10507428 (B.P.A.I. Feb. 8, 2011)

Ex Parte Alliot

Board of Patent Appeals and InterferencesFeb 8, 2011

10507428 (B.P.A.I. Feb. 8, 2011)

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. 10/507,428 05/11/2005 Vincent Marcel Ghislain Alliot 7096SO-28 6318 22442 7590 02/08/2011 SHERIDAN ROSS PC 1560 BROADWAY SUITE 1200 DENVER, CO 80202 EXAMINER SINGH, SUNIL ART UNIT PAPER NUMBER 3672 MAIL DATE DELIVERY MODE 02/08/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte VINCENT MARCEL GHISLAIN ALLIOT ____________________ Appeal 2009-008697 Application 10/507,428 Technology Center 3600 ____________________ Before LINDA E. HORNER, JENNIFER D. BAHR, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008697 Application 10/507,428 STATEMENT OF THE CASE Vincent Marcel Ghislain Alliot (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3-6, 8, 10, 11 and 15-17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to a seabed anchor, wherein suction can be applied to cause embedment of the anchor in seabed soil (Spec. 1: 4-5 and Spec. 3: 5-6). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A seabed anchor in the form of a caisson having a longitudinal axis and comprising a caisson side wall, said side wall surrounding an interior volume and having top and bottom ends and, a top wall substantially closing the interior volume at its upper end, while being provided with a fluid connection to the interior volume, to cause fluid to be withdrawn away from an upper part of said interior volume during embedment whereby suction is applied to cause embedment of the anchor in seabed soil, a bottom edge of said side wall defining an open caisson bottom which permits the anchor to be embedded in the seabed soil in a direction generally downwardly along said longitudinal axis by penetration of said side wall edge into the soil, wherein a lower portion of said interior volume is substantially free of obstruction, and wherein means for retaining seabed soil are provided in an upper portion of said interior volume; said means for retaining seabed soil being adapted to displace, receive and retain a quantity of the seabed soil, a weight of the seabed soil retained by the means for retaining seabed soil adding to the force required to pull the embedded anchor out of the seabed when the anchor has been emplaced. 2 Appeal 2009-008697 Application 10/507,428 THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1, 3-6, 8, 10, 11 and 17 are rejected under 35 U.S.C. § 102(b) as being anticipated by Haynes (US 4,234,046, issued Nov. 18, 1980, hereinafter Haynes ‘046). 2. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Haynes ‘046 in view of Haynes (US 4,257,721, issued Mar. 24, 1981, hereinafter Haynes ‘721). ISSUE The issue before us is whether the Examiner erred in finding that Haynes ‘046 describes “means for retaining seabed soil,” as called for in independent claims 1 and 8 (App. Br. 11, 13). ANALYSIS Rejection of claims 1, 3-6, 8, 10, 11 and 17 under 35 U.S.C. § 102(b) over Haynes ‘046 Appellant contends Haynes ‘046 does not describe “means for retaining seabed soil,” as called for in independent claims 1 and 8 (App. Br. 11-13). Appellant contends that the corresponding structure in Appellant’s Specification for the “means for retaining seabed soil includes the cone- shaped hopper 30 that is located at the upper portion of the anchor” (emphasis added) (App. Br. 11). The Examiner found that Haynes ‘046 describes means for retaining seabed soil, wherein the means extends from member 20 to member 62 (Ans. 5, 7). 3 Appeal 2009-008697 Application 10/507,428 The Examiner proffers an annotated Figure 2 of Haynes ‘046 (Ans. 5), reproduced below, showing the means for retaining seabed soil. The annotated Figure 2 of Haynes ‘046 identifies the elements the Examiner found to be the retaining means. The Examiner found (1) that “[A]ppellant’s device for retaining seabed soil operates in the same manner as that disclosed by Haynes ‘046” (Ans. 7), and (2) that the “means for retaining seabed soil taught by Haynes ‘046 is functionally equivalent to the means for retaining seabed soil called for in the claimed invention” (Ans. 9). Appellant contends (1) that the structure in Haynes ‘046 indicated by the Examiner as the means for retaining seabed soil is not used to retain seabed soil, but rather to transfer seabed soil from the cavity 42 to the cavity 61 (App. Br. 12); and (2) that “[t]here is no teaching or suggestion in Haynes 4 Appeal 2009-008697 Application 10/507,428 ‘046 that the soil passing through the pump should be retained in the pump” (id). Claims 1 and 8 call for, inter alia, “means for retaining seabed soil.” Thus, we find that independent claims 1 and 8 contain means-plus-function claim language. “[T]he ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six. Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Donaldson, 16 F.3d 1189, 1194-95 (Fed. Cir. 1994) (en banc). The plain and unambiguous meaning of [35 U.S.C. § 112] paragraph six is that one construing means- plus-function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. Id. at 1193. “The first step in the construction of a means-plus-function claim element is to identify the particular claimed function. The second step in the analysis is to look to the specification and identify the corresponding structure for that function.” (Citations omitted). Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). Appellant’s Specification describes (1) that “[t]he caisson 12 is internally fitted with soil retaining means in the form of a conical hopper 30 that is aligned point-down and is substantially symmetrical about the aforementioned vertical and central longitudinal axis 16” (emphasis added) 5 Appeal 2009-008697 Application 10/507,428 (Spec. 7: 1-3), and (2) that “the seabed soil retaining hopper 30 is substantially filled with in drawn mud” (emphasis added) (Spec. 9: 6). Appellant’s Specification does not provide a definition for the word “retain.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“The patent specification does not assign or suggest a particular definition to the term ‘case.’ Therefore, in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.”) The ordinary meaning of the word “retain” includes “to keep or hold in a particular place, condition, or position.”2 Appellant’s proffered definition of the word “retain” “to keep or hold something in a place or position; water retained by a dam” (Reply Br. 3) is consistent with this ordinary meaning. A person having ordinary skill in the art would understand the means-plus-function claim language “means for retaining seabed soil” of independent claims 1 and 8 in light of the ordinary meaning of the word “retain” and in light of the Specification, to refer to a conical hopper that keeps or holds the seabed soil in place. Haynes ‘046 describes in column 3, lines 11-17 that [d]uring the upstroke, water and sediment in cavity 54 are squeezed through check valve 44 into cavity 61 where excess water and sediment exit through the top of the opening 62. At the top of the stroke, the direction of ram 32 is changed. Water and sediment now flow through check valve 46 until another upstroke starts. 2 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2007). 6 Appeal 2009-008697 Application 10/507,428 Haynes ‘046 is silent as to the seabed soil (water and sediment) being retained, that is, held in place as it flows through the cavities 42, 54, 61. While the Examiner found that Haynes’ ‘046 is functionally equivalent to the means for retaining seabed soil called for in the claimed invention (Ans. 9), we find that the Examiner’s finding is not supported by the actual disclosure of Haynes ‘046 since Haynes ‘046 does not describe that the seabed soil is retained as it flows through the cavities 42, 54, 61.3 Therefore, we find that the Examiner’s finding is a conclusory statement based upon speculation Thus, we are constrained to reverse the rejection of independent claims 1 and 8, and of dependent claims 3-6, 10, 11 and 17. Rejection of claims 15 and 16 under 35 U.S.C. § 103(a) over Haynes ‘046 and Haynes ‘721 The Examiner has not relied on Haynes ‘721 for any teaching that would remedy the deficiency in Haynes ‘046 (Ans. 6). Thus, we reverse the rejection of claims 15 and 16 over Haynes ‘046 and Haynes ‘721. CONCLUSION The Examiner has erred in finding that Haynes ‘046 describes “means for retaining seabed soil,” as called for in independent claims 1 and 8. 3 Disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962). 7 Appeal 2009-008697 Application 10/507,428 DECISION The decision of the Examiner to reject claims 1, 3-6, 8, 10, 11 and 15- 17 is reversed. REVERSED JRG SHERIDAN ROSS PC 1560 BROADWAY SUITE 1200 DENVER, CO 80202 8