Ex Parte Berggren

Patent Trial and Appeal BoardJun 27, 2013

11793082 (P.T.A.B. Jun. 27, 2013)

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. 11/793,082 10/01/2007 Wouter Detlof Berggren TS1615US 9048 23632 7590 06/27/2013 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER HARP, WILLIAM RAY ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 06/27/2013 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 WOUTER DETLOF BERGGREN ____________ Appeal 2011-004830 Application 11/793,082 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE, and CARL M. DeFRANCO, Administrative Patent Judges. DeFRANCO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004830 Application 11/793,082 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-7, 9-14 and 19-21. Br. 2. Claims 8 and 15-18 have been cancelled. Id. at 9-10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER Claims 1, 7, 9 and 19 are the independent claims; they are directed to a pipe part, a piping system, a gasification system and a transporting method, respectively. Claim 1 is illustrative of the claims on appeal: 1. A pipe part for conveying a solid particulate material at high pressure, the pipe part at least comprising: - an outer tubular element stretching along a longitudinal axis (A) and having a first section and a second section being axially displaced from each other; - an inner tubular element disposed inside the outer tubular element and adapted for conveying the solid particulate material from one end to another end and comprising an aeration-fluid-permeable wall part; wherein the inner tubular element is sealingly connected with the first and second sections to form an aeration fluid distribution chamber between the first and second sections and the inner and outer tubular elements, which aeration fluid distribution chamber is provided with an aeration fluid inlet to define an aeration fluid flow path between the aeration fluid inlet through the aeration-fluid-permeable wall part via the aeration fluid distribution chamber; and wherein the inner tubular element is flexibly supported by both of the first and second sections. App. Br. 8, Claims App’x (emphasis added). REJECTIONS 1. Claims 1-4 and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawton (US 3,409,274, iss. Nov. 5, 1968). Appeal 2011-004830 Application 11/793,082 3 2. Claims 5 and 10-12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawton and Yamamoto (US 4,775,267, iss. Oct. 4, 1988). 3. Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawton and Salter (US 4,830,545, iss. May 16, 1989). 4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawton and Higuchi (US 6,227,768 B1, iss. May 8, 2001). 5. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawton and Gu (US 5,827,370, iss. Oct. 27, 1998). 6. Claims 9, 19 and 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawton and Salter. ANALYSIS The rejection of claims 1-4 and 7 Appellant argues claims 1-4 and 7 as a group, relying on the same arguments for all these claims. Br. 5-6. We select independent claim 1 for review with claims 2-4 and 7 standing or falling with claim 1. Appellant raises two issues with the Examiner’s reliance on Lawton in determining obviousness. First, Appellant contends that Lawton fails to teach the inner tubular element being “flexibly supported at both ends,” as recited in claim 1.1 Br. 5. According to Appellant, Lawton discloses that “it is preferred that the [inner tubular element] be attached by means of welding to the [outer] body at one of its ends” and thus “teaches away from having 1 Dependent claim 2 recites that “flexibly supported includes the inner tubular element being axially slidingly arranged relative to the outer tubular element.” Because claim 2 depends from claim 1, the scope of the term “flexibly supported” as used in claim 1 must be at least this broad. Appeal 2011-004830 Application 11/793,082 4 the inner element be flexibly supported at both ends.” Id. (emphasis added). The Examiner responded that, while one end of Lawton’s inner element is welded, Lawton nonetheless teaches that at least one end of the inner element must be “in sliding contact” relative to the outer element in order to account “for thermal expansion.” Ans. 7. Specifically, Lawton teaches that: Within the body of the vessel 22 is disposed an elongated cylindrical liner 40 [i.e., inner tubular element] extending axially from end to end through the straight 32. The liner 40 is concentrically spaced from the wall of the straight 32 and cooperates therewith to define a substantially annular chamber 42 that is closed at its ends. . . . In order to provide for thermal expansion of the liner 40 with respect to the body of vessel 22 it is preferred that it be attached as by means of welding to the body at one of its ends, here shown as the end 34, while the other end of the liner engages the inner surface of the body in sliding contact adjacent the other end 36. Lawton, col. 2, ll. 47-62 (emphasis added). Based on Lawton’s general teaching of outfitting an inner/outer pipe arrangement with a thermal expansion coupling, the Examiner concluded that an ordinary skilled artisan would have found it obvious to outfit both ends with a thermal expansion coupling because it involves nothing more than “[d]uplicating the arrangement” already taught by Lawton. See Ans. 7. We agree with the Examiner. As taught by Lawton, thermal expansion couplings are commonplace in pipe connections exposed to significant temperature differentials. Clearly it is within the province of the ordinary skilled worker to use as many thermal expansion couplings as may be necessary or desirable to protect the integrity of the pipe connection. Simply providing a pipe with the same thermal expansion coupling on both ends, instead of one, does not evince patentability. It is well settled that Appeal 2011-004830 Application 11/793,082 5 “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, the Examiner expressly found that Lawton provides the same result as the claimed invention, namely, “reduced mechanical loading of an inner [pipe] element due to thermal expansion. Therefore, if one end of the inner element is free to move to reduce mechanical loading by thermal expansion, then it is reasonable to expect that having both ends free to move would provide the same benefit.” Ans. 8. Appellant does not apprise us of any error in the Examiner’s reasoning. In effect, Appellant has shown nothing more than an aggregation of well-known parts, without identifying any new and unexpected result. As such, we are not persuaded that the Examiner erred in concluding that Lawton renders obvious the inner tubular element being “flexibly supported” at both ends. Next, Appellant argues that the claimed invention is “directed to a pipe part for conveying solid particulate material while Lawton is directed to an apparatus for mixing two fluids.” Br. 5. According to Appellant, the apertures in Lawton’s inner tubular element “are large enough that particulate material could easily pass through them” and thus Lawton does not meet the claim limitation that the inner tubular element is “adapted for conveying the solid particulate material from one end to another end.” Id. at 6. The Examiner responded that the limitation relied upon by Appellant is merely a “recitation of the intended use” and that Lawton is “capable of performing the intended use,” thereby meeting the limitation. Ans. 8. We agree. Appeal 2011-004830 Application 11/793,082 6 Although Lawton may not expressly address the use of the pipe for the purpose of conveying solid particulate material, the absence of such disclosure relating to function does not defeat the Examiner’s determination of obviousness. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable”). Appellant’s contention that the claimed structure will be used to carry solid particulate material does not lend patentable weight where the structure is already taught by Lawton, regardless of whether Lawton’s structure has ever been used in any way with solid particulate material. See id. Moreover, Appellant’s argument that Lawton does not disclose “the solid particulate material” is not commensurate in scope with the substance of claim 1, as claim 1 does not positively recite “the solid particulate material.” Thus, because Appellant has provided no evidence that would preclude Lawton’s structure from performing the intended use, we sustain the rejection of independent claims 1 and 7, and dependent claims 2-4, as obvious over Lawton. The rejections of claims 5, 6, 9-14 and 19-21 Appellant does not raise additional arguments with respect to the limitations recited in the remaining claims but “submits that these claims would not have been obvious for the reasons discussed [] with respect to claim 1” and “the Lawton reference.” Br. 6-7. Because we sustained the rejection of claim 1 as unpatentable over Lawton, we likewise sustain the rejections of claims 5, 6, 9-14 and 19-21 for the reasons discussed above. Appeal 2011-004830 Application 11/793,082 7 DECISION We affirm the Examiner’s decision rejecting claims 1-7, 9-14 and 19- 21. AFFIRMED mls