Arslan, Haydar et al.Download PDFPatent Trials and Appeals BoardMar 25, 202014591669 - (D) (P.T.A.B. Mar. 25, 2020) Copy Citation 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. 14/591,669 01/07/2015 Haydar Arslan 2014EM022 7249 34477 7590 03/25/2020 ExxonMobil Upstream Research Company 22777 Springwoods Village Parkway (EMHC-N1.4A.607) Spring, TX 77389 EXAMINER TOLEDO-DURAN, EDWIN J ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 03/25/2020 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): urc-mail-formalities@exxonmobil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HAYDAR ARSLAN and PATRICK C. WONG Appeal 2019-004813 Application 14/591,669 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, JAMES P. CALVE, and LEE L. STEPINA, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–21, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “ExxonMobil Upstream Research Company.” Appeal Br. 3. Appeal 2019-004813 Application 14/591,669 2 The disclosed subject matter “relates generally to a modified pile foundation system for scour protection.” Spec. ¶ 2. Claims 1, 11, 19, and 21 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A system for reducing scouring, comprising: a pile having a maximum cross-sectional dimension, Dp; and an enclosure circumferentially disposed around the pile, the enclosure having a first end proximate a surface of a seabed and proximate a top end of the pile; a second end distal the surface of the seabed, and a maximum cross-sectional dimension, De, wherein De is at least l.25*Dp providing a soil sediment area within the seabed between an outer surface of the pile and an inner surface of the enclosure such that the soil sediment area provides load carrying capacity for the pile; wherein the enclosure is fixedly attached to the top end of the pile. EVIDENCE Name Reference Date Groneck et al. (“Groneck”) US 6,012,874 Jan. 11, 2000 Saugier et al. (“Saugier”) US 6,659,182 B1 Dec. 9, 2003 Maconocie et al. (“Maconocie”) US 2011/0002742 A1 Jan. 6, 2011 Hosøy et al. (“Hosøy”) US 2012/0003048 A1 Jan 5, 2012 Harris US 8,596,919 B2 Dec. 3, 2013 REJECTIONS Claims 1–5 and 7–21 are rejected under 35 U.S.C. § 103 as unpatentable over Harris and Maconocie. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Harris, Maconocie, and Saugier. Appeal 2019-004813 Application 14/591,669 3 Claims 1–5, 7, and 9–21 are rejected under 35 U.S.C. § 103 as unpatentable over Hosøy and Maconocie. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Hosøy, Maconocie, and Saugier. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Hosøy, Maconocie, and Groneck. Claims 1, 11, 19, and 21 are rejected under 35 U.S.C. § 103 as unpatentable over Maconocie and Harris. ANALYSIS The rejection of claims 1–5 and 7–21 as unpatentable over Harris and Maconocie Each independent claim on appeal, i.e., claims 1, 11, 19, and 21, is directed to a pile and also an enclosure disposed around the pile, “wherein the enclosure is fixedly attached to the top end of the pile.” The Examiner primarily relies on Harris for disclosing many of the recited limitations, but acknowledges that “Harris is silent about . . . the enclosure fixedly attached to the top end of the pile.” Final Act. 3. The Examiner relies on Maconocie for teaching such an enclosure attached to the top of a pile and states that the “motivation” for combining Harris and Maconocie would arise from those “settings that [don’t] require long piles.” Final Act. 3 (referencing Maconocie ¶ 33); see also Maconocie Figs. 2, 3A, 3B, 8. Appellant challenges the combination of Harris and Maconocie stating, “fixing the disk of Harris to the pile of Harris [as disclosed in Maconocie] would be adverse to the functionality of Harris which is designed to be able to move separate from the pile.” Reply Br. 9; see also Appeal 2019-004813 Application 14/591,669 4 Appeal Br. 18–21(“it is the clear intent of Harris to fix the disk to the seabed (not to fix the pile to the disk as in the presently claimed invention)”). There is merit to Appellant’s contentions. Harris clearly discloses the disk (i.e., the recited “enclosure”) “configured to be installed on the seabed with the pile protruding through the pile opening.” Harris 2:26–27, 2:37–38. Harris explains that “pile opening 7” of the disk is “adapted to receive the pile for installation through the disk and into the seabed 2.” Harris 4:12–16; see also id. at 6:64–66 (“When the disk 6 is finally installed on the seabed, the pile 1 can be driven through the pile opening 7 in the disk into the seabed 2 below.”). Thus, it is not altogether clear why, even if employing shorter piles as suggested by the Examiner (see Final Act. 3), one skilled in the art would fixedly attach the disk to the top end of Harris’ pile (as recited) when Harris’ disk is, instead, designed to “receive the pile” once the disk is “installed on the seabed.” See supra. Additionally, there is no indication that the top of Harris’ pile, even if shortened, is anywhere near the seabed upon installation.2 See Harris Figs. 1, 2, 4, 8. The Examiner also finds that “the anti-scour disk of Harris would work equally well with piles with their upper ends proximate to the upper surface of the disk.”3 Ans. 20; see also Ans. 22, 23, 25, 27. However, the Examiner does not explain how Harris’ pile would actually be able to “work equally well,” such as by providing support to “offshore wind turbines” and 2 Harris is silent regarding the top of the pile being anywhere near the seabed. The pile can be used to support an offshore wind turbine (Harris 1:35–37), which would be located at the surface rather than at the seabed. 3 The Examiner finds “the length of the pile above the enclosure in Harris is not a critical element.” Ans. 20. Appeal 2019-004813 Application 14/591,669 5 the like (Harris 1:21–23), when Harris’ pile only extends “proximate to the upper surface of the disk,” and no further. Thus, based on the record presented, the Examiner’s “motivation” for combining Harris and Maconocie (i.e., use of a shorter pile) lacks sufficient articulated reasoning with rational underpinning. In other words, without more explanation on the part of the Examiner, Appellant is persuasive that the operation and function of Harris would be compromised by affixing the enclosure to the top of Harris’ pile and also locating the enclosure adjacent the seabed to reduce scouring. In short, the Examiner has not provided the requisite support for the legal conclusion of obviousness when suggesting that the combination of Harris and Maconocie renders obvious the limitation “wherein the enclosure is fixedly attached to the top end of the pile.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we do not sustain the Examiner’s rejection of independent claims 1, 11, 19, and 21, nor dependent claims 2–5, 7–10, 12–18, and 20. The rejection of claim 6 as unpatentable over Harris, Maconocie, and Saugier Claim 6 depends directly from claim 1. The Examiner does not rely on Saugier to cure the defect discussed above regarding securement to the top of the pile. See Final Act. 8–9. Thus, we likewise do not sustain the Examiner’s rejection of claim 6 as being obvious over Harris, Maconocie, and Saugier. Appeal 2019-004813 Application 14/591,669 6 The rejections of: (a) claims 1–5, 7, and 9–21 as unpatentable over Hosøy and Maconocie; (b) claim 6 as unpatentable over Hosøy, Maconocie, and Saugier; (c) claim 8 as unpatentable over Hosøy, Maconocie, and Groneck; and, (d) claims 1, 11, 19, and 21 as unpatentable over Maconocie and Harris Each rejection above is recited in the Examiner’s Final Office Action, and subsequently replicated in the Examiner’s Answer. See Final Act. 9–18; Ans. 9–19. Appellant presents no arguments with respect to any of these rejections. See Briefs generally. In fact, under the heading “Grounds of Rejection to be Reviewed,” Appellant only identifies the two rejections where Harris is the primary reference (and whose rejections are not sustained). Appeal Br. 10. Appellant does not discuss any of the above rejections where either Hosøy or Maconocie are primarily relied upon. The Manual of Patent Examiner Procedure (MPEP) § 1205.02 states, “[i]f a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.” We hereby sustain the above (and in some cases, redundant) rejections of claims 1–21. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–21 103 Harris, Maconocie 1–5, 7–21 6 103 Harris, Maconocie, Saugier 6 1–5, 7, 9– 21 103 Hosøy, Maconocie 1–5, 7, 9–21 6 103 Hosøy, Maconocie, Saugier 6 Appeal 2019-004813 Application 14/591,669 7 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8 103 Hosøy, Maconocie, Groneck 8 1, 11, 19, 21 103 Maconocie, Harris 1, 11, 19, 21 Overall Outcome4 1–21 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 4 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” Copy with citationCopy as parenthetical citation