PIPELINE INDUCTION HEAT LIMITED

Patent Trials and Appeals Board

Nov 22, 2021

2020006753 (P.T.A.B. Nov. 22, 2021)

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.
15/915,753 03/08/2018 Michael George INF1109A 7459
28268 7590 11/22/2021
Stanley Black & Decker, Inc.
701 East Joppa Road, MR045
Towson, MD 21286
EXAMINER
THOMAS, BINU
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
11/22/2021 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 MICHAEL GEORGE and
JASON MONTGOMERY
Appeal 2020-006753
Application 15/915,753
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction.
35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Pipeline Induction Heat, Ltd. Appeal
Br. 3.
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Application 15/915,753

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CLAIMED SUBJECT MATTER
The claims are directed to an applicator machine for heating and
coating a section of pipeline. Claim 1. Pipe sections are coated with one or
more protective and/or insulation layers to prevent corrosion and to reduce a
fluid’s heat loss as the fluid is transported by the constructed pipeline.
Spec. ¶ 3. The pipe sections are usually externally coated at a factory
remote from the location in which they are to be laid. Id.
Pipelines may be constructed in situ, where the pipe sections are
welded together and field-coated at the location the pipeline will be buried.
Id. ¶ 10. With this construction process, equipment must be transported to
each individual field joint to perform a welding, heating and/or coating
operation to that section of pipeline. Id. The claimed applicator machine is
purported to diminish the cycle time for coating by performing the
operations of induction heating and coating on the same zone of a pipe
section before being connected to a pipeline construction. Id. ¶ 16.
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An applicator machine for heating and coating a section of
pipeline, the applicator machine comprising:
a frame configured to rotate about a section of pipeline to be
heated and coated;
rotating means operable to rotate the frame;
a coating material applicator mounted on the frame and
rotatable therewith, and
an induction coil mounted on the frame and rotatable
therewith,
wherein the induction coil is configured to heat a section of
pipeline adjacent to the induction coil to a coating material
application temperature and wherein the coating material
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applicator is arranged to spray coating material through an
aperture defined by the induction coil, and
wherein the induction coil being shaped as a coil and formed
as a plate and having coil ends whereon, each coil end being
electrically coupled to a terminal; and
wherein the induction coil has a partially cylindrical
underside for matching a cylindrical outer shape of the section of
pipe to most effectively direct and concentrate induction heat
toward the pipe section.
REJECTIONS2
I. Claims 1–4, 7–9, 11, 12, and 14–17 under 35 U.S.C. § 103 as
unpatentable over Carlson3 in view of Mathai4;
II. Claims 5 and 6 under 35 U.S.C. § 103 as unpatentable over
Carlson in view of Mathai and DiMaio5;
III. Claim 10 under 35 U.S.C. § 103 as unpatentable over Carlson
in view of Mathai and Hart6; and
IV. Claim 13 under 35 U.S.C. § 103 as unpatentable over Carlson
in view of Mathai and Daykin.7
Final Act. 7–12.

2 In the Answer, the Examiner withdrew the rejections of: (i) claims 1–17
under 35 U.S.C. § 112(a) for failing to comply with the written description
requirement and (ii) claims 1, 2, 9, 10, and 14–17 under 35 U.S.C. § 103 as
unpatentable over Betteridge et al. (US 4,595,607, issued June 17, 1986).
Ans. 3.
3 US 5,186,755, issued February 16, 1993.
4 US 2012/0217235 A1, published August 30, 2012.
5 US 5,403,624, issued April 4, 1995.
6 US 5,207,833, issued May 4, 1993.
7 US 6,881,266 B1, issued April 19, 2005.
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OPINION
The Examiner’s findings and conclusions in support of the grounds of
rejection with respect to claim 1 appear at pages 7–9 of the Final Office
Action. We need only discuss claim 1.
The dispositive issue in this appeal is whether the Examiner provided
sufficient reasoning for the skilled artisan to have combined the teachings of
Carlson and Mathai to arrive at the claimed subject matter. Final Act. 8–9.
Because the Examiner has failed to do so on this record, we reverse the
rejections on appeal.
In rejecting claim 1, the Examiner determines that the ordinary skilled
artisan would have modified Carlson’s apparatus for heating and coating
pipeline weld joints with Mathai’s induction coil having an opening. Id. at
9. Specifically, the Examiner’s proposed modification would have required
the artisan to have: (i) combined Carlson’s pair of induction heating
assemblies 112 and powder dispensing units 36, 38 into a single induction
heating assembly and (ii) incorporated Mathai’s induction coil 110 having a
nozzle 105 arranged within coil 110’s aperture into Carlson’s single
induction heating assembly. Id.; compare Carlson Figs. 2, 11; Mathai Fig. 6
with Spec. Figs. 13–15. According to the Examiner, one of ordinary skill in
the art would have been motivated to modify Carlson’s apparatus because
Mathai teaches that doing so “improve[s] the surface properties compared to
the untreated surfaces.” Final Act. 9 (citing Mathai ¶ 9).
Appellant challenges the Examiner’s stated reason to combine Carlson
and Mathai because Carlson’s apparatus “simply heat[s] the pipe up to the
required temperature and spray[s] the protective coating on the pipe.”
Appeal Br. 9. Appellant questions how Mathai’s relied-upon passage would
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have motivated “one of skill to redesign Carlson to include an aperture
through his coil shaped induction coil.” Id.; see also Reply Br. 2 (arguing
that the Examiner has provided a “less than reasonable and inadequate
motivation . . . for why” Mathai would have been combined with Carlson).
In particular, Appellant contends that Carlson’s apparatus provides “ample
space for separate heating and coating” of a pipeline, whereas Mathai’s coil
structure having a nozzle within an aperture is suitable for the treatment of
relatively smaller compressor blades. Reply Br. 4. Appellant argues that
“Mathai has provided a coil structure with a through opening based on a
need (i.e., heating and spraying relatively small objects), but that is a need
Carlson doesn’t share.” Id.
Appellant’s arguments are persuasive of reversible error.
Although the Examiner’s rejection asserts that the ordinary skilled
artisan would have been motivated to use Mathai’s coil structure having a
nozzle within an aperture (Final Act. 9), the Examiner fails to sufficiently
explain why. Indeed, when Appellant challenges the Examiner’s reasoning
(Appeal Br. 9), the Examiner simply repeats that “Mathai teaches it will
improve the surface properties.” Ans. 6 (citing Mathai ¶ 9).
To establish a prima facie case of obviousness, it is not enough to
assert what modifications the skilled artisan could have made to the prior art.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))); see
also In re Vaidyanathan, 381 F.App’x 985, 994 (Fed. Cir. 2010) (non-
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precedential) (explaining that “KSR did not free the PTO’s examination
process from explaining its reasoning. In making an obviousness rejection,
the examiner should not rely on conclusory statements that a particular
feature of the invention would have been obvious or was well known;”
rather, “the examiner should elaborate, discussing the evidence or reasoning
that leads the examiner to such a conclusion.”). Because the requisite
analysis of why the skilled artisan would have been motivated to modify the
teachings of Carlson in the manner proposed is lacking here, we do not
sustain the Examiner’s obviousness rejection.
Our analysis supra applies equally to independent claim 16 because
that claim also requires that “the coating material applicator is arranged to
spray coating material through an aperture defined by the induction coil.”
Thus, on this record, we reverse the Examiner’s rejection of independent
claims 1 and 16 under 35 U.S.C. § 103.
Remaining claims 2–15 and 17 depend from claims 1 and 16,
respectively, and are similarly rejected over Carlson and Mathai either with
or without DiMaio, Hart, or Daykin. Final Act. 7–12. Thus, for the reasons
outlined above with respect to claims 1 and 16, we also reverse the
rejections of dependent claims 2–15 and 17 under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s rejections are reversed.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–9,
11, 12,
14–17
103 Carlson, Mathai 1–4, 7–9,
11, 12, 14–
17
5, 6 103 Carlson, Mathai,
DiMaio
5, 6
10 103 Carlson, Mathai,
Hart
10
13 103 Carlson, Mathai,
Daykin
13
Overall
Outcome
1–17

REVERSED