosive minerals, etc. By contrast,
the ordinary artisan would appreciate that the term "subsea-rated" refers to a paint
that is capable of withstanding (i.e., maintaining its effectiveness after) prolonged
exposure to water and minerals contained in the sea.
Accordingly, we reverse the Examiner's rejections under 35 U.S.C. § 112,
second paragraph.
Rejection of claims 17-22, 24, 25, 28-32, and 34 under 35 U.S.C. § 102(b)
as anticipated by Lively and rejection of claims 23, 27, and 33 under
35 U.S.C. § 103(a) as unpatentable over Lively in view of Kissel
Lively relates to an insulative coating for a submerged pipe used in the
transport of fluids such as natural gas, crude oil, chemicals, and the like. Lively,
1:11-13; 1:17-19; 5:51-55; Abstract. The pipe may also be used underground or
above ground. Id. at 5:56-57. The Examiner finds that when the pipe is used
underground, the protection comprises concrete. Ans. 4. Lively describes various
insulative coatings that are suitable for use, including CC-100, described as a
viscous solution of ceramic and acrylic latex that can be applied by rolling,
brushing, or spraying. Lively 3:23-25, 55-57. Lively discloses that the
"insulative coating may be placed on a pipe's exterior circumference or surface,
interior circumference or surface, or both." Id. at 1: 15-17, 53-55. Lively further
discloses that an abrasion resistant coating or other top coat (e.g., a corrosion
resistant coating) can be applied to the insulative coating to "provide[] a desired
protection of the insulation layer or layers." Id. at 5:27-28, 34--37; see also id. at
1: 14--15, 53-56.
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Application 12/673,005
Appellants argue Lively does not anticipate the claims because Lively's
system comprises a subsea-rated insulation and not a surface-rated insulative paint
protected by a subsea sealant as recited in independent claims 17, 22, and 30. App.
Br. 9-10. In support of this argument, Appellants note that Lively describes the
abrasion resistant coating (i.e., top coat) as optional. Id.
Although the broadest reasonable interpretations of independent claims 1 7,
22, and 30 require, at a minimum, an insulative paint having properties that render
it capable of use in surface applications, the claims, as drafted, do not preclude an
insulative paint that possesses additional properties rendering the paint capable of
use in a harsher environment, such as a subsea environment. Appellants have not
provided persuasive evidence to show that Lively' s insulative coating, even if
subsea-rated, would not function effectively as an insulative paint when used in
surface applications. In other words, Appellants have not provided persuasive
evidence to show that an insulative paint having a subsea-rating would not meet
the requirements of a surface-rated insulative paint.
Accordingly, we sustain the rejection of claims 17-22, 24, 25, 28-32, and 34
under 35 U.S.C. § 102(b) as anticipated by Lively. Appellants' traversal of the
Examiner's rejection of claims 23, 27, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Lively in view of Kissel is limited to their contention that Kissel
fails to cure the deficiencies of Lively. See App. Br. 13. Therefore, we likewise
sustain this rejection.
Rejection of claims 35-37 under 35 U.S.C. § 102(b)
as anticipated by Gerholt
Gerholt relates to a pipe for transporting fluids such as liquefied
hydrocarbons over long distances. Gerholt 1 :26-28. The exterior of the pipe is
insulated with a layer of foam plastic material applied by spraying a foamable
plastic composition. Id. at 1:54--55. A tape of thermoplastic material covers the
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Application 12/673,005
layer of foam plastic material in a manner that "ensure[ s] a perfectly water tight
and gas tight sealing of the foam plastic layer." Id. at 1 :45--49.
Appellants argue Gerholt does not anticipate the claims because Gerholt
utilizes a plastic foam to cover a metal pipe and the Specification defines the term
"paint," as used in the claims, as a substance that differs from foams. App. Br. 12
(citing Spec. i-fi-121, 24); see also Reply Br. 4.
The Examiner contends one of ordinary skill in the art would understand
the Specification as distinguishing paint from molded insulation. Ans. 9. The
Examiner notes that paragraph 22 of the Specification states that the paint may be a
resin, and maintains one of ordinary skill in the art would not understand the
description in the Specification as excluding polymeric compositions that are
coated onto a pipe and subsequently foamed, as described in Gerholt. Id.
We agree with Appellants that the Specification clearly distinguishes "paint"
from foams. See Spec. i-fi-121, 24. The fact that Gerholt's composition may not be
a foam prior to application to a pipe is irrelevant, since claims 35-37 are directed
to the completed system, i.e., to a system including the coated components.
Accordingly, we reverse the Examiner's decision to reject claims 35-37.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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