Ex Parte AllenDownload PDFBoard of Patent Appeals and InterferencesOct 14, 200911385150 (B.P.A.I. Oct. 14, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DONALD WAYNE ALLEN ____________ Appeal 2009-003281 Application 11/385,150 Technology Center 2800 ____________ Decided: October 14, 2009 ____________ 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. 2 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 3 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). 4 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. 5 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 SHELL OIL COMPANY P. O. BOX 2463 HOUSTON, TX 77252-2463 6 Copy with citationCopy as parenthetical citation