Ex Parte Al-SharifDownload PDFPatent Trial and Appeal BoardMay 30, 201713168283 (P.T.A.B. May. 30, 2017) 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. 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 2 Appeal 2016-000245 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.” 3 Appeal 2016-000245 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 4 Appeal 2016-000245 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 5 Appeal 2016-000245 Application 13/168,283 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 6 Copy with citationCopy as parenthetical citation