Ex Parte Hatton et al

Patent Trial and Appeal BoardJul 13, 2018

13881298 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/881,298 04/24/2013 23632 7590 07/17/2018 SHELL OIL COMPANY POBOX576 HOUSTON, TX 77001-0576 FIRST NAMED INVENTOR Gregory John Hatton 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. TH3075-US-PCT 2112 EXAMINER CATHEY JR, DAVID A ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 07/17/2018 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): USPatents@Shell.com Shelldocketing@cpaglobal.com shellusdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY JOHN HATTON and CHIEN KUEI TSAI Appeal2017-009062 Application 13/8 81,298 1 Technology Center 1700 Before GEORGE C. BEST, A VEL YN M. ROSS, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellants seek our review of the Examiner's rejection of claims 1, 2, 4--8, and 10-14. Br. 3. We have jurisdiction. 35 U.S.C. Â§ 6. We affirm. 1 Appellants identify Shell Oil Company as the real party in interest. Br. 2. Appeal2017-009062 Application 13/881,298 SUBJECT MATTER The subject matter on appeal concerns a method of producing and transporting crude oil. Spec. 4. Sole independent claim 1 is illustrative: 1. A method of producing and transporting crude oil, comprising: extracting crude oil from a well; placing the crude oil in a pipeline to transport the crude oil away from the well, wherein the pipeline comprises a carbon steel tubular member having an inner wall with a surface roughness that has been reduced; transporting the crude oil for a first time period at a low flow rate so that a precipitate forms on the inner wall of the pipeline; and transporting the crude oil for a second time period at a high flow rate so that the precipitate is cleared from the inner wall of the pipeline. Br. 14. 2 Appeal2017-009062 Application 13/881,298 REJECTIONS 2 The following claims are rejected under 35 U.S.C. Â§ I03(a): I. Claims 1, 2, 4--7, and 10 as unpatentable over Balkanyi 3 in view of Netafim, 4 Zilch, 5 and McDonnel, 6 as evidenced by API5L; 7 II. Claim 8 as unpatentable over Balkanyi in view ofNetafim, Zilch, McDonnel, and Tordal; 8 2 In the Answer (Ans. 11 ), the Examiner withdraws the written description rejection of claims 1, 2, 4--8, and 10-14 under 35 U.S.C. Â§ 112, istparagraph (Final Act. 2). In the Answer, the Examiner does not specifically withdraw the enablement rejection of these claims (which relies on the same discussion of the withdrawn written description rejection (Final Act. 2-3)), but also does not affirmatively maintain such enablement rejection. See Ans. 2-11 (where the Examiner states "[t]he following grounds of rejection are applicable to the appealed claims" and then only addresses the 35 U.S.C. Â§ I03(a) rejections). Furthermore, in the Answer, the Examiner does not address Appellants' arguments regarding the enablement rejection. Br. 7-8. For these reasons, we treat the Examiner's silence in the Answer regarding the enablement rejection as a concession that this rejection has been overcome by Appellants' arguments and has been withdrawn. Therefore, we express no opinion regarding the substance of the enablement rejection. 3 Balkanyi et al., US 2006/0175063 Al, published August 10, 2006. 4 FLUSHING VELOCITY and Netafim BiolineÂ® WASTEWATER DIVISION NETAFIM USA (2008), pp. 2-7. 5 Zilch, US 4,905,762, issued March 6, 1990. 6 M. R. McDonnell, Liquid Applied Internal Flow Coatings for Oil Transmission Lines, Pipeline Technology 2006 Conference. 7 Alibaba.com product listing for Api 51 Grade X70 Ssaw Carbon Steel Pipe, https://alibaba.corn/product-detail/ API-5L-Grade-X70-SSA W- CARBON 11252357 ... , pp. 1-5, last accessed May 16, 2016. The Examiner and Appellants refer to this reference as "Albia." 8 AlfTordal, PIGGING OF PIPELINES WITH HIGH WAX CONTENT Pigging Products and Services Association (2006). 3 Appeal2017-009062 Application 13/881,298 III. Claims 12-14 as unpatentable over Balkanyi in view ofNetafim, Zilch, and McDonnel, as evidenced by Matthys; 9 IV. Claim 11 as unpatentable over Balkanyi in view ofNetafim, Zilch, McDonnel, and Balkanyi II. 10 OPINION Rejection I Appellants focus their arguments on claim 1. Br. 8-11. We, therefore, select claim 1 as representative and decide the propriety of this rejection on the basis of claim I alone. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We have considered Appellants' arguments (Br. 8-11) and are left unpersuaded that Appellants have identified any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011). Therefore, we sustain this rejection based on the findings of fact, conclusions of law, and rebuttals to arguments well-expressed by the Examiner in the Final Action and in the Answer. We add the following. Appellants fail to contest the Examiner's findings of record with any degree of specificity. Rather, Appellants' arguments focus on the alleged non-combinability ofBalkanyi's teachings with those ofNetafim. Br. 8-12. Specifically, Appellants argue that because "Balkanyi already teaches a mechanism for clearing the precipitate from the inner wall," the skilled artisan would not seek to modify the teachings thereof. Br. 9. This argument is unpersuasive, however, because the Examiner finds, and Appellants do not contest, that Balkanyi discloses the pipeline may include 9 Matthys et al., US 7,661,467 Bl, issued February 16, 2010. 10 Balkanyi et al., US 2006/0186023 Al, published August 24, 2006. 4 Appeal2017-009062 Application 13/881,298 additional ways of assuring flow therethrough. Ans. 12 ( citing Balkanyi ,r 11 ). Because Netafim has been undisputedly found by the Examiner (Final Act. 5) to disclose a flushing action through a pipe "so that additional flow can move through the network at an increased velocity, creating turbulence and scouring off any build-up that may have occurred," (Netafim 2) we discern no error in the Examiner's conclusion that the skilled artisan would have been motivated to combine Netafim's flushing procedure with Balkanyi's method to arrive at the claimed invention for the stated reasons. Final Act. 5. Appellants' contentions that the prior art teaches away, as well as the contentions alleging that the Examiner's proposed modification would render the prior art unsatisfactory for its intended purpose and would change the principal of operation of the prior art, are unavailing. Br. 10. Such skeletal and conclusory statements do not amount to a substantive argument, and fail to identify error in the Examiner's rejection. For these reasons, and those provided by the Examiner, the obviousness rejection of claim 1, and that of dependent claims 2, 4--7, and 10 not separately argued, is sustained. Re} ections II-IV Appellants offer no additional substantive argument regarding these rejections beyond that already discussed with respect to Rejection I. Therefore, for the same reasons already provided, Rejections II-IV are sustained. 5 Appeal2017-009062 Application 13/881,298 DECISION Rejections I-IV are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 6