Ex Parte Al-Sharif

Patent Trial and Appeal Board

May 30, 2017

13168283 (P.T.A.B. May. 30, 2017)

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.
13/168,283 06/24/2011 Majid AL-SHARIF 0023799-502US 9751
22904 7590
LOCKE LORD LLP
600 TRAVIS SUITE 2800
HOUSTON, TX 77002-3095
06/01/2017 EXAMINER
FIORELLO, BENJAMIN F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
hoip @ lockelord .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAJID AL-SHARIF
Appeal 2016-0002451
Application 13/168,2832
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—5 and 7—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Specification (“Spec.,” filed June 24,
2011), Amended Specification (“Amended Spec.,” filed Mar. 26, 2013), and
Appeal Brief (“Br.,” filed Mar. 23, 2015), as well as the Examiner’s Answer
(“Answer,” mailed July 23, 2015).
2 According to Appellant, the “real party in interest... is Helix Energy
Solutions, Group, Inc.” Br. 1.
Appeal 2016-000245
Application 13/168,283
According to Appellant, the invention “relate [s] to systems and
methods for collecting oil from deepwater spills.” Spec. 110. Claims 1
and 11 are the only independent claims on appeal. Br., Claims App. We
reproduce claim 1, below, as illustrative of the appealed claims.
1. A subsea spill containment system comprising:
a funnel structure positioned over a subsea leak;
a plurality of interconnected skirts serially joined above
the funnel, wherein each skirt further comprises a seal;
a collection dome above the skirts; and
a hose connected to the dome;
wherein an upper most one of the skirts is sealed to the
dome.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 7, 8, 11, and 16—18 under 35 U.S.C.
§ 103(a) as unpatentable over Wolinsky (US 2011/0315393 Al, pub.
Dec. 29, 2011) and Di Pema (US 3,651,943, iss. Mar. 28, 1972).
The Examiner rejects claims 2—5 and 12—15 under 35 U.S.C. § 103(a)
as unpatentable over Wolinsky, Di Pema, and Blair (US 3,658,181, iss.
Apr. 25, 1972).
The Examiner rejects claims 9, 10, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Wolinsky, Di Pema, and Cunningham
(US 4,395,157, iss. July 26, 1983).
ANALYSIS
Claims 1, 7, 8, 11, and 16—18
Initially, we note that Appellant argues independent claims 1 and 11,
and dependent claims 7, 8, and 16—18, together as a group. Br. 4—7. We
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Application 13/168,283
select claim 1 as representative, and the remaining claims stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues the rejection is in error because Wolinsky’s
“[rjouting device 620 is not a collection dome as required by the [cjlaims,”
and, because routing device 620 routes oil and/or gas, it teaches away from
the claimed collection dome. Br. 6. We are not persuaded by Appellant’s
argument, however, for the following reasons.
The claimed collection dome is described in Appellant’s Specification
as follows:
At the top of the upper most skirt, the system preferably includes
a dome 16, or collection structure with a hose attachment collar.
The dome 16 may be constructed of steel, aluminum, an
aluminum alloy, or even a composite material, such as fiberglass,
carbon fiber, or plastic material. The dome 16 may also be
supported by a frame, if needed.
Amended Spec. 133. Thus, as described in the Specification, the collection
dome is positioned between the skirts and hose, but the Specification does
not describe further the collection dome’s form or function, other than the
material from which the collection dome may be constructed. We agree
with the Examiner that Wolinsky’s routing device 620 is positioned between
skirts and a ship-connected hose. Final Action 2 (citing Wolinsky Fig. 5B).
To the extent that Appellant is arguing that the claimed collection
dome cannot be taught by a device that connects to more than one hose
(Br. 6), Wolinsky discloses that the routing device operates to “allow the oil
and/or gas to be routed via one or more flexible containment sections (i.e.,
sections of flexible ducting hose) 630A, 630B and 630C in order to be stored
by one or more respective containment vessels 640A, 640B and 640C.”
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Application 13/168,283
Wolinsky 1108. Thus, Wolinsky discloses that routing device 620 may, in
fact, only connect to one hose.
Appellant’s argument that because routing device 620 routes oil
and/or gas, it teaches away from the claimed collection dome, also is
unpersuasive. Br. 6. More specifically, Appellant does not explain
sufficiently, with evidence, such as a citation to the Specification or the
claims, or a line of technical reasoning, why a device that routes oil and gas
cannot teach the claimed collection dome. Therefore, for the above reasons,
we find that Wolinsky’s routing device 620 teaches the claimed collection
dome.
Appellant, referring to Wolinsky, next asserts “it is unclear as to how
secondary containment assembly 590 must be directly connected at one end
to the vessel on the ocean surface as disclosed and taught by Paragraph 105
and be placed in the arrangement shown in FIG. 6B and discussed in
paragraph 108.” Br. 6. We are unpersuaded by Appellant’s argument,
because paragraphs 105 and 108 describe two separate embodiments. In the
embodiment disclosed in paragraph 105, the claimed skirts (Wolinsky’s
containment assembly 590) are directly connected to a ship. However, in
the embodiment disclosed in paragraph 108 and Figure 6B, routing
device 620 is inserted between the skirts and hose to a ship. Wolinsky
H 105, 108. The Examiner directs us to Wolinsky’s containment
assembly 590 (Answer 2), finding it corresponds to the claimed skirts, and
the assembly can be used in either disclosed embodiment.
Further, we are unpersuaded by Appellant’s argument that “it is
unclear how a welded pipe 25 as disclosed by Di Pema is useful in
combination with Wolinsky.” Br. 7. The Examiner relies on Di Pema only
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Application 13/168,283
to disclose the use of “seals” on each section of the claimed skirts within
disclosed containment assembly 590 sections. Answer 3. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In reNievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis
omitted). Thus, the Examiner does not rely on a combination that uses
welded metal pipes from Di Pema, but only the use of Di Pena’s seals,
combined with Wolinsky’s disclosed containment assembly 590 sections.
Therefore, based on the foregoing, we affirm the obviousness
rejection of independent claim 1. Inasmuch as independent claim 11 and
dependent claims 7, 8, and 16—18 stand or fall with claim 1, we also affirm
the obviousness rejection of claims 7, 8, 11, and 16—18.
Claims 2—5 and 12—15
Appellant argues Blair fails to remedy the alleged shortcomings in the
combination of Wolinsky and Di Pema. Br. 7—8. Because we find no
shortcomings in the rejection of claim 1, above, we find the argument
unpersuasive.
Claims 9, 10, 19, and 20
Appellant argues Cunningham fails to remedy the alleged
shortcomings in the combination of Wolinsky and Di Pema. Br. 8. Because
we find no shortcomings in the rejection of claim 1, above, we find the
argument unpersuasive.
Appellant also argues Cunningham fails to disclose the last-recited
limitation in claim 1, related to sealing the claimed skirts to the claimed
collection dome above the skirts. Id. However, the Examiner finds this
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limitation in the combination of Wolinsky and Di Pema (Answer 2—3), and
Appellant does not argue any shortcomings in the Examiner’s findings
related to this limitation. Therefore, we find the argument unpersuasive
because we find no shortcomings in the combination of Wolinsky and
Di Pema as it relates to claim 1.
DECISION
We affirm the rejections of claims 1—5 and 7—20 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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