Ex Parte Allen

Board of Patent Appeals and Interferences

Oct 14, 2009

11385150 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD WAYNE ALLEN
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Appeal 2009-003281
Application 11/385,150
Technology Center 2800
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Decided: October 14, 2009
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Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-003281
Application 11/385,150

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7 and 9-20.1 (App. Br. 3). We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant describes a system for remotely detecting properties of an
underwater structure in a body of water. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A system for remotely detecting properties of an underwater
structure in a body of water comprising:

a sensor to measure a stress and/or a strain of the
structure and connectable to the structure;

a first receiver which can be positioned at or near a top
surface of the body of water in the proximity of the
structure;

a first transmitter for transmitting property information
from the sensor to the first receiver; and

a second transmitter for transmitting the property
information from the first receiver to a second receiver
which can be located at a remote location; wherein the
underwater structure comprises a pipeline, a piling, or a
foundation.

1 Claim 8 has been canceled. (Appeal Brief filed April 10, 2008, hereinafter
“App. Br.,” 2). Appellant does not expressly indicate whether the
Examiner’s rejection with respect to the dependent claims is appealed. (Id.).
However, the Notice of Appeal filed July 30, 2007 clearly indicates that
Appellant appeals the rejection of claims 1-7 and 9-20. Accordingly, the
dependent claims stand or fall with the independent claims.
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Appeal 2009-003281
Application 11/385,150

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith US 2004/0020653 A1 Feb. 5, 2004
Morrison US 2004/0035216 A1 Feb. 26, 2004

The Examiner rejected claims 1-7 and 9-20 under 35 U.S.C. § 103(a)
as being unpatentable over Morrison in view of Smith.

ISSUE
Has Appellant shown that the Examiner reversibly erred in
determining that it would have been obvious to one of ordinary skill in the
art to incorporate the receivers and transmitters in the monitoring system of
Smith into the monitoring system of Morrison?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. We rely on the Examiner’s factual findings regarding Morrison
and Smith stated in the Answer. (Examiner’s Answer entered June
25, 2008, hereinafter “Ans.,” 3-4).
2. The Examiner additionally stated:
Since both [Morrison and Smith] relate to monitoring data pertaining
to undersea structures, one having ordinary skill in the art at the time
the invention was made would have found it obvious to use the system
of receivers and transmitters as disclosed by Smith along with the
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Appeal 2009-003281
Application 11/385,150

strain sensors disclosed by Morrison et al. for the purposely [sic] of
transmitting the strain data to a receiving network where the
information can be stored and processed.
(Ans. 4).

PRINCIPLES OF LAW
In KSR, the Supreme Court explained, “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

ANALYSIS
Appellant does not separately argue the independent claims on appeal.
Accordingly, we confine our discussion to appealed claim 1, which contains
claim limitations representative of the arguments made by Appellant
pursuant to 37 C.F.R. § 41.37(c)(1)(vii).2
Appellant does not dispute that Smith discloses the sensor, receiver,
and transmitter arrangement recited in the claims. Rather, Appellant
contends that Smith does not suggest monitoring or measuring a stress or
strain of an underwater structure comprising a pipeline, piling, or foundation
as claimed. (App. Br. 3). Appellant argues that there is no motivation to
combine Morrison, which is directed to a fiber based steel catenary riser

2 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
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Appeal 2009-003281
Application 11/385,150

(SCR) monitoring system, with Smith, which is directed to remotely
monitoring properties in a well. (Id.).
We are unpersuaded by Appellant’s argument that Smith fails to teach
or suggest measuring or monitoring the stress and/or strain of an underwater
structure comprising a pipeline, piling, or foundation. The Examiner relies
on Morrison for this feature. The Examiner relies on Smith for the particular
sensor, receivers, and transmitters recited in the claims.
In addition, Appellant has not specifically addressed the Examiner’s
rationale that because both Morrison and Smith are directed to monitoring
undersea structures, one of ordinary skill in the art would have employed the
monitoring system of Smith in Morrison to transmit strain data to a receiving
network for storage and processing. Specifically, Appellant has not
provided any persuasive evidence why one of ordinary skill in the art would
not have considered the underwater monitoring systems of Smith to be
applicable to the underwater system of Morrison. In addition, Appellant has
not provided any persuasive evidence that one of ordinary skill in the art
would have been unable to implement Smith’s sensor, receivers, and
transmitters in monitoring the underwater structure of Morrison to achieve
predictable results. Accordingly, Appellant has failed to demonstrate error
on the part of the Examiner.

CONCLUSION
Appellant has failed to demonstrate that the Examiner reversibly erred
in determining that it would have been obvious to one of ordinary skill in the
art to incorporate the receivers and transmitters in the monitoring system of
Smith into the monitoring system of Morrison.
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Appeal 2009-003281
Application 11/385,150

ORDER
We affirm the Examiner’s decision rejecting claims 1-7 and 9-20
under 35 U.S.C. § 103(a) as being unpatentable over Morrison in view of
Smith.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

tc

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