Gaston Mazzaferro et al.

Patent Trials and Appeals Board

Apr 1, 2020

12954588 - (D) (P.T.A.B. Apr. 1, 2020)

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.
12/954,588 11/24/2010 Gaston Mazzaferro MCOLEX1.012AUS 5692
20995 7590 04/01/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GASTON MAZZAFERRO, GABRIEL E. CARCAGNO,
TATSUO ONO, and NESTOR J. SANTI
__________

Appeal 2018-002656
Application 12/954,588
Technology Center 3600
____________

Before MICHAEL L. HOELTER, BRADLEY B. BAYAT, and
FREDERICK C. LANEY, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3–7, 10, and 12–25, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held on February 28, 2020, a transcript of which has been
entered into the record (“Tr.”).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Tenaris Connections B.V. as the real party in
interest. Appeal Br. 3.
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Application 12/954,588

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A threaded joint for pipes, comprising:
a pin and a box;
the pin comprises:
at least one first end portion that includes a first
end surface; and
a male threaded portion proximate the at least one
first end portion, the box comprises:
at least one second end portion that includes a
second end surface extending along a plane generally
traverse to a longitudinal axis of the box, wherein the
second end surface does not substantially face against
any surface of the pin;
at least one dope expansion groove; and
a female threaded portion proximate the at least
one second end portion; the male and female threaded
portions configured to mate at a thread taper;
wherein the pin comprises a first pin sealing surface on
the first end portion in the vicinity of the first end surface on a
first side of the male threaded portion and a second pin sealing
surface proximate to a second side of the male threaded portion
opposite to the first side of the male threaded portion;
wherein the box, on a first side of the female threaded
portion, comprises a first box sealing surface and an abutment
shoulder, configured to mate with the first pin end surface and
having a second box sealing surface close to a second side of
the female threaded portion opposite to the first side;
wherein the first pin sealing surface is configured to
mate with the first box sealing surface to form an internal
metal-to-metal seal and the second pin sealing surface is
configured to mate with the second box sealing surface to form
an external metal-to- metal seal, wherein the internal and
external seals comprise the contact of one toroidal sealing
surface with one frusto-conical sealing surface, and wherein the
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Application 12/954,588

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dope expansion groove is disposed axially between the internal
and external metal-to-metal seals;
wherein nominal pipe wall thickness is greater than
about 0.5 inches;
wherein the first box sealing surface has a different taper
than the second pin sealing surface;
wherein the taper of the frusto-conical sealing surfaces
of pin and box is greater than the thread taper; and
wherein an annular groove volume V in the mm scale of
the at least one dope expansion groove comprises a unitless
magnitude, the unitless magnitude of the volume being in the
mm scale, that varies within the range 0.1 * (a unitless
magnitude of an outer diameter (OD), the unitless magnitude of
the outer diameter being in the mm scale)2 < V < 0.5 * (the
unitless magnitude of the outer diameter, the unitless
magnitude of the outer diameter being in the mm scale)2 thus
the unitless magnitude of V is within 10% and50% of the
unitless magnitude of the outer diameter when V and OD is in
the mm scale, wherein V is proportional to OD.

REJECTIONS
Claims 1, 3–7, 10, and 12–25 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 3–7, 10, and 12–25 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
OPINION
Claim Construction
Independent claims 1 and 18 recite, in part:
wherein an annular groove volume V in the mm scale of the at
least one dope expansion groove comprises a unitless
magnitude, the unitless magnitude of the volume being in the
mm scale, that varies within the range 0.1 * (a unitless
magnitude of an outer diameter (OD), the unitless magnitude of
the outer diameter being in the mm scale)2 < V < 0.5 * (the
unitless magnitude of the outer diameter, the unitless

Appeal 2018-002656
Application 12/954,588

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magnitude of the outer diameter being in the mm scale)2 thus
the unitless magnitude of V is within 10% and50% of the
unitless magnitude of the outer diameter when V and OD is in
the mm scale, wherein V is proportional to OD.
Appeal Br. 19, 21; Claims App.
The rejections under 35 U.S.C. § 112 are based upon the Examiner’s
interpretation of this limitation. In particular, the Examiner takes issue with
using the terms “unitless” and “mm scale,” and asserts that it is “unclear
how an equation can equate or compare different units, one in two
dimensions, the other in three dimensions.” Final Act. 8.
“[A] claim construction analysis must begin and remain centered on
the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The
Specification does not define the term “unitless.” Irrespective, “the words of
a claim ‘are generally given their ordinary and customary meaning.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). The “ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art.”
Id. at 1313.
The ordinary and customary meaning of the term “unitless” is
“[h]aving no units of measurement; such as a ratio or percentage of two
numbers which have the same units.”2,3 The claim language explicitly

2 https://www.yourdictionary.com/unitless (last visited March 20, 2020).
3 When asked during oral hearing if Appellant agreed with this definition of
the term “unitless,” Appellant stated “[t]hat seems correct, Your Honor.” Tr.
24.

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recites that the outer diameter (OD) and volume (V) are in the mm scale,
“wherein V is proportional to OD.” See supra. Paragraph 38 of the
Specification discloses:
The volume of each dope expansion annular groove, measured
in mm3, may vary within the range between about 10% and
about 50% of the square of the nominal external diameter (OD)
of the pipe, where their volume is determined by the following
empirical formula:

0.1 * (OD)2 < VOLUME < 0.5 * (OD)2

where OD is given in mm and VOLUME is given in mm3.
Based on the definition of the term “unitless,” the recitation that “V is
proportional to OD,” and the disclosure in the Specification supra, we
interpret the values given in the above-discussed equation are unitless, which
provide a proportional relationship between outer diameter of the pipe and
volume of the dope expansion annular groove. A person of ordinary skill in
the art would understand that the dimensions OD and V have the same
general unit in the mm scale, such that the outer diameter would be linear
millimeters (which is squared) and volume would be cubic millimeters. Tr.
7 (“So we want both the outer diameter to be measured and the volume to be
measured in, what we call, the millimeter scale. So, essentially, just
everything has the same base units.”). Because the claim requires
comparing only the unitless magnitude of OD2 and V, it is irrelevant that one
unit would be in square millimeters and the other unit in cubic millimeters.
Appeal Br. 11; Tr. 25. In other words, the claimed equation “does not
provide a direct relationship between V and OD, but instead provides a
proportional relationship” of numeric values only, regardless of unit.
Appeal Br. 11.

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Written Description Rejection
The Examiner maintained the rejection under 35 U.S.C. § 112, first
paragraph, on the ground that the original disclosure fails to provide
adequate written description support for claims 1, 3–7, 10, and 12–25. Ans.
7. In particular, the Examiner found the Specification does not sufficiently
support Appellant’s claim limitations because: (1) “reciting that the groove
volume V is in the mm scale . . . improperly broadens the claim by allowing
the volume V to be a value in millimeters, square millimeters, cubic
millimeters, or all three”; (2) reciting “‘the unitless magnitude of the volume
being in the mm scale’ improperly broadens the claim by allowing the
volume to be a value in millimeters, square millimeters, cubic millimeters,
or all three”; and (3) reciting “‘the unitless magnitude of V is within 10%
and 50% of the unitless magnitude of the outer diameter when V and OD is
in the mm scale, wherein V is proportional to OD,’ qualifying the volume V
to be in mm scale improperly broadens the claim by allowing the volume V
to be a value in millimeters, square millimeters, cubic millimeters, or all
three.” Ans. 7–8. In each of these instances, the Examiner acknowledged
that “[t]here is only support for the volume V to be in cubic millimeters
(mm3).” See id.
Alleging error in the rejection, Appellant “agrees that the volume V
should be in mm3 and volume cannot be in non-volume units of millimeters,
square millimeters, or multiple types of millimeters. A person having
ordinary skill in the art would understand that volume is in cubed units.”
Reply Br. 5. We agree with Appellant.
Here, the Examiner acknowledged that the Specification describes
volume in cubic millimeters, but erroneously took issue with the claim
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describing volume in the “mm scale” because “it broadens the claim by
allowing the volume V to be a value in millimeters, square millimeters,
cubic millimeters, or all three.” Ans. 7–8. One of ordinary skill in the art
would understand that volume is defined as “the amount of space, measured
in cubic units, that an object or substance occupies.”4 An artisan would
interpret “volume being in the mm scale” to mean that the unit of
measurement for volume is in millimeters, and as such, understand that
volume is measured by multiplying in millimeters the length, width, and
height, so the unit of measure for volume is cubic millimeters; thus, we find
the Examiner’s rejection of the term “mm scale” as unsupported and
broadening to be baseless. For this reason, a person of ordinary skill in the
art reviewing the disclosure would have known that Appellant was in
possession of the claimed subject matter as of the filing date.
Accordingly, we do not sustain the rejection of claims 1, 3–7, 10, and
12–25 as failing to comply with the written description requirement.

Indefiniteness Rejection
The Examiner determined that claims 1, 3–7, 10, and 12–25 are
indefinite because: (1) “[t]he phrase ‘in mm scale is unclear”; (2) “how can a
unitless value be in millimeter units”; (3) “unitless magnitude can be in a
mm scale is unclear and confusing”; and (4) “the recitation ‘thus the unitless
magnitude of V is within 10% and 50% of the unitless magnitude of the
outer diameter when V and OD is in the mm scale, wherein V is proportional
to OD’ is unclear and confusing.” Ans. 4–6.

4 https://www.dictionary.com/browse/volume (last visited March 20, 2020).
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Appellant contends the rejection is improper. Appeal Br. 9–12; Reply
Br. 3–5. We agree.
As discussed above, the term “mm scale” merely describes the unit of
measurement as being in millimeters so as to obtain a numeric value. And,
as construed above, the term “unitless” is defined as having no units of
measurement (e.g., a ratio or percentage of two numbers), which the
equation further defines by reciting “wherein V is proportional to OD.” As
Appellant explains:
So the point of this whole equation, is that there’s a
proportional relationship between the outer diameter and the
volume. But one of the keys that we need to look at is that
everything is in the same scale. What we don’t want is
someone looking at the outer diameter, measuring it in, let’s
say, inches. And then based on that inch value, coming up with
a volume that is in millimeters. This is -- this doesn’t work, the
comparison doesn’t work.
So we want both the outer diameter to be measured and
the volume to be measured in, what we call, the millimeter
scale. So, essentially, just everything has the same base units.
Tr. 7. We agree “the concept of being a unitless value in a particular scale
would be readily understood by a person having ordinary skill in the art”
reviewing Appellant’s disclosure. Appeal Br. 13.
Accordingly, we do not sustain the rejection of claims 1, 3–7, 10, and
12–25 as indefinite.
Objection to the Specification
The Examiner objected to the Specification on the grounds that “it is
unclear how mm2 can be compared to mm3” as part of the limitation
construed above. Final Act. 2. Appellant argues the objection to the
Specification is improper and requests that the objection is reversed. Appeal
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Br. 14. We have authority to review objections to the Specification when
the matter at issue is tied to a rejection of the claims on the same basis.
See MPEP 608.04(c). Because the matter at issue here is tied to the
rejections under 35 U.S.C. § 112, for the reasons discussed above, we agree
that the objection to the Specification is improper. Therefore, we reverse the
objection to the Specification.

CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is
reversed.
The Examiner’s rejection under 35 U.S.C. § 112, second paragraph, is
reversed.
The objection to the Specification is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 10,
12–25
112, first
paragraph
Written Description 1, 3–7, 10,
12–25
1, 3–7, 10,
12–25
112, second
paragraph
Indefiniteness 1, 3–7, 10,
12–25
Overall Outcome: 1, 3–7, 10,
12–25

REVERSED